WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

VeriSign, Inc. v. Onlinemalls

Case No. D2000-1446

 

1. The Parties

The Complainant is VeriSign, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Mountain View, California, USA.

The Respondent is Onlinemalls, with address in Carmel, Indiana, USA.

 

2. The Domain Names and Registrar

The disputed domain names are "veresign.com" and "verasign.com".

The registrar of the disputed domain names is Tucows, Inc., with business address in Toronto, Ontario, Canada.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on October 24, 2000, and by courier mail, received by WIPO on October 25, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On October 27, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Tucows, Inc. (with the Registrarís Response received by WIPO on October 28, 2000).

(b) Complainantís initial complaint elected the appointment of a three-member panel to decide this proceeding. On November 30, 2000, Complainant transmitted to WIPO an amendment to its complaint, electing appointment of a sole panelist to decide this proceeding.

(c) On December 7, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.

(d) On January 11, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.

(e) On January 16, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 16, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(f) On January 18, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by January 31, 2001. On, January 18, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the term "VERISIGN" as a trademark on the Principal Register at the United States Patent and Trademark Office (USPTO), Reg. No. 2,302,350, dated December 21, 1999, in International Class 9, covering digital identity certification system used on computers. Said trademark registration claims a date of first use in commerce of September 5, 1995. (Complaint, para. 13, and Annex 3). Complainant has filed an application at the USPTO for registration of a stylized "V" design in the form of a checkmark as a service mark in International Class 42, covering computer services, including, inter alia, providing authentication of identity (Ser. No. 75/769,326). Such application was approved for publication and published on February 15, 2000. (Id., Annex 4) Complainant has registered the "VERISIGN" mark in a number of countries (and regions) other than the United States, including (but not limited to) Brazil, China, the European Community and Japan, and has applied for registration of the mark elsewhere (id., para. 13 and Annex 4). Complainantís trademark registrations are valid and subsisting.

Complainant registered the domain name "verisign.com" on June 2, 1995 and uses that name to identify an active website with Internet address "www.verisign.com". Such website is Complainantís principal business services location. (Id., para. 14 and Annex 2).

According to the registrarís verification response to WIPO, dated October 28, 2000, "Onlinemalls" is the listed registrant of the domain names "veresign.com" and "verasign.com". According to that response, the records for the disputed domain names each were created on June 22, 2000, and were last updated on October 27, 2000.

According to printouts of web pages furnished by WIPO, as of December 12, 2000, the Internet address "www.veresign.com" identified a web page headed "ONLINEMALLS.COM", and the Internet address "www.verasign.com" resolved to the Internet address "www.onlinemalls.com" that identified an identical "ONLINEMALLS.COM" web page. "ONLINEMALLS.COM" advertises web hosting services, stating, inter alia:

"Onlinemalls includes in all of its Web hosting packages features that are usually sold for a premium at other companies. Among these features are Secure Server (SSL) access, cgi-scripting, Frontpage extensions, easy site management tools, Miva Empresa, which makes it simple to build sophisticated, dynamic data-driven web pages and a Control Panel which allows you the option to administrate your account through a simple, password-protected page and tons more!"

(WIPO file, item 5, and Panel visit of January 30, 2001).

In July-August 2000, Complainant (through counsel) sent via e-mail cease and desist and transfer demands to Respondent. In those e-mail messages, Complainant offered to reimburse Respondentís out-of-pocket expenses in connection with the disputed domain names (at a total price of $500). There is no indication in the Complaint that Respondent replied to these demands. (Complaint, para. 20, and Annex 8).

The Service Agreement in effect between Respondent and Tucows, Inc. subjects Respondent to Tucows, Inc.ís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant states that it is the holder of trademark registrations for the "VERISIGN" mark in the United States and other countries, and that it has applied for registration for that mark and a related stylized design in the United States and other countries (see Factual Background, supra). Complainant states that it has used the "VERISIGN" mark in commerce.

Complainant indicates that it registered the domain name "verisign.com" on June 2, 1995, and that it uses that domain name to host a business website at "www.verisign.com".

Complainant states that Respondent is not authorized to use its mark.

Complainant indicates that Respondent has not used the "www.veresign.com" web address to construct an active website. Complainant alleges that such failure constitutes bad faith use of the domain name.

