DECISION

InfoSpace, Inc. v. Greiner c/o Phil Greiner

Claim Number:  FA0401000227653

PARTIES

Complainant is InfoSpace, Inc. (“Complainant”), represented by Gerard A. Taylor, of Stokes Lawrence PS, 800 Fifth Ave., Suite 4000, Seattle, WA 98104-3179. Respondent is Greiner c/o Phil Greiner (“Respondent”), Kapselu 10 a 6, Riga, Null, LV-1050, LV

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <www-dogpile.com>, registered with Direct Information Pvt. Ltd., d/b/a Directi.Com (hereinafter “Directi.Com”).

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 16, 2004; the Forum received a hard copy of the Complaint on January 20, 2004.

On January 20, 2004, Directi.Com confirmed by e-mail to the Forum that the domain name <www-dogpile.com> is registered with Directi.Com and that Respondent is the current registrant of the name. Directi.Com has verified that Respondent is bound by the Directi.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 January 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@www-dogpile.com by e-mail.

No official Response was received from Respondent. Respondent did submit an informal e-mail on February 4, 2004. However, this e-mail did not contain the important certification statement required by UDRP Rule 5(b)(viii) and failed to meet the remainder of the requirements for an official Response outlined in UDRP Rule 5(b). Therefore, having received no official Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 25, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <www-dogpile.com> domain name is confusingly similar to Complainant’s DOGPILE mark.

2. Respondent does not have any rights or legitimate interests in the <www-dogpile.com> domain name.

3. Respondent registered and used the <www-dogpile.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, InfoSpace, Inc., provides directory and search engine services via the Internet, as well as brokerage of electronic commerce transactions services online. Through its wholly-owned subsidiary, Go2Net, Inc., Complainant uses the DOGPILE mark in connection with these services, and has done so since 1996. Complainant’s U.S. registrations of the DOGPILE mark (Reg. Nos. 2,401,276 and 2,456,655, registered on November 7, 2000 and June 5, 2001, respectively) both predate Respondent’s registration of the disputed domain name on March 2, 2003, as does Complainant’s October 31, 1996 registration of the <dogpile.com> domain name.

Respondent, Greiner c/o Phil Greiner, does not currently use the <www-dogpile.com> domain name, and has made no constructive use of the domain name since its registration. In an unofficial, uncertified response to the Complaint, which did not specifically respond to any of Complainant’s allegations other than to mention that Respondent operates a cleaning business and that “[t]he name ‘Dogpile.com’ is unheard of in my part of the world,” Respondent noted that it had “no problem transferring the name to [Complainant] provided that I receive a reasonable offer of compensation for the name, paperwork, time spent, etc…”

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the DOGPILE mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce since 1996. See Microsoft Corp. v. J. Holiday Co., D2000-1493 (WIPO Feb. 20, 2000) (“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.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <www-dogpile.com> domain name is confusingly similar to Complainant’s DOGPILE mark. Respondent’s use of the “www” prefix to attempt to distinguish its domain name from Complainant’s DOGPILE mark is a known technique of cybersquatters, and does not alter the fact that the dominant feature of the disputed domain name is Complainant’s mark. See Marie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark); 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).

Accordingly, the Panel finds that the <www-dogpile.com> domain name is confusingly similar to Complainant’s DOGPILE mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The fact that Respondent utilized Complainant’s DOGPILE mark, in its entirety, and merely added the “www” prefix to the mark is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. 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 Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also

Furthermore, Respondent’s failure to use the disputed domain name, without any evidence to support the conclusion that it intends to use the domain name for a bona fide offering of goods or services, is additional evidence that Respondent lacks rights or legitimate interests in a domain name that incorporates Complainant’s mark. This is especially true considering that there is no evidence that Respondent has any rights in the WWW-DOGPILE mark of its own. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Finally, Respondent’s apparent willingness to dispose of its rights in the disputed domain name via sale of its registration to Complainant is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <www-dogpile.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters—the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence, Respondent’s actions evidence bad faith registration of the disputed domain name. See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s registration of the <wwwremax.com> domain name, incorporating Complainant’s entire mark, was done with actual notice of Complainant’s rights in the mark prior to registering the infringing domain name, evidencing bad faith); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”).

Respondent’s passive holding of the infringing domain name is evidence that the domain name was used in bad faith, fulfilling the second prong of analysis under Policy ¶ 4(a)(iii). Passive holding in and of itself is evidence of bad faith use of a domain name. In this dispute, Respondent’s attempt to sell its passively held domain name registration to Complainant for a “reasonable offer of compensation” i.e. in excess of Respondent’s out of pocket expenses, bolsters the conclusion that Respondent’s passive holding equates to bad faith use of the domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

The Panel thus finds that Respondent registered and used the <www-dogpile.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <www-dogpile.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  March 8, 2004

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