WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Micron Electronics, Inc. v. Hostars Enterprises, Inc.
Case No. D2001-0599
1. The Parties
The Complainant is Micron Electronics, Inc., of 900 East Karcher Road, Nampa, Idaho, 83687, United States of America, represented by Messrs. Howrey Dimon Arnold & White of Houston, Texas. The Respondent is Hostars Enterprises, Inc., of 110-2945 Jacklin Road, Victoria British Columbia V9B 5E3, Canada.
2. The Domain Names and Registrar
The disputed domain name is <wwwhostpro.com> and the registrar is Network Commerce, Inc., of Seattle, Washington, United States of America.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on April 25, 2001, and in hard copy on April 27, 2001. Receipt was acknowledged next day. On April 30, 2001, registration details were sought from the registrar and on May 1, 2001, the registrar confirmed that the Respondent is the current registrant of the disputed domain name and provided all available contact details. The registrar did not respond to the Centerís request for confirmation that the Policy applies to the disputed domain name.
On May 3, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee and formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the registrar and ICANN.
The last day specified in the notice for a Response was May 22, 2001. None was received an on May 29, 2001, the Center sent the Respondent a formal notification of its default.
On June 1, 2001, the Center appointed Alan L. Limbury to serve as panelist, having received from Mr. Limbury a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the panel and notified the parties of the projected decision date of June 15, 2001.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; no Response was filed and the administrative panel was properly constituted. The panel has had regard to the registrarís registration agreement (exhibited to the Complaint) and is satisfied that the Policy applies to the disputed domain name.
4. Factual Background (uncontested facts)
The Complainant, through its wholly owned subsidiary, Hostpro, Inc., is the owner of a United States federal trademark registration for the mark HOSTPRO® for "hosting the web sites of others on a computer server for a global computer network; hosting software applications for others on a computer server for a global computer network, in International Class 42." The application was filed on August 17, 1999, and registration was granted on July 25, 2000.
The Complainant has used the mark in commerce continuously since January 1998, as a brand name for its web hosting services, marketed primarily through the Internet. The Complainant operates a website at <hostpro.com>. The Complainant has spent substantial time, effort and money advertising and promoting the HOSTPRO® mark throughout the world. As a result it has developed an enormous amount of goodwill in the mark.
On September 13, 2000, over two years after the Complainant began using its trademark, the Respondent began using the domain name <wwwhostpro.com> by filing for the same electronically over the Internet.
5. Partiesí Contentions
The ".com" portion of the disputed domain name is to be ignored when assessing the similarity between the Complainantís mark and Respondentís domain name. For purposes of assessing the identity or confusing similarity between domain names and trademarks, panels have held that the similarity between domain names and trademarks, top-level domain extensions, spaces, hyphens and punctuation are ignored: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (finding the <talk-city.com> domain name to be confusingly similar to the trademark TALKCITY).
The disputed domain name is identical or confusingly similar to the Complainantís well-known service mark HOSTPRO® in that the prefix "www" is a universally known acronym for the world-wide web. It will therefore be assumed by consumers that the domain name is in fact functionally identical in sound, appearance and the idea suggested thereby, to the Complainantís well-known service mark HOSTPRO® .
For purposes of assessing the identity or confusing similarity between domain names and trademarks, panels have held that the insertion of the prefix "www" in front of a trademark is a type of exploitation of the possibility of typographical error by users, so-called "typo-piracy", which attempts to mislead Internet users and takes advantage of and profits from the unavoidable fact that typographical errors occur. The use of the "www" prefix in conjunction with a trademark to create a domain name renders the domain name confusingly similar and practically identical to the Complainant's mark: Novus Credit Services, Inc., v. Personal, WIPO Case No. D2000-1158 (finding the domain name <wwwdiscovercard.com> to be confusingly similar to the trademark DISCOVERCARDâ ); CTV Television, Inc., v. ICANADA Co., WIPO Case No. D2000-1407 (regarding the domain name <www-CTV.com>, "www" was held to constitute the use of a generic term that does nothing to reduce the potential for confusion with a registered trademark or service mark.); Geoffrey, Inc., v. Online Rus, WIPO Case No. D2000-1009 (use of "www" in conjunction with the mark TOYS "R" US, is virtually identical to the complainant's mark and clearly is confusingly similar.); Nokia Corp., v. Private, WIPO Case No. D2000-1271 (regarding the domain name <wwwnokia.com>, the letters "www" have no distinguishing capacity in the context of domain names.); Dow Jones & Co., Inc., and Dow Jones, L.P., v. Powerclick, Inc., WIPO Case No. D2000-1259 (regarding the domain names <wwwdowjones.com>, <wwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com>, the errors or changes, such as leaving out a dot, are generic and do nothing to change Respondentís infringement of the core trademark and thus the Respondentís domain names are confusingly similar to the Complainantís trademarks and service marks).
