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Nextag, Inc. v. Michael Huang [2005] GENDND 1087 (13 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nextag, Inc. v. Michael Huang

Case No. D2005-0394

1. The Parties

The Complainant is Nextag, Inc., San Mateo, California, United States of America, represented by Greg Wharton, United States of America.

The Respondent is Michael Huang, Singapore.

2. The Domain Name and Registrar

The disputed domain name <wwwnextag.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2005. On April 14, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 20, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on May 30, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of trademark registrations in the United States Patent and Trademark Office in International Class 35 (US Classes 100, 101 and 102) for the NEXTAG trademark in connection with its comparison-shopping services for products, mortgages, travel, cars and other services. The Complainant offers its services through its Internet commerce site at “www.nextag.com”, and has owned the domain name registration <nextag.com> since October 15, 1998.

The NEXTAG trademark is the subject of Registration Nos. 2,820,935 and 2,470,374 granted for “shopping facilitation services, namely providing an online comparison-shopping search engine for obtaining purchasing information.”

A copy of the corresponding Certificate of Registration has been provided to the Panel.

The Complainant has used the NEXTAG trademark since at least 1998.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The domain name at issue <wwwnextag.com> is confusingly similar and almost identical to the NEXTAG trademark. And a consumer, who inadvertently omits the period between the last “w” and the “n”, would be directed to the Respondent’s website.

B. The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent has no legitimate business interest in the domain name at issue <wwwnextag.com>. The Respondent is using this domain name to forward to a website that lists various products and services. This service is similar or related to the services provided through the website of Nextag, Inc. under the NEXTAG trademark. In light of the longstanding and extensive rights of Nextag, Inc. in the NEXTAG trademark, the Respondent registered the domain name at issue in bad faith to promote his services by trading on the goodwill of Nextag, Inc. In addition, the mark NEXTAG being used in a domain name is likely to cause the public to believe, contrary to fact, that the Respondent and his website are sponsored or approved in some way by the Complainant. The use of the domain name at issue <wwwnextag.com> is also an attempt to divert customers from the authentic nextag.com domain name.

The Respondent has not responded to the Complainant’s good faith attempt to communicate with him on this matter. A copy of the corresponding letter dated February 22, 2005, sent by the Complainant to the Respondent has been provided to the Panel.

C. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Respondent is using this domain name to forward to a website that lists various products and services. This service is similar or related to the services provided through the Complainant’s website under the NEXTAG trademark. In light of the longstanding and extensive rights of the Complainant in the NEXTAG trademark, the Respondent registered the domain name at issue <wwwnextag.com> in bad faith to promote his services by trading on the goodwill of the Complainant. In addition, the mark NEXTAG being used in a domain name is likely to cause the public to believe, contrary to fact, that the Respondent and his website are sponsored or approved in some way by the Complainant. The use of the domain name at issue <wwwnextag.com> is also an attempt to divert customers from the authentic <nextag.com> domain name.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936. The failure by the Respondent to dispute the Complainant’s allegations allows the inference to be drawn by the Panel that they are true.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name at issue incorporates without any modification the trademark NEXTAG, which is owned and commercially used and promoted by the Complainant in and for the purposes of its business. This, apart from anything else, is a clear misuse and infringement on the part of the Respondent of the Complainant’s trademark and also a breach of the Policy.

The fact that the domain name at issue <wwwnextag.com> omits the period between the last “w” and the “n” is irrelevant and does not make the domain name sufficiently distinctive from the Complainant’s domain name <nextag.com> or web site, namely, “www.nextag.com”, so as to avoid confusion. In fact, the omission of the period would, in the absence of any other explanation, of which none is forthcoming, seem to lead to confusion on the part of Internet users.

In view of this, the Panel finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark NEXTAG in which the Complainant has established and commercially valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name at issue.

In particular, no evidence has been adduced that the Respondent has been commonly known by the domain name; nor making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use Complainant’s trademark NEXTAG as part of the domain name at issue.

Furthermore, the adoption by the Respondent of a domain name identical to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s valuable trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the Complainant’s goodwill in its mark, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has no rights to nor legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”

The Panel agrees with the Complainant’s contention that the Respondent by registering the domain name at issue is trading on the Complainant’s valuable goodwill established in its trademark NEXTAG.

Again, by registering and using the domain name at issue incorporating the Complainant’s trademark, NEXTAG, the Respondent is misleading consumers and Internet users into thinking that it is, in some way or another, connected, sponsored or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, which is not, in fact, the case.

The Respondent is clearly trading on the Complainant’s goodwill and reputation, which the Complainant has built up by expending time and money over the years. This, without any explanations by the Respondent to the contrary, of which none are forthcoming, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 of January 18, 2001, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Also, the failure by the Respondent to reply to the Complainant’s letter dated February 22, 2005 (referred to above) or to answer the Complaint and participate in the present proceedings is, in the view of the Panel, further evidence of bad faith on the part of the Respondent. If the Respondent had any justification for registering and using the domain name at issue in the first place, it is reasonable to expect that the Respondent would have taken the opportunity to discuss the matter with the Complainant, when invited to do so, and also to file an answer to the Complaint in defense of these actions.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name at issue in bad faith

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwwnextag.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: June 13, 2005