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Dex Media, Inc. v. Admin Billing [2005] GENDND 1932 (17 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dex Media, Inc. v. Admin Billing

Case No. D2005-1060

1. The Parties

The Complainant is Dex Media, Inc., c/o Tim Bauer, Englewood, Colorado, United States of America (“the Complainant”), represented by Townsend and Townsend and Crew, LLP, United States of America.

The Respondent is Admin Billing, 4f Igarashi Bdg 6-1-28, Shimo M, Tokyo, Japan (“the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <dexvideo.com> (the “Domain Name”) is registered with Go Daddy Software (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2005. On October 7, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 7, 2005, the Registrar 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 October 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2005. The Response was filed with the Center on October 20, 2005.

The Center appointed Tony Willoughby as the sole panelist in this matter on November 7, 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 a corporation organised and existing under the laws of Delaware. The Complainant has since about 1997 been engaged in the production of online and print directories. The Complainant maintains a corporate website at “www.dexmedia.com”.

The Complainant is the proprietor of a number of registered trade marks of or including the name DEX including US Registration No. 2561784 dated July 31, 2001, DEX (word) in Class 16 for printed telephone directories.

Exhibited to the Complaint are extracts from the Complainant’s website showing prominent use of the mark DEX in stylised form. DEX is frequently used on its own i.e. otherwise than in association with the word “media”.

It appears from the Registrar’s Whois database that the Domain Name was registered by the Respondent on January 3, 2005. The Domain Name is connected to a website featuring sponsored links to pornographic websites (e.g. “www.porn-magazines.co.uk”) and a variety of other websites having no connection with the Complainant.

On June 29, 2001, a decision was issued in WIPO Case No. D2001-0457 (Australian Broadcasting Corporation v P & C Hewitt). The domain names in dispute were <bananasinpyjamas.com> and <bananasinpajamas.com>. “The Respondents in this proceeding are P & C Hewitt of 4f Igarashi Building, 6-1-28 Shimo, Meguro, Tokyo, Japan”. The complaint succeeded.

On July 23, 2002, a decision was issued in NAF Case No. FA0206000114618 (Borders Properties Inc. v Ian Hewitt). The domain name in issue was <borderscom.com>. The respondent “is Ian Hewitt, Applecross, Australia”. The complaint succeeded.

On April 17, 2003, a decision was issued in WIPO Case No. D2003-0142 (Barnes & Noble College Bookstores Inc. v Language Direct). The case involved 9 domain names featuring various misspellings of the name of the complainant in that case. The respondent in that case is “identified as Language Direct, Tokyo, Japan. Its administrative contact is shown as Ian Hewitt at the same address with an alternative address in California, United States of America.” The complaint succeeded.

On October 27, 2004, a decision was issued in WIPO Case No. D2004-0692 (PC Mall, Inc. v Admin Billing). The domain names in dispute were many and included <eecost.com> and <macmallcom.com>. The respondent in that case was “Admin Billing, Tokyo, Japan”. The decision includes the following passage: “The Complainant has put forward a very convincing and plausible argument that Language Direct and Admin Billing are fronts or facades for the same person Ian Hewitt, the mastermind in these activities.” The complaint succeeded.

The Respondent identifies its contact name for this administrative proceeding variously as “IE Hewitt” and “I Hewitt” with the email address ‘language@gol.com’ and the postal address, 4f Igarashi Bdg 6-1-28, Shimo Meguro.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s registered trade mark DEX. The Complainant contends that the addition of the generic term “video” is not a distinguishing feature and particularly given the Complainant’s business area which covers goods and services in a number of multimedia formats.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant contends that the Respondent has no permission of any kind to use the Complainant’s trade mark whether as part of a Domain Name or for any other purpose. To the best of the Complainant’s belief the Respondent has no trade mark rights in respect of the name. Nor so far as the Complainant is aware does the Respondent have any corporate or trade name featuring the name DEX.

The Complainant contends that the Respondent’s use of the Domain Name to connect to pornographic sites “is further evidence that the Respondent has no rights or legitimate interests in the Domain Name”.

Finally, the Complainant contends that the Domain Name is registered and is being used in bad faith.

In support, the Complainant asserts that the contact information for the Respondent on the Registrar’s Whois database is incomplete. The Complainant contends that the real name of the Respondent is Ian Hewitt. The Complainant supports that contention with the results of various investigations carried out into the postal and email addresses given for the Respondent. The Complainant also recites the detail of the decisions under the Policy referred to in the previous section of this decision.

The Complainant contends that the incomplete information in the Registrar’s Whois database “smacks of bad faith and a deliberate attempt to mislead the public, and clearly is an attempt to avoid revealing his true identity.”

The Complainant further contends that the Respondent, Ian Hewitt and the respondents in the other decisions referred to in the previous section of this decision are one and the same or very closely associated and that the Panel should treat this case along with the others as being a pattern of abusive registration on the part of the Respondent.

The Complainant contends that the Respondent will have known of the Complainant and its trade mark when registering the Domain Name and that the Respondent’s intention in registering the Domain Name was to mislead the public.

