WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

GEOCITIES v. GEOCIITES.COM

Case No. D2000-0326

 

1. The Parties

Complainant: Geocities, a Delaware Corporation having its principal place of business at 3420 Central Expressway, Santa Clara, California 95051.

Respondent: Geociites.com, having a recorded mailing address of 630 E. 10th Dr. Mesa, Arizona 85204, with an administrative, technical and billing contact identified as "Cable Rosenberg".

 

2. The Domain Name(s) and Registrar(s)

Domain Name: geociites.com

Registrar: Network Solutions, Inc. ("NSI")

 

3. Procedural History

The procedural history of this proceeding can be summarized as follows:

- On April 25, 2000, Complainant initiated the proceeding by filing a complaint against Respondent.

- The complaint was reviewed by the WIPO Arbitration and Mediation Center (the "Center") and found to have been filed in compliance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).

- The Complainant paid the requisite fee, and requested a single panelist.

- The panel agrees with the Centerís conclusions regarding compliance of the complaint with the requirements of the UDRP, the Rules and the Supplemental Rules.

- On May 3, 2000, notice was sent by email and by certified mail to "geociites.com" by the Center. The notice indicated that the present administrative proceeding had been commenced, and that Respondent would have twenty days from the date of commencement of the proceeding to file a response to the administrative complaint (i.e., the Respondent was given until May 22, 2000). No response was received by WIPO from the Respondent by this date, and no response or any other communication from the Respondent subsequent to this date has been received by WIPO.

- On April 28, 2000, a copy of the complaint and the notice of the complaint were provided to NSI as registrar of the domain serving as the basis of the present proceeding. NSI responded on April 30, 2000, confirming that it was the Registrar of the Domain Name "geociites.com", indicating that the status of the registration was "active" and providing information regarding the registrant of "geociites.com".

- The panel concludes that the complaint was properly notified in accordance with Rules, paragraph 2(a).

- On May 24, 2000, WIPO provided Complainant and Respondent notice of Respondent default in light of the fact that no response had been received by WIPO by the required date from the Respondent.

- On May 31, 2000, the present administrative panel was notified to the parties, and a projected decision date of June 13, 2000 set for the panel. The panel provided a Statement of Acceptance and Declaration of Impartiality and Independence prior to its appointment.

- No further submissions were made by either of the parties.

 

4. Factual Background

The following facts have been uncontested by the Respondent and are accepted as being true:

- The Complainant is the owner of a United States registration no. 2,124,762. The service mark was registered by the United States Patent and Trademark Office on December 30, 1997, and cites a first use of the mark in commerce on February 15, 1995. The registration is for the term "GEOCITIES" in Classes 35 and 42 (US. Classes 101 and 102).

- The Complainant is the owner of the mark "GEOCITIES" and has used that mark in connection with its Internet website development and hosting services since at least as early as February 1995.

- The Complainant is the owner the domain name "geocities.com".

- The mark "GEOCITIES" as applied to GeoCitiesí services, pursuant to the representations of the Complainant in paragraphs 20, 22, 25, 26 and 27, is famous.

- The Respondent owns the domain name "geociites.com."

- The domain name "geociites.com" differs from the domain name "geocities.com" by the insertion of an additional letter "i" after the fourth letter of the latter domain name.

- Individuals who type "geociites.com" into their Internet browser are taken to a site displaying banner advertisements, and are subsequently re-directed to a distinct website (i.e., www.blacksonblondes.com) displaying pornographic images and other information. Additional windows are generated when the user is re-directed, each displaying banner advertisements or pornographic images. Attempts by the user to back out of the site by returning to the location previously browsed by the user also triggers the Internet browser to generate additional windows, each linking to a web page showing banner advertisements or pornographic images.

- GeoCities has received complaints from third parties that have mistyped the domain name "geocities.com" and have been subjected to events described in the preceding paragraph.

- A search for the term "geocities.com" using the Internet search site "Altavista.com" will include in the results for that search entries that link to the domain "geociites.com". Third parties have been taken or directed to the "geociites.com" link based on a search for the term "geocities.com" on said Internet search site.

- The Complainant has not authorized the Respondent to use or register the "geociites.com" domain name. Complainant through legal counsel has sent correspondence to Respondent to cease and desist the actions described above.