Because <wwwhostpro.com> is being used as a domain name, Internet users who seek the Complainantís website at <hostpro.com> are being misdirected to the competing <wwwhostpro.com> website. Thus, Internet users may be confused as to the affiliation, sponsorship or endorsement of the <wwwhostpro.com> site, or believe that the Complainant is the source of the products and/or services offered through the <wwwhostpro.com> website: Goto.com, Inc., v. The Walt Disney Co., 200 F.3d 1199, 1206 (9th Cir., 2000). ("With respect to Internet services, even services that are not identical are capable of confusing the public.")
In accordance with Paragraph 4(a)(ii) of the Policy, panelists have held that where a Respondent cannot show any prior use of a domain name in connection with a bona fide offering of goods or services, has not been commonly known by the domain name or is not making a legitimate non-commercial or fair use of the domain name then that Respondent has no rights or legitimate interest in that domain name: Ahmonson Land Company v. Vince Curtis, WIPO Case No. D2000-0859. Here, the Respondent cannot show any rights or legitimate interest in the disputed domain. Before being contacted by the Complainant, the Respondent had a link which transferred Internet users typing in the disputed domain name to the Respondentís website, <hostars.com>, when the affected Internet users were trying to reach the Complainantís legitimate website but had inadvertently made a typographical error and left out the period or dot between "www" and HOSTPRO®. As of at least April 20, 2001, there is no information of any type posted on the website <wwwhostpro.com>.
The Respondent has never been known by the domain name <wwwhostpro.com> nor has it made any legitimate non-commercial or fair use of the Complainantís marks.
On February 16, 2001, the Complainant sent a letter to the Respondent concerning its registration and use of the disputed domain name and requesting that the Respondent contact the Complainant to resolve the matter. The letter was sent by first class mail to the physical address in Victoria, British Columbia, Canada listed in the "Whois" registration records of the registrar for the disputed domain name. On April 10, 2001, the Complainantís counsel telephoned the phone number listed in the "Whois" registration records of the registrar. The phone was answered by "Elliott" who refused to give a last name but, when asked, said he had authority to speak for the Respondent concerning the <wwwhostpro.com> website. Elliott claimed that the Respondent sent the Complainant an agreement to transfer the domain name to the Complainant in exchange for a payment to cover the Respondentís cost of registering the domain name. The Complainant never received the alleged transmittal. Elliott refused to send a duplicate copy of the transmittal and stated that the Respondent now wanted the Complainant to make it an offer.
No response was filed.
6. Discussion and Findings
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed 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 disputed domain name has been registered and is being used in bad faith.
Failure to file a Response
Numerous cases under the Policy have adopted and applied the principle that a Respondentís failure to dispute the allegations of the Complainant permits the inferences that the Complainantís allegations are true and that the Respondent knows its website is misleading. See, for example, Hewlett-Packard Company v. Full System (Case FA 0094637); David G. Cook v. This Domain is For Sale (Case FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (Case FA0094925).
A somewhat broader statement of principle is contained in Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441):
"The Panel draws two inferences where the Respondent has failed to submit a response: (a)"the Respondent does not deny the facts, which the Complainant asserts" and (b) "the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts"."
Identity or confusing similarity
Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy; see, for example, the cases cited by the Complainant. There is no dispute that the domain name is essentially identical to the Complainantís trademark HOSTPRO® .
The panel finds the Complainant has established this element.
The Complainant has the burden of proving the absence of any rights or legitimate interests in the disputed domain name. In this case the Respondent has not denied the Complainantís express assertions that the Respondent cannot show any rights or legitimate interest in the disputed domain name; that the Respondent linked the disputed domain name to the <hostars.com> website and that the Respondent has never been known by the disputed domain name.
In these circumstances the Panel finds the Complainant has established this element.
There is no denial by the Respondent that, on April 26, 2001, Elliott spoke for it in inviting the Complainant, through its counsel, to make an offer for the disputed domain name. The context in which this conversation took place makes it plain that the Respondent expected any offer to exceed its out-of-pocket expenses directly related to the domain name. The Panel is not satisfied, however, that this demonstrates that the disputed domain name was registered on September 13, 2000, primarily for the purpose of sale at a profit to the Complainant (or to anyone else).
The Respondent has not denied that it linked the disputed domain name to its competing <hostars.com> website, where it offers products and/or services. Having regard to the similarity between the disputed domain name and the Complainantís <hostpro.com> website, the Panel is satisfied that the Respondent has used the disputed domain name intentionally in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the Respondentís website. Under paragraph 4(b)(iv) of the Policy, such use constitutes evidence of both bad faith registration and use.
On this evidence, the Panel finds the disputed domain name was registered and is being used in bad faith.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <wwwhostpro.com> be transferred to the Complainant.
Alan L. Limbury
Dated: June 15, 2001