DECISION

InfoSpace, Inc. v. Lee M. Rayner

Claim Number:  FA0403000244076

PARTIES

Complainant is InfoSpace, Inc. (“Complainant”), represented by Leslie C. Ruiter, of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle, WA 98104.  Respondent is Lee M. Rayner (“Respondent”), 75 Chester Road, Audley, Staffordshire, ST8 8Jf United Kingdom.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dogpill.net>, registered with Easyspace Ltd.

PANEL

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 4, 2004; the Forum received a hard copy of the Complaint on March 8, 2004.

On March 11, 2004, Easyspace Ltd. confirmed by e-mail to the Forum that the domain name <dogpill.net> is registered with Easyspace Ltd. and that Respondent is the current registrant of the name. Easyspace Ltd. has verified that Respondent is bound by the Easyspace Ltd. 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 March 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 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@dogpill.net by e-mail.

Having received no 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  April 09, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 <dogpill.net> domain name is confusingly similar to Complainant’s DOGPILE mark.

2. Respondent does not have any rights or legitimate interests in the <dogpill.net> domain name.

3. Respondent registered and used the <dogpill.net> domain name in bad faith.

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

FINDINGS

Complainant is a global provider of wireless and Internet software and application services.  Complainant provides Internet search and directory services.  Complainant has used the DOGPILE mark worldwide since 1996 in conjunction with computer programs and telecommunications services.  Complainant registered the DOGPILE mark with the United States Patent and Trademark Office (“USPTO”) on June 5, 2001 (Reg. No. 2456655) and November 7, 2000 (Reg. No. 2401276).

Complainant also owns the domain names <dogpile.com> and <dogpile.net>.

Respondent registered the disputed domain name <dogpill.net> on January 12, 2004.  Visitors to the <dogpill.net> website are directed to a “placeholder site”—a generic page provided by the registrar for content-less sites.

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 with the USPTO and continuous use in commerce since 1996.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 disputed domain name, <dogpill.net>, is confusingly similar to Complainant’s DOGPILE mark.  The only difference is the change of the letter “e” to the letter “l.”  The substitution of one letter does not sufficiently distinguish the disputed domain name from Complainant’s DOGPILE mark under the Policy. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to Complainant’s famous AMERICA ONLINE mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel may construe Respondents lack of a Response as an admission of all reasonable facts and assertions.  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 Am. Online, Inc. v. AOL Int'l., D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Complainant asserts that Respondent has not used the disputed domain name since its registration in January 2004.  It only exhibits “placeholder” information, which does not constitute rights or legitimate interests under Policy ¶ 4(c).  Cf. Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).  Furthermore, since Respondent has not come forward to demonstrate preparations to use the disputed domain name, the Panel infers that Respondent lacks rights and legitimate interests in the name.  See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Respondent has not submitted any evidence, nor can the Panel construe from Respondent’s WHOIS information, that it is commonly known by the disputed domain name.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The factors listed under Policy ¶ 4(b) that evidence registration and use in bad faith are illustrative, rather than exclusive.  Therefore, the Panel may choose to look to circumstances other than those listed under Policy ¶ 4(b) to determine whether Respondent registered and is using the <dogpill.net> domain name in bad faith.  See InfoSpace, Inc. v. Jacobs, FA 175200 (Nat. Arb. Forum Sept. 15, 2003).  Although this case is a close call because Respondent registered the <dogpill.net> domain name one and one-half months prior to the filing of this claim, the Panel concludes that there is sufficient evidence to find bad faith by examining the totality of the circumstances surrounding Respondent’s use and registration of the <dogpill.net> domain name.  See id.; see also Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Moreover, Respondent has not rebutted Complainant’s allegation of its parasitic intent: Complainant alleges that Respondent had notice of Complainant’s mark and Respondent intended to use the disputed domain name to trade off of Complainant’s good will.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").   Lacking a Response, the Panel accepts this reasonable allegation as true.  Consequently, Respondent lacks good faith under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

 

One should not construe the UDRP to prevent Complainant’s action merely because of a lack of a response.  Not only has the Respondent not made any use of the <dogpill.net> domain name, it has not indicated any plans or preparations to use the disputed domain name in the future.  Thus, the Panel infers that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <dogpill.net> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  May 7, 2004

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