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts that the Respondentís registration and subsequent use of the domain name "geociites.com" meet the bad faith element set forth in Section 4(b)(iv) of the UDRP. In particular, Complainant alleges that the Respondent uses the Domain Name "geociites.com" to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with GeoCitiesís GEOCITIES mark as to the source, sponsorship, affiliation and endorsement of Respondentís websites and of the services offered at the sites.

In addition, the Complainant asserts that the Respondentís registration and use of the Domain Name "geociites.com" meet the bad faith element set forth in Section 4(b)(iii) of the UDRP. In particular, Complainant asserts that Respondent registered the Domain Name and used it primarily for the purpose of disrupting the commercial activities of GeoCities; namely, to compete for non-pornographic banner advertising revenue.

Finally, the Complainant asserts that the Respondent (i) has not used and is not using the name "geociites.com" in connection with a bona fide offering of goods or services, and has not demonstrated an intent to do so; (ii) Respondent is not nad has not been commonly known by the Domain Name "geociites.com", and (iii) Respondent is not making legitimate noncommercial or fair use of the Domain Name "geociites.com" without intending to mislead and divert consumers or to tarnish Complainantís mark for commercial gain.

B. Respondent

No response was received from the Respondent.

 

6. Discussion and Findings

To prevail on the merits of this proceeding, the Complainant must establish, that with respect to the Domain Name in question, 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 and registrant of the Domain Name has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.

Each of these elements will be taken up in sequence.

A. The Domain Name is confusingly similar to the registered mark "GEOCITIES"

The Complainant has established that it possesses rights in the registered mark "GEOCITIES" in the United States in relation to its use in connection with website hosting and development services. The evidence provided by the Complainant shows a significant volume of use of the term "GEOCITIES" in connection with web-based activities, including advertising, linking and other means of promotion or use of the term in connection with the Complainant. The volume of use makes reasonable the assertion by the Complainant that the mark "GEOCITIES" is famous with respect to web-based activities.

The Domain Name is a simple misspelling of the registered mark of the Complainant. Moreover, the Domain Name has been registered in the same top level domain as the domain name owned by the Complainant that uses the identical term as the registered mark "GEOCITIES" (i.e., www.geocities.com).

Evidence has been provided that demonstrates that third parties have made typographical errors that led to the user mistakenly being directed to the Respondent's web site due tot he misspelling of the term. Moreover, evidence has also been provided that users conducting searches for the Complainant's trademark and domain name on well-known Internet search sites retrieve results that, when clicked, intentionally direct those users to the Respondent's web-site. This has been shown to occur both with regard to results that overtly disclose the misspelling as well as links that do not disclose this misspelling to the user.

In light of these uncontested findings and assertions of fact, the panel finds that the Domain Name "geociites.com" is confusingly similar to the domain name owned by the Complainant.

B. The Respondent has no rights or legitimate interests in the Domain Name

The Respondent has filed no response to the complaint, and thus has made no assertion of interest in the Domain Name. No evidence has been provided to the panel to suggest that the Respondent has any rights or any legitimate interests in the Domain Name. The evidence provided by the Complainant as to the nature of web-sites associated with the Domain Name reveals nothing that would indicate any relationship of the content or purpose of those web-sites to the Domain Name.

The panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

 

C. The Domain Name has been registered and is being used in bad faith by the Respondent

The evidence provided by the Complainant shows that the Respondent has used the Domain Name in bad faith as that term has been defined in paragraphs 4(b)(iii) and (iv) of the UDRP.

- The evidence provided by the Complainant demonstrates that users who enter the term "geociites.com" by mistake into their Internet browser will be led to the Respondent's web site(s). None of these sites offers services related to the web-hosting or other services provided by the Complainant, and none of these sites is sponsored or affiliated with the Complainant. The registration of the Domain Name appears to serve no purpose other than to capture the user who mistakenly or inadvertently enters the incorrect domain name (i.e., "geociites.com") when he or she is attempting to link to the Complainant's web site or a site affiliated with that website using the Complainant's trademark (i.e., "GEOCITIES"). The evidence thus supports the Complainant's assertion that the Respondent is intentionally using the Domain Name in bad faith to redirect users to its web-sites and is thereby capitalizing on the confusion created by the confusing similar term "geociites.com".

The evidence offered by the Complainant also shows that there has been actual confusion caused by the Respondent's Domain Name among users. In particular, parties intending to visit a GeoCities-sponsored or affiliated web-site have been intentionally misdirected to the Respondent's web-sites as a consequence of misspelling of the Complainant's domain name which incorporates Complainant's registered trademark "GEOCITIES."

