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Harrah’s License Company, LLC v. FHC Entertainment [2005] GENDND 75 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Go Daddy Software, Inc. v. Henry Tsung

Case No. D2004-0980

1. The Parties

The Complainant is Go Daddy Software, Inc., Scottsdale, Arizona, United States of America, represented by Christine Jones, United States of America.

The Respondent is Henry Tsung, Taipei, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <godadday.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2004. On November 23, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name(s) at issue. On November 23, 2004, iHoldings.com Inc. d/b/a DotRegistrar.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 November 26, 2004.

In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2004.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on December 22, 2004. 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 United States company that operates in domain name registration, web hosting and related fields. In particular, it is an ICANN accredited registrar of Internet second-level domain names under various top-level domains such as .com, .net and.org. It is the owner of several trademarks including the following: GO DADDY, GO DADDY SOFTWARE, GO DADDY, GO DADDY, GODADDY.COM and GODADDY.COM. Evidence of the trademarks is set out in Annex 3 to the Complaint .The trademarks have variously come into use since 1999, and are used by the Complainant in connection with registration, transfer and account management in its domain name registration business and with registration and account management in its web hosting business, in both cases throughout the world. The Complainant also registered the domain name <godaddy.com> on March 1999, as is evidenced by Annex 4 to the Complaint. The Respondent registered the domain name <godadday.com> on or about February 3, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the contentious domain name should be transferred from the Respondent to the Complainant because the facts of the case bring it within paragraph (a) of the Policy. In support of this submission, the Complainant contends that the domain name is identical or confusingly similar to the Complainant’s trademarks, the Respondent has no rights or legitimate interest in respect of the domain name and that it, the Respondent, has registered and is using the domain name in bad faith.

The basis of these contentions is that the Go Daddy Mark has come to have a close association with Internet domain name registration and web hosting and with the Complainant’s active involvement in them and that as a consequence a great deal of the Complainant’s goodwill is vested in that name. The Respondent, it is argued, has taken the Complainant’s name and simply added the letter ‘a’ before the last letter .

The Complainant therefore argues that the domain name that the Respondent has registered is identical with or confusingly similar to its trademarks, there being a visual similarity and potential for confusion in the sense that a user looking for the Complainant’s web site could easily make a spelling mistake by adding the ‘a’ as the Respondent has done and unwittingly gaining access to the site of the Respondent or his associates as a result.

It is then argued that the Respondent has no rights or legitimate interests in the domain name, for registering and using a domain name in the way the Respondent has done, by misappropriating the Complainant’s name and the goodwill associated with it and then using it to frustrate the Complainant’s business by directing customers to the websites of competitors, cannot confer any rights and is an illegitimate activity.

Finally, the Complainant contends that the whole modus operandi of the Respondent from the name he chose for his website, with its obvious similarity to the Complainant’s trademarks, to the intention to mislead and the process of diverting business away from the Complainant to other websites, including those of its competitors, can only be described as both registering and using the domain name in bad faith.

For those reasons the Complainant concludes that the transfer of the domain name to itself should be ordered.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. It is appropriate therefore to note that the fact that the Respondent has not made a Response to the Complaint does not avoid the necessity of examining the issues and of doing so in the light of the evidence. In fact, paragraph 4 of the Policy expressly provides that in administrative proceedings ‘…the complainant bears the onus of proof ‘. As the proceeding is a civil one, the standard of proof is on the balance of probabilities.

The onus of proof therefore remains on the Complainant even where, as in the present case, the Respondent has not made a Response or put in a submission. That principle has been enunciated on many occasions by UDRP panels.

The Complainant must therefore establish all three of the elements specified in paragraph 4 (a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.

However, it is equally true that in the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. Indeed, paragraph 14 of the Rules specifically provides that if a Party does not comply with its obligations, the Panel is still required to proceed to a decision, but it is also required to draw such inferences ‘as it considers appropriate’ from the non-compliance.

That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.

