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Generic Top Level Domain Name (gTLD) Decisions |
iVillage Inc. v. Turvill Consultants-RD
Claim
Number: FA0410000349217
Complainant is iVillage Inc. (“Complainant”), represented
by Bradford Breen, of Orrick, Herrington & Sutcliffe LLP, 666 Fifth Avenue, New York, NY 10103. Respondent is Turvill
Consultants – RD (“Respondent”),
265 Port Union Road, Suite 15525, Scarborough, Ontario M1C 2L3, CANADA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwgurl.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
25, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 27, 2004.
On
October 25, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that
the domain name <wwwgurl.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos
Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com
registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's
Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
October 28, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 17, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing
contacts, and to postmaster@wwwgurl.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 2, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules")
"to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwgurl.com>
domain name is confusingly similar to Complainant’s GURL mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwgurl.com> domain name.
3. Respondent registered and used the <wwwgurl.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since July 2003,
Complainant, a leading women’s media company has operated an online community
and content website for teenage girls
at the domain name <gurl.com>. From 1996 through July 2003, the previous owners
of the website, and Complainant’s predecessors-in-interest, operated the
<gurl.com>
online community and content website.
Since its debut
in 1996, Complainant’s website has become a leading site for teenage
girls. Membership is free of charge and
provides access to various navigable pages throughout the website, wherein a
member can post to message
boards, submit poetry or artwork, seek advice, play
games, etc.
Complainant and
Complainant’s predecessor have registered numerous variations of the GURL mark
with the United States Patent and Trademark
Office (“USPTO”), including U.S.
Reg. Nos. 2,204,908 (November 24, 1998), 2,619,815 (September 17, 2002) and
2,655,591 (December
3, 2002).
Respondent
registered the <wwwgurl.com> domain name on August 24, 2000. The domain name resolves to numerous
websites displaying explicit pornographic material. Additionally, there are numerous pop-up advertisements on the
website, all of which are pornographic in nature.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted
in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of the
Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain
name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established rights in the GURL mark through multiple registrations with the
USPTO and continuous use in commerce since
1996. See Men’s Wearhouse,
Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks
hold a presumption that they are inherently
distinctive and have acquired
secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar.
5, 2002) finding that Panel decisions have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption.
The addition of
a “www” prefix to Complainant’s registered GURL mark fails to sufficiently
differentiate the disputed domain name
from Complainant’s mark. A domain name
consisting of a “www” prefix followed by a registered mark takes advantage of
Internet users
who fail to type the period between the traditional “world-wide
web” abbreviation and the second-level domain name they are attempting
to
reach. The dominant feature of the disputed domain name in this case remains
Complainant’s distinctive GURL mark. See Neiman Marcus Group, Inc. v. S1A,
FA 128683 (Nat. Arb. Forum Dec. 6, 2002) holding confusing similarity has been
established because the prefix "www" does
not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark; see also Dana
Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb.
Forum Nov. 19, 2002) finding Respondent's <wwwdana.com> domain name
confusingly similar to Complainant's
registered DANA mark because Complainant's
mark remains the dominant feature.
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am. Online, Inc. v. Clowers, FA
199821 (Nat. Arb. Forum Nov. 14, 2003) finding that the failure to challenge a
complainant’s allegations allows a panel to accept
all of the complainant’s
reasonable allegations and inferences as true; see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true.
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate
interest
in the domain names; see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly
known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply; see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the
domain name in
question.
Respondent is
not using the disputed domain name in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The fact that Respondent’s domain name is
confusingly similar to Complainant’s mark and diverts Internet users to
websites featuring
explicit and pornographic material is evidence of
Respondent’s lack of any rights or legitimate interest in the disputed domain
name. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215
(WIPO May 26, 2003) stating that the fact that the “use of the disputed domain
name in connection with pornographic images
and links tarnishes and dilutes
[Complainant’s mark]” was evidence that Respondent had no rights or legitimate
interests in the disputed
domain name; see
also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat.
Arb. Forum Dec. 17, 2002) stating that “[m]isdirecting Internet traffic by
utilizing Complainant’s registered mark
[in order to direct Internet users to
an adult-oriented website] does not equate to a bona fide offering of goods or
services . .
. nor is it an example of legitimate noncommercial or fair use of
a domain name . . . Respondent was merely attempting to capitalize
on a close
similarity between its domain name and the registered mark of Complainant,
presumably to gain revenue from each Internet
user redirected to the
pornographic website.”
Furthermore, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s mark tends to prove that Respondent
lacks any rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the
name******, FA 156839 (Nat. Arb. Forum June 23, 2003) holding that
Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights
or legitimate interests in the disputed domain name vis á vis
Complainant; see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) finding no rights or legitimate interests where
Respondent used the typosquatted <wwwdewalt.com>
domain name to divert
Internet users to a search engine webpage, and failed to respond to the
Complaint.
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel infers from
Complainant’s uncontested allegations that Respondent redirects the disputed
domain name to the various pornographic
websites in order to receive referral
fees, commissions, or some other form of commercial gain. In registering a
misspelled and confusingly
similar variation of Complainant’s GURL mark for
this purpose, Respondent fosters a likelihood of confusion in the minds of
Internet
users for commercial gain, evidence of bad faith use and registration
of a domain name pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8,
2000) finding bad faith where Respondent attracted users to advertisements; see
also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15,
2000) finding bad faith where Respondent linked the domain name to another
website, presumably
receiving a portion of the advertising revenue from the
site, thus using a domain name to attract Internet users for commercial gain.
In addition, Respondent’s
tarnishing use of the <wwwgurl.com>
domain name to redirect Internet
users to adult-oriented websites is further evidence of bad faith pursuant to
Policy ¶ 4(a)(iii). See MatchNet plc. v.
MAC Trading, D2000-0205 (WIPO May 11, 2000) finding that the association of
a confusingly similar domain name with a pornographic website can
constitute
bad faith; see also Ty, Inc. v. O.Z.
Names, D2000-0370 (WIPO June 27, 2000) finding that absent contrary
evidence, linking the domain names in question to graphic, adult-oriented
websites is evidence of bad faith.
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwgurl.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
December 16, 2004
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