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Medco Health Solutions, Inc. v. Digi Real Estate FoundationCase No. D2005-0216 [2005] GENDND 359 (26 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ask Jeeves, Inc. v. Nesamtas International Holdings Limited

Case No. D2004-1065

1. The Parties

The Complainant is Ask Jeeves, Inc., Oakland, California of United States of America, represented by Morrison & Foerster, LLP, United States of America.

The Respondent is Nesamtas International Holdings Limited, Tortola, British Virgin Islands of United Kingdom of Great Britain and Northern Ireland, represented by Peter Chiu, China.

2. The Domain Name and Registrar

The disputed domain name <webjeeves.com> is registered with NamesDirect.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2004. On December 16, 2004, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On December 17, 2004, NamesDirect.com 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 December 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2005. The Response was filed with the Center on January 16, 2005.

The Center appointed Daniel J. Gervais as the Sole Panelist in this matter on January 24, 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.

The Complainant submitted a Reply to the Response. The Reply essentially tries to do two things: first, to answer the Respondent’s allegations about a violation by the Complainant of intellectual property rights (copyright and trademarks) belonging to third parties; second, to answer a number of legal arguments made by the Respondent. In principle, the Rules do not provide for the filing of a reply. In certain cases, where a panel deems it necessary to provide the Complainant with a fair opportunity to present its case under Rules 10(a), (b) and (d), a reply may be accepted onto the record. This may be the case where allegations are made in the Response that the Complainant could not have been expected to address in the Complaint. In the case at hand, had the Respondent made substantive allegations, supported by proper evidence, about an infringement of intellectual property rights by the Complainant, the first part of the Reply would have been relevant. However, because, as is explained below, the Panel did not find the Respondent’s allegations in this regard supported by the evidence, the first part of the Reply is unnecessary. As the second part, in this panelist’s view, the Policy and Rules do not contemplate a reply on purely legal arguments made in the Response per se. This would delay proceedings under the Policy. Of course, a panel may ask the parties to submit additional arguments if it deems it useful, but that is not the case here. For these reasons, the Complainant’s request to have the Reply included in the record is denied.

4. Factual Background

The Complainant is a publicly-traded California company, with offices in Europe and Asia. It offers a web search service powered by a technology known as “Teoma”, which can process natural language queries.

The Complainant’s operates a number of websites the domain names for which contain the term “askjeeves”.

It is also the owner of several trademark registrations worldwide for the mark ASK JEEVES and JEEVES SOLUTIONS for business computer services but also various types of merchandise. The Complainant also owns registrations for a design mark consisting of a butler character (known as “Jeeves”).

In May 2004, the respondent registered the domain name <webjeeves.com> in May 2004, and offers software known as single sign-on, which allows Internet users to access different websites without having to memorize multiple passwords.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name is confusingly similar with its marks ASK JEEVES and JEEVES SOLUTIONS in which it has rights. The Respondent is not making bona fide use of the domain name and appears to be illegitimately trying to learn Internet users’ log-in information. The Respondent is not licensed to the use the Complainant’s trademarks. The Respondent is trying to mislead Internet users by misappropriating the Complainant’s goodwill.

The Respondent is not commonly known by the domain name.

Both the Complainant and the Respondent offer downloadable software on their websites. The Respondent is not making legitimate noncommercial or fair use of the domain name. It is using it to direct Internet users to a website where software can be downloaded.

The Respondent registered and is using the domain name in bad faith. The Respondent had knowledge of the Complainant’s marks at all relevant times. Its website incorporated the Jeeves butler character. It misleads consumers as to the sponsorship of the domain name and is attracting Internet users to its site for commercial gain by offering a product closely related to the Complainant’s.

B. Respondent

The Respondent contends that the Complainant does not own the “JEEVES” mark; that the name Jeeves originated in novels written by Sir Pelham Grenville Wodehouse featuring a butler called Mr. Jeeves.

The mark “Jeeves” or marks containing the word “Jeeves” are registered by several other companies.

The domain name only incorporates the common word “jeeves”, not the Complainant’s mark. If the Complainant were successful, it would own several common words and parts of words, including JEE, VES, JEEV, JEEVE or EEVES. The Complainant knows it has no rights because it did not register the mark “Jeeves”.

The business of the Respondent is entirely different. The products are distinctive. The only software downloadable from the Complainant’s site is a toolbar, which one cannot compare to the advanced Internet security software made available by the Respondent.

The offering of Internet security software constitutes legitimate use of the domain name.

There is no bad faith. Jeeves is a common word and its use by the Respondent is but a coincidence.