Those three elements, all of which must be proved, are:

A. That the Respondent’s domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights; and

B. That the Respondent has no rights or legitimate interests in respect of the domain name; and

C. That the domain name has been registered and used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The contentious domain name is godadday.com and the question is therefore whether that name is identical to or confusingly similar to one or more of the Complainant’s domain names. The addition of the letter ‘a’ in the domain name means, of course, that it is not literally identical with the trademarks, but previous Panels have decided that ‘essential’ or ‘virtual’ identity is sufficient: The Stanley Works and Stanley Logistics, Inc v. Cam Creek Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com WIPO Case No. D2000-0102.

Applying that test, the Panel finds that the domain name is identical to the six trademarks, for it is essentially or virtually identical to them. In the case of the trademark GO DADDY SOFTWARE, the addition of the word ‘SOFTWARE’ makes no substantial difference, for the essence of the mark is the company or trade name and the additional word is simply describing one of its products.

In any event, the Panel also finds that the domain name is confusingly similar to all of the trademarks.

That is so for the following reasons. First, as a matter of fact, the domain name is visually similar to the trademarks. The addition of the letter ‘a’ is a minor addition and does not detract from the overwhelming similarity that comes from the fact that the whole of the name in five of the six the trademarks has been incorporated into the domain name. With respect to the sixth trademark, GO DADDY SOFTWARE, the substance of the name has been so incorporated, for the word ‘SOFTWARE’ merely describes one of the products associated with the name and the result is therefore the same.

Secondly, there is no effective difference between how the domain name and the trade name would be pronounced.

Thirdly, so confusingly similar are the contending names that an Internet user could, and the Panel draws the inference that some have and others will, accidentally type the contentious domain name, although meaning to type the domain name of the Complainant, which incorporates the correct spelling of the trade mark. The Panel agrees with the submission of the Complainant that the real test is how an objective bystander would construe the two names. The Panel has no hesitation in saying that an objective bystander would say that the domain name is very similar to the trade marks and that the one would be very likely to be confused with the other.

This is particularly so, because the Respondent has chosen to add not just any letter to the trademark , but the vowel ‘a’, which actually creates another common word ,’day’. This increases the similarity and also increases the confusion between the domain name and the trademarks and the increased confusion has been created by the Respondent.

Previous UDRP panels have also consistently taken this general approach to such questions. There is, for example, the case cited by the Complainant, The Toronto Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, where the Panel had no difficulty in deciding that the domain names <tdwatergouse.com> and <dwaterhouse.com> were essentially identical and confusingly similar to the trade mark TD WATERHOUSE, for the former had one letter changed and the latter had one letter omitted. There are many similar cases, of which at least one is particularly illustrative, namely Yahoo! Inc. v.Eitan Zviely et al , WIPO Case No. D2000-0273. In that case, a series of domain names was held to be confusingly similar to the Yahoo! trademark, the similarity and confusion arising from variations that had been made to the spelling of the name, such as Jahu, Jaghoo and Yahjoo. The variation to the spelling of the trade mark that has occurred in the present case has resulted in the same confusing similarity.

Consistent with these and other decisions, the Panel has no hesitation in concluding that the domain name is virtually identical to the trademarks and certainly confusingly similar to them.

B. Rights or Legitimate Interests

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. That is so in the present case, where the Respondent was given notice on November 26, 2004, that the administration proceeding had been commenced and was served with a copy of the Complaint, which included the allegation that he had no rights or legitimate interests in the domain name <godadday.com>.

The Respondent was given notice that he had until December 16, 2004, to send his Response, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

As the Respondent is in default, the Panel, after considering all of the evidence, draws the inference that the Respondent has no rights or legitimate interests in the domain name. This is so for the following reasons.

First, if the Respondent had any such rights or interests it was a simple matter for him to say what they were.

Secondly, the Respondent chose as his domain name a very unusual name, which seems to be a variation on the Complainant’s trademark and business name. Moreover, he did this on or about February 3, 2004, after the Complainant had been in business under its own name for 5 years and after it had acquired prominence in its field. These events raise the inference that the Respondent did this for some illegitimate purpose. That is not conclusive,of course, but if there were a more innocent or legitimate explanation, the Respondent could have given it. The absence of such an explanation re-enforces the inference that there is no innocent or legitimate explanation for the Respondent’s choice of a name.