B. Respondent

The Respondent denies the Complainant’s allegations. The Respondent denies that the Domain Name is confusingly similar to the Complainant’s Domain Name <dexmedia.com>. The Respondent says that the Domain Name is completely different from the Complainant’s Domain Name in that “5 letters are completely different in each domain name”.

The Respondent asserts that it does have rights or legitimate interests in respect of the Domain Name. It says that the registration of the Domain Name was done deliberately with a view to obtaining a domain name featuring a commonly used misspelling of <sexvideo.com>.

The Respondent contends that before it became aware of the complaint it was using the Domain Name in connection with a bona fide offering of goods and services. It says that it has been commonly known by the Domain Name even though it may have acquired no trade mark or service mark rights in relation to the Domain Name. The Respondent states that at no time has it tarnished or tried to mislead or divert anyone from the site at “www.dexmedia.com”.

The Respondent denies that it registered the Domain Name in bad faith and is using it in bad faith. It accepts that the Complainant has trade mark rights in DEX but says that <dexvideo.com> and <dexmedia.com> are very different. It says that “no thinking person could confuse these as they are so different and relate to completely different industries, products or services”.

The Respondent contends that the Complainant has only taken an interest in the Domain Name having realised that the Respondent has a legitimate use for it.

The Respondent says that having found a legitimate use for the Domain Name, they simply registered it and are now using it.

The Respondent cites paragraphs 4(b)(ii), (iii) and (iv) of the Policy and states that none of them are applicable here.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s registered trade mark DEX and the generic term ‘video’.

The Complainant trades under the name Dex Media in a world of multi-media formats. It is not difficult to conclude that a domain name featuring the combination of the Complainant’s principal trademark and a description of a media format is confusingly similar to the Complainant’s trademark.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy the Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy, which is addressed to respondents, identifies what respondents can prove to demonstrate their rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy.

It is for the Complainant to demonstrate a prima facie case and if the Complainant is successful in establishing a prima facie case (i.e. a case to answer), it is for the Respondent to answer that case.

The Panel is in no doubt that the Complainant has done enough to establish a prima facie case. The Domain Name is not the name of the Respondent, the principal element of the Domain Name is the Complainant’s trade mark and the Complainant has not granted the Respondent any licence to use that trade mark whether as part of a domain name or for any other purpose. On the face of it, as alleged by the Complainant it seems very probable that the Respondent registered the Domain Name with a view to attracting visitors (intending to reach a site of the Complainant) to the Respondent’s website and presumably for commercial gain.

The Respondent seeks to answer that case on the basis that ‘dex’ is a common typographical error for ‘sex’, no doubt because ‘s’ and ‘d’ are juxtaposed on a normal keyboard. Accordingly, the domain name was registered specifically to catch Internet users intending to reach “www.sexvideo.com” and not for any reason associated with the Complainant. The Respondent asserts that the purpose for which it registered the Domain Name was a legitimate purpose and that it has used the Domain Name for that purpose and no other.

The Panel might have been prepared to accept that explanation as a basis for the existence of a legitimate interest in respect of the Domain Name if the Respondent had taken any trouble to produce any documentation as to its plans or at the very least some evidence to counter the inevitable suspicion that this was an explanation dreamt up to defeat this Complaint. It might have been easier to accept if the Respondent was itself the producer of sex videos.

Instead, all that the Panel has to go on is the Respondent’s bare assertion and the fact that the Domain Name is used to connect to a website featuring a number of pornographic and other sex-related service sites. If that were enough to establish a legitimate interest, it would be all too easy for bad faith registrants to defeat perfectly proper complaints under the Policy.

Moreover, it is to be noted that the Respondent has totally ignored the Complainant’s allegation that the Respondent’s conduct is part of a pattern of abusive registration evidenced by the Respondent’s track record (see the decisions under the Policy referred to under ‘Factual Background’ above). The Respondent has not denied that the respondents in those cases were either the Respondent or very close associates of the Respondent.

In the result, the Respondent has failed to produce an effective answer to the Complainant’s prima facie case.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark and intending that Internet users trying to reach the Complainant should be diverted to the Respondent’s website connected to the Domain Name.

The Respondent does not deny that its site is a commercial site; indeed, the Respondent contends that the site is a bona fide offering of goods and services. The commercial benefit is no doubt to be derived from the site owners whose links are featured on the Respondent’s website.

If the Respondent’s explanation is true, namely that it registered the Domain Name as a misspelling of <sexvideo.com> and not for any association with the Complainant, that ought to be a complete answer to any bad faith allegation.

The Panel is unable to accept the Respondent’s explanation. The Panel is influenced by the Respondent’s track record as evidenced by the results of the Complainant’s investigations into the Respondent and the decisions in WIPO Cases Nos. D2001-0457, D2003-0142 and D2004-0692 and in NAF Case No. FA0206000114618. The fact that the Respondent chose not to attempt to answer the Complainant’s allegations in this regard leads the Panel to believe that the Respondent has no answer and that the registration of the Domain Name is part of the same abusive pattern.

The Panel finds that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

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, <dexvideo.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Date: November 9, 2005