If there was a resemblance between the Respondent’s website and the Complainant’s, this has been changed. The allegation of bad faith is unfounded and based only on the subjective belief of the Complainant.

The Complainant has unclean hands because it seems to be infringing copyright in the Mr. Jeeves character and in previously copyrighted butler character designs. Because transfer of the domain name is a form of specific performance, and thus based in equity, it is unavailable to the Complainant.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.3.).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to 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. Moreover, in accordance with paragraph 14(b) of the Rules, 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 therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

There is no question that the Complainant owns valid trademark registrations for ASKJEEVES and JEEVES SOLUTIONS for software-based products available on the Internet.

As to similarity, the Panel concludes that there is a likelihood of confusion. Both parties offer services that facilitate use of the Internet, by providing an intermediary function between individual Internet users and the millions of websites and pages available on servers worldwide. Granted, the Respondent does it differently (namely by storing passwords), but the two functions are not so distinct as not to cause a likelihood of confusion. The Panel took due notice of the various trademark registrations that include the word JEEVES and the Panel agrees with the Respondent that the Complainant does not own the word “Jeeves”. However, when the word is used in relation with services that may reasonably be considered related, then there is a risk of confusion. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127, In this Panel’s view, “Jeeves” is the dominant part of the Complainant’s mark, not “ask”, which is suggestive of the search service (function) that can be performed from the Complainant’s websites. The same may be said of the word “web” contained in the domain name. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649. Finally, most of the registrations for marks that include “Jeeves” identified by the Respondent are no longer active or in fact belong to the Complainant.

The Panel also considered the evidence submitted by the Complainant to the effect that the word “jeeves” is recognized as relating to the Complainant’s business. The Panel does not believe that the term, which seems to have originated in twentieth century novels, is not a common word, in spite of its use in other contexts in relation with butler or valet services. Had its status as a common word been shown, perhaps the conclusions reached by the Panel would have been different. But there is no evidence showing that the use of “jeeves” in everyday discourse is frequent. A well known tenet of trademark law is that using invented (“coined”) or uncommon terms as (part of) a trademark tends to increase the strength of the mark.

The Panel thus finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use of the ASKJEEVES and JEEVES SOLUTIONS marks. The Respondent disputes this contention and has provided information as to its interests in using the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As was decided by several administrative panels, while the complainant has the burden of proof on this issue, once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.

The prima facie case has been made, as the Complainant made submissions on all three subparagraphs of paragraph 4(c).

The Respondent acknowledges that it was not known by the domain name prior to registering same. The Respondent is trying to build a typical software business by providing beta versions of its single sign-on software. Because the Respondent knew the Complainant’s marks and websites, which is confirmed by the initial similarity between the Respondent’s site and the Complainant’s, the offering cannot be said to be bona fide or legitimate. Because of, inter alia, this visual similarity, the Panel cannot believe the assertion that the use of the word “jeeves” by the Respondent is a mere coincidence.

The Panel finds for the Complainant on this second part of the test. However, the panel also notes the serious assertion made by the Complainant concerning the Respondent alleged attempt to illegitimately collect passwords or other information from Internet users. The Panel finds little if any supporting evidence for such an allegation, which should only be made if it can be supported by evidence.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location or of a product.

As already mentioned, the Respondent knew of the Complainant’s marks and websites when it registered the domain name. The evidence clearly suggests that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location or of a product. The Respondent’s knowledge of the Complainant’s marks, the relative similarity between the respective products and services of the parties and the similarity between the web pages (as far at the Respondent’s initial site is concerned) all point to an attempt to free ride on the Complainant’s goodwill.

The Panel also noted the Respondent’s allegations concerning the application of the common law doctrine of “clean hands”. However, that part of the response must fail for two reasons. First, the Respondent only alleges hypothetical third party rights, with no supporting evidence. If it should find such evidence, the Respondent may decide to inform such third parties, but the Panel must accept the numerous mark registrations submitted by the Complainant as valid. Additionally, the Complainant specifically asserts ownership of the butler character that the Respondent only vaguely alleges, may belong to a third party. Second, the remedies envisaged under the Policy in Paragraph 4(i), are only the transfer and cancellation of a domain name registration. This is not an equity-based jurisdiction, nor can the just mentioned remedies be properly considered equitable in nature. They are entirely based on the strict application of a mutually accepted and binding dispute-settlement clause, as part of the registration agreement as far as the Respondent is concerned; at the time of submission of a properly-filed complaint by the Complainant. Finally, while the issue of a third party having priority trademark rights may be relevant, as decided by this panelist in Builder’s Best, Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748, the facts simply do not support that conclusion in this case.

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

Daniel J. Gervais
Sole Panelist

Dated: February 7, 2005