Thirdly, the evidence that has been collected and adduced by the Complainant shows that the Respondent is trading on the Complainant’s goodwill. The evidence shows that the Respondent has been infringing the Complainant’s rights to its trade marks, trying to disrupt the Complainant’s business, directing internet traffic to its competitors and actively misleading members of the public into believing that they have found their way to the Complainant’s domain. The Panel has no hesitation in saying that when the acquisition and use of a domain name is based on deception it cannot give rise to rights and when all of the activities just described are illegitimate, as they are, they cannot create legitimate interests.

Fourthly, it should not be forgotten that the Policy provides a straightforward mechanism under which a Respondent may establish rights or legitimate interests in the domain name. Paragraph 4(a) sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the Respondent’s rights or legitimate interests in the domain name. In other words, a Respondent may rely on any one of them. However, the Respondent has not endeavoured to establish even one of those criteria, giving rise to the inevitable inference that he could not do so by credible evidence.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

With respect to this third element, paragraph 4(b) of the Policy sets out some detailed criteria, any one of which, if proven, is deemed to be ‘evidence of the registration and use of a domain name in bad faith’. It will be seen that both features must be proved, that the domain name was registered in bad faith and that it is being used in bad faith.

However, it is clear that the criteria listed in paragraph 4(b) are not exhaustive and that other factors may also be relied on to show bad faith. Having considered all of the evidence, the Panel concludes that the conduct of the Respondent comes squarely within the fourth criterion set out in paragraph 4(b) of the Policy. This condition may be paraphrased as using the domain name to attract Internet users to a website by creating confusion with the Complainant’s name or mark as to whether that other website or the products or services on it were sponsored by the Complainant. The offending use must be intentional and it must also be done for commercial gain before it will constitute bad faith.

That is a very accurate description of the Respondent’s conduct in this case. The Respondent, first, has chosen a name clearly because it is virtually the Complainant’s trade mark, business name and domain name and has made only a minor change to it. The Respondent then counts on users who wish to go to the godaddy.com site of the Complainant typing ‘godadday.com’, either because they mistype the address or because they mistakenly believe that this is the correct way to spell the name of the site or even that it is its correct name. Having lured the mistaken user into his website, he then presents them with an array of goods and services, some of which are in the fields of domain name registration and web hosting , but many of which are not. If the visitor makes a choice, he or she is then sent to another web site as part of a series of deceptions.

There are at least four types of deception involved, which the Panel has been able to identify, any one of which would constitute bad faith in the use of the domain name and by necessary inference its registration. They are in part illustrated by Annex 5 to the Complaint.

The deception is that when the user arrives at the home page of www.godadday.com, the false impression that the user has actually arrived at the Complainant’s site, “www.godaddy.com”, is reinforced by there being two links to <godaddy.com> displayed on the screen. This is clearly done to give reassurance to the visitor that he is in the official ‘godaddy’ site. At the same time , the page also carries the heading ‘godadday’ , thus furthering the confusion by the use of the two names on the one home page and the illusion that they are the same.

Secondly, the home page displays several items on its menu bar, one of which is ‘godaddy’. This is undoubtedly a representation that if the visitor selects that item, he will go to the ‘goddaddy’ site, i.e. the site of the Complainant, or at least to services offered by it. However, the representation is false, as the item leads to 8 separate sites, only two of which are the Complainant’s. The other two are clearly competitors in the same field. This is clearly a device to attract users to competitors of the Complainant or to put those competitors in a position where they can display their wares to potential customers of the Complainant.

Thirdly, the home page also has a series of ‘Popular links’ one of which is ‘godaddy’. When the user takes that option, it leads not to the ‘godaddy’ site, but to a display of 8 sites, only one of which is a ‘godaddy’ site. The others are competitors.

All of these examples are clear attempts of the Respondent to divert users to sites other than the Complainant’s.

