WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lycos Asia Ltd v. Buy This Name
Case No. D2001-0828
1. The Parties
The Complainant in this proceeding is Lycos Asia Ltd, a Singapore company with its principal place of business at 10 Eunos Road 8, #12-05 Singapore Post Centre, Singapore.
The Respondent in this proceeding is a party known as "Buy This Name" located at 19, Bondarenko Square, Obninsk, Kaluga, Russia.
2. The Domain Name and Registrar
This dispute concerns the domain name <lycosbox.com> ("the Domain Name").
The registrar with which the domain name is registered is: BulkRegister.com, Inc., Baltimore, United States of America.
The Domain Name was registered on May 10, 2001.
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in hardcopy on June 25, 2001. A Complaint Deficiency Notification was sent to the Complainant on July 4, 2001, requesting the complaint in electronic format. The complaint was received in electronic format on July 7, 2001, and payment in the required amount to the Center has been made by the Complainant.
On June 28, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
On July 10, 2001, the administrative proceeding began.
No response was received from the Respondent. On July 26, 2001, the Notification of Complaint was returned from the Respondent's address.
On, August 7, 2001, notification of appointment of an administrative Panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist, Clive Elliott, and advised that the decision should be forwarded to WIPO by August 21, 2001.
On August 17, 2001, a decision was rendered to the Center.
4. Factual Background
The Complainant states that it is a leading Internet portal and website and services provider that is part of the Terra Lycos network of Internet portals and websites. Terra Lycos is a new global Internet network operating in 40 countries in 19 languages, reaching 91 million unique monthly visitors worldwide. Created by the combination of Terra Networks, S.A., and Lycos, Inc., in October 2000, TerraLycos is said to be one of the most popular Internet networks in North America, Europe and Asia, and is the number three Internet access provider in the world.
The Complainant asserts it has the exclusive, perpetual and worldwide right to use the LYCOS trademark by virtue of its license agreement with the trademark owner, Carnegie Mellon University. Lycos, Inc. subsequently granted the right to use the LYCOS trademark in the Asia-Pacific region (including Singapore, Hong Kong, the Peopleís Republic of China, Taiwan, Malaysia, India, Thailand, the Philippines, Brunei, Indonesia, Vietnam, Laos, Myanmar and Cambodia) to the Complainant pursuant to the terms of a license agreement between the Lycos, Inc. and Lycos Asia Pte Ltd (i.e., the Complainantís predecessor). Lycos, Inc. also granted to the Complainant the right to register and use the LYCOS trademark in domain names in the above territory pursuant to the terms of this license agreement.
5. Partiesí Contentions
The Complainant states that it registered and used the Domain Name on or around April 3, 2000, for the purpose of providing free e-mail services and other services and information. It is asserted that through this registration and use of the Domain Name in connection with providing free e-mail services and other services, the Complainant has acquired additional common law rights in the trademark and domain name <lycosbox.com>. When the Complainant attempted to renew its registration in May 2001, it discovered that it could not re-register the domain name <lycosbox.