Finally, the evidence supports Complainant's assertion that the apparent purpose of the misdirection is to create commercial opportunities for the Respondent, either in the form of payment for access to the Respondent's web-sites, or through sales of products offered for sale on those web-sites by the Respondent. Based on these points, the Complainant has sustained its burden of demonstrating that the Respondent registered the Domain Name in bad faith as that term is defined in paragraph (4)(b)(iv)

- The second assertion of the "bad faith" registration by the Complainant is based upon paragraph 4(b)(iii) of the UDRP. In this regard, the Complainant asserts that the Respondent's registration and use of the Domain Name was primarily to disrupt the business of the Complainant. To support this assertion, the Complainant asserts that both it and the Respondent compete in the sale of non-pornographic banner advertisements. Complainant then argues that this fact, coupled with the Respondent's intention to trade on the goodwill and fame of GeoCities and the GEOCITIES mark, provide evidence demonstrating that the Respondent registered the domain name primarily to disrupt the business of the Complainant.

The criteria of bad faith defined in paragraph 4(b)(iii) specifies that the standard will be met if it is shown that the Respondent registered the domain name "primarily for the purpose of disrupting the business of a competitor". Unlike the standard of bad faith defined in paragraph 4(b)(iv), this standard focuses on actions taken by a party to intentionally disrupt the business of another party through the registration of a domain name. The evidence provided by the Complainant demonstrates without any question that the Respondent registered a domain name that represents a simple one letter misspelling of the Complainant's registered trademark and that this resulted in actual confusion of users. The evidence further shows that the use of the Domain Name by the Respondent was an intentional plan to commercially capitalize on the fame and goodwill of the Complainant's mark "GEOCITIES" as well as the GeoCities site.

The answer to the question of whether the evidence supports the Complainant's assertion that the registration of the Domain Name by the Respondent was done primarily to disrupt the business of the Complainant is less clear. The standard defined in paragraph 4(b)(iii) does not focus primarily on the question of commercial gain through creation of confusion with the mark or goodwill of the owner of the mark by a party through registration of a confusingly similar domain name. Instead, the standard in paragraph 4(b)(iii) focuses on the question of whether it was the intent of the Respondent to disrupt the business of the Complainant through the registration of the domain name. The result - disruption of the business -- may come from parties that are confused by the registration of a domain name that is confusingly similar to a trademark. The result may also stem from a domain name that has no prospect of causing confusion with the mark of the complaining party (e.g., it may disparage the business of the complaining party directly).

The potential of increased competition in sales of banner advertisements that may ensue from the misdirection of users by the Respondent, standing alone, would not seem sufficient to demonstrate that conditions of paragraph (iii) have been met. Such evidence seems particularly relevant to the questions posed by the standard of bad faith articulated in paragraph (iv).

However, in the present case, the Complainant has demonstrated that users who make a typographical error when entering the URL of the Complainant will be taken to the Respondent's web-sites. The subsequent events (i.e., a series of propagating windows that "trap" the user at the Respondent's sites) interfere with the ability of the user to leave Respondent's sites and to return to the site to which they intended to visit but for the typographical error. This practice unquestionably disrupts the delivery of access to websites hosted by the Complainant by "capturing" unwitting users and making it difficult for those users to gain access to such websites. In addition, users who are so captured are forced to view websites containing pornographic images and information. This disrupts the business of the Complainant because, among other things, it prevents the Complainant from operating its website hosting services according to the terms and conditions specified in the GeoCities website hosting agreements (i.e., it directs users to sites that contain pornographic information in a manner contrary to the GeoCities terms of service).

In view of these points, the panel finds that the practices of the Respondent in registering the Domain Name have resulted in disruption of the business of the Complaint, and, in the absence of evidence to the contrary, the panel finds that the Respondent has registered the domain name primarily for this purpose.

 

7. Decision

The panel finds that the Complainant has sustained its burden of demonstrating that (a) the Domain Name ("geociites.com") is identical to or confusingly similar to the mark "GEOCITIES" owned by the Complainant, (b) Respondents have no rights and no legitimate interest in the Domain Name ("geociites.com") and (c) the Domain Name ("geociites.com") has been registered and is being used in bad faith by the Respondent.

Accordingly, pursuant to the authority of Article 4(i) of the UDRP, the Panel requires that the registration of the Domain Name ("geociites.com") be transferred to the Complainant.

 


 

Jeffrey P. Kushan
Presiding Panelist

Dated: June 19, 2000