Fouthly, the home page of www.godadday.com has several generic sites listed, the clear impression being that, if viewers navigate to them, the information they will find will be information on those subjects that is being promoted by ‘godaddy’, whose home page the user has been led to believe he is viewing. One such generic heading is ‘Domain Name Registration’. The domain name information to be found, however, is a series of 10 sites offering those services, but only one of them is ‘godaddy’s’ services on domain name registration. The others are competitors of the Complainant. This is therefore an attempt to wean potential customers of the Complainant, who are seeking domain name registration, away from the Complainant and over to its competitors.

The domain name registration services thus displayed are then even more geared against the interests of the Complainant, for the listed sites are grouped into two categories, the first being ‘Sponsored Links’. This is a clear representation that those sites are sponsored (the word used in paragraph 4(c)(iv)) by godaddy.com, from whose home page the information has allegedly come. However, of the four sponsored sites, none of them is a ‘godaddy’ site.

The next representation is that the next Group of sites, which is headed ‘Top Sites’, is also sponsored by ‘godaddy’. But that group contains 7 sites, only one of which is ‘godaddy’. The others are its competitors.

As is illustrated by Annex 5 to the Complainant, if the visitor uses the search engine located on the home page and specifically searches for ‘godaddy’, he will still be directed to a menu of sites including competitors of the Complainant.

One could go on, but the point is clear that having falsely induced the visitor into the “godadday” site by the very name of the site, the Respondent has perpetuated the deception by actively suggesting that the site being visited is the site of ‘godaddy’ when it is not, that the services offered on it are those of ‘godaddy’ when they are almost exclusively the services of its rivals and that the known expertise of ‘godaddy’, namely domain name registration, is available from that site, when in fact they are mainly services provided by other firms.

The Respondent has also installed a series of pop-ups, so that if the user backtracks to extricate himself from the mass of rival domain name services being offered, he reaches, not freedom, but a directory of an even wider array of offerings. This menu covers all of the usual blandishments, from online gambling to dating services and real estate agents. The misrepresentation is clearly that they are services endorsed by ‘godaddy’ or services which it has approved being on its website, neither of which is true.

In addition to these offerings and of more importance for the present case, is that one of the services offered on the menu is website hosting. But when that door is opened, it is found that the webhosting offered is provided not by the Complainant, but by 4 ‘Sponsored Sites’, none of which is the Complainant and 6 ‘Top Sites’ where, again, none of them is the Complainant. The end result of the Respondent’s promotion of webhosting, a major part of the Complainant’s business, has thus been to try to divert potential customers to firms all of whom who are the Complainant’s rivals and to describe 4 of those providers as being ‘sponsored’ .

It would be hard, therefore, to find a clearer case of conduct which comes within the conduct described as bad faith in paragraph 4(b)(iv) of the Policy, for the original deception is compounded by these and other examples that could be used for further illustration.

Moreover, the whole conduct of the Respondent’s modus operandi can only be described as bad faith.

This conclusion, which the Panel has reached, is consistent with the decisions of Administrative Tribunals in, amongst others, Yahoo! v. Eitan Zviely, supra, Neuberger Berman Inc. v. Alfred Jacobsen , WIPO Case No. D2000-0323, Estee Lauder Inc. v. estelauder.com et al and Jeff Hanna, WIPO Case No. D2000-0869, Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 Briefing com. inc v. Cost Net Domain Manager WIPO Case No. D2001-0970 and Dell Inc. v. Pateh Mbowe WIPO Case No. D2004-0689.

It should also be noted for reasons of completeness that it does not weaken the case against the Respondent in this regard that he also included the Complainant on the menus he created, i.e. that he also gave the Complainant’s site as one of those to which viewers could direct their inquiries. This is nothing to the point and does not avoid the conclusion being reached that the conduct is bad faith, as has been established in UDRP cases concerned with pure autodirecting, where the contact is re-routed without touching the Respondent’s site. In some such cases, although for no apparent reason, the Respondent has re-routed messages back to the Complainant’s own website. It has been held that this also is bad faith conduct, for the owner of the trade mark has not consented to it, it interferes with the use of the Complainant’s trade mark on the Internet and it may be being used to build up a data base of visitors to the Complainant’s sites. The same comments may be accurately applied to the facts of the present case.

Putting all of these facts together, the conclusion is that the Complainant has made out this, the third ground and thus all three grounds.

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

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: January 4, 2005