Complainant indicates that Respondent has also registered the domain names "verasign.com", "thawt.com" and "pluscart.com". Complainant alleges that passive holding of these names constitutes a violation of paragraph 4(b)(ii) of the Policy since these names are identical or confusingly similar to the trademarks of others.

Complainant states that Respondent has used the domain name "verasign.com" to resolve to a web site entitled "Onlinemalls.com". Complainant indicates that Respondent has used this web site to offer for sale web hosting packages, and that such conduct constitutes use of Complainantís mark to attract Internet users by creating consumer confusion within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant indicates that it sent Respondent cease and desist and transfer demands regarding the disputed domain names.

Complainant requests that the Panel direct the registrar to transfer the disputed domain names to it.

B. Respondent

Respondent did not reply to Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond

(see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., paragraph 15(a)).

Complainant is the holder of trademark registrations for the term "VERISIGN" in the United States and other countries (and regions) and is using that mark in commerce (see Factual Background, supra). Complainantís registration of the "VERISIGN" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 2) The Panel determines that Complainant has rights in the trademark "VERISIGN". (Footnote 3) Based on the December 21, 1999, date of the USPTO trademark registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the "VERISIGN" mark arose prior to Respondentís registration, on June 22, 2000, of the disputed domain names.

Complainant registered the domain name "verisign.com" on June 2, 1995 and has used that domain name in connection with hosting an active website. Complainantís website, identified by the Internet address "www.verisign.com", is well known to Internet users as a source of identity verification services.

Respondent has registered the domain names "veresign.com" and "verasign.com". Each of these domain names (1) incorporates a single-letter spelling variation of Complainantís "VERISIGN" mark, and (2) adds the generic top-level domain (gTLD) ".com".

The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain names to "VERISIGN" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 4)

The terms "veresign.com" and "verasign.com" are nearly identical to "VERISIGN" in their visual impression. An Internet user or consumer viewing the disputed domain names is likely to confuse either one of them with the term "VERISIGN" (or "verisign.com"). Complainantís "VERISIGN" mark is well-known among Internet users, and this factor contributes to the likelihood of confusion. (Footnote 5) Moreover, Respondent appears to have employed minor misspellings of Complainantís mark to take bad faith advantage of spelling errors made by Internet users while attempting to enter Complainantís Internet address on their web browsers. Bad faith in selecting a domain name may contribute to a finding of confusing similarity. (Footnote 6) The Panel determines that the disputed domain names "veresign.com" and "verasign.com" are confusingly similar to "VERISIGN" in the sense of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

Respondentís only demonstrated use of the disputed domain names has been in connection with redirecting Internet users to websites unrelated to Complainant. Such use is hereinafter determined to be in bad faith. Bad faith use of domain names does not establish rights or legitimate interests in the names in the sense of paragraph 4(a)(ii) of the Policy.

Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).

Respondent has registered two domain names that Internet users are likely to employ inadvertently as they misspell Complainantís mark and domain name when attempting to address Complainantís website. Respondentís choice of slightly misspelled versions of Complainantís mark and domain name was deliberate. Complainantís mark is well-known among Internet users, and there is a close relationship between the services provided by Complainant and those offered by Respondent. Respondentís "ONLINEMALLS.COM" website (to which the disputed domain names are directed) specifically highlights website security as a feature of its web hosting services, and Complainantís principal line of business involves on-line security. Moreover, Respondentís sole use of the disputed domain names is to direct Internet users to a web page that in no way refers the disputed names. There is no suggestion that the disputed domain names refer to a business enterprise operated by Respondent.

Respondent has intentionally sought to use Complainantís mark to confuse Internet users as to sponsorship of or affiliation with a website that Respondent operates for commercial gain. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain names "veresign.com" and "verasign.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Onlinemalls, has engaged in abusive registration of the domain names "veresign.com" and "verasign.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "veresign.com" and "verasign.com" be transferred to the Complainant, VeriSign, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: January 31, 2001

 


 

Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

3. For purpose of deciding this case, the Panel need not consider the significance of Complainantís applications for service mark and design registration.

3. ee Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). The term ".com" has been recognized by the USPTO to be capable of acquiring secondary meaning in an appropriate context. See, e.g., America Online, Inc. v. Dolphin@Heart, Case No. D2000-0713, decided August 24, 2000.

4. See Brookfield, id., 174 F.3d 1036, 1053-61 (9th Cir. 1999), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

5. Brookfield, id. at 1059 (9th Cir. 1999), quoted and discussed in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, decided July 20, 2000.