DECISION

InfoSpace, Inc. v. John Brock a/k/a ParodyNetwork.com

Claim Number:  FA0404000250831

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 John Brock a/k/a ParodyNetwork.com (“Respondent”), 1022 Ne Van Loon Terrace, Cape Coral, Florida 33909.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dogpileup.com>, registered with Go Daddy Software, Inc.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 8, 2004; the Forum received a hard copy of the Complaint on April 9, 2004.

On April 12, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <dogpileup.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 April 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 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@dogpileup.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 Forum transmitted to the parties a Notification of Respondent Default.

On May 24, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <dogpileup.com> domain name is confusingly similar to Complainant’s DOGPILE mark.

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

3. Respondent registered and used the <dogpileup.com> 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 is the provider of search engine and directory services that offer access to an array of subjects via the Internet.  Complainant has been using the trademark DOGPILE, through its wholly owned subsidiary, Go2Net, Inc., since November 1996 in connection with its search services.

Complainant is the owner of U.S. trademark and service mark registrations for the DOGPILE mark, including numbers 2,456,655 and 2,401,276, which were registered on November 11, 1996 in connection with the aforementioned goods and services.

At the time the Complaint was filed, the WHOIS information for the disputed domain name <dogpileup.com> listed the registrant as being “Domains by Proxy, Inc.”  After the registrar, Go Daddy Software, Inc., was notified of the Complaint, the WHOIS information was changed on April 2, 2004 to list the registrant as Respondent in this case.  The previous registrant, Domains by Proxy, Inc., has been recognized as a “sister company” of Go Daddy Software, Inc.  See Dr. Ing. H.C. F. Porsche AG v. Domains By Proxy, Inc., D2003-0230 (WIPO May 16, 2003).  The Panel noted in that case that Domains by Proxy, Inc. was basically a “front” for Go Daddy Software, Inc. whereby it allowed domain name registrants anonymity presumably for an additional fee.  In fact, as Complainant argues in its Complaint, paragraph 4(c) of the “Proxy Agreement,” located at the domain name <domainsbyproxy.com>, states that

[I]f [Domains by Proxy] is named as a defendant in, or investigated in anticipation of, any legal or administrative proceeding arising out of Your domain name registration or Your use of DBP’s services, Your private domain name registration will automatically revert back to You and Your identity will therefore be revealed in the Whois directory as Registrant.

The facts in this case indicate that the prior listed registrant, Domains by Proxy, Inc., was merely acting as a listing agent, rather than the true registrant.  As such, the Panel finds that Respondent was, in fact, the true registrant at the time of original registration, which was March 16, 2004.

Respondent is using the disputed domain name <dogpileup.com> in connection with a website that offers a search engine service and links to such large commercial enterprises such as Ebay.

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

A complainant’s registration of a mark with a governmental authority is sufficient to confer rights in a mark under the Policy.  Here, Complainant has registered the mark DOGPILE multiple times with the USPTO and, as a result, has established rights in the mark under the Policy.  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); see also 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.”).

A domain name that incorporates a third-party’s mark and merely appends a generic or descriptive term to the mark has been regularly found to be confusingly similar to the third party’s mark under the Policy.  In this case, the disputed domain name <dogpileup.com> contains Complainant’s DOGPILE mark and has merely added the term “up” to the mark.  Consistent with previous decisions under the Policy, the Panel finds the disputed domain name confusingly similar to Complainant’s DOGPILE mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to Complainant’s mark); see also Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name <myinfospace.com> is confusingly similar to Complainant’s INFOSPACE mark); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  The failure to respond to the Complaint allows the inference that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  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).

In addition, there is nothing in the record to indicate that Respondent is commonly known by the disputed domain name.  As such, the Panel finds that Respondent has not evidenced rights or legitimate interests because it is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  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 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").

Respondent is not using the disputed domain name, which is confusingly similar to Complainant’s DOGPILE mark, in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Respondent is using the domain name to offer identical services as Complainant offers under its U.S. trademark and service mark DOGPILE.  Without evidence suggesting Respondent has rights in “dogpileup,” the Panel finds that the evidence does not establish Respondent’s rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) & (iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant and Respondent both offer search engine services via the Internet.  Therefore, Complainant and Respondent are acting as competitors in this regard.  The fact that Respondent registered a domain name confusingly similar to a competitor’s trademark is sufficient to establish that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

In conjunction with the foregoing, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s DOGPILE mark pursuant to Policy ¶ 4(b)(iv).  Respondent has provided links at its attached website to large commercial enterprises, presumably for commercial gain.  Such use is evidence of bad faith registration and use.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated: June 7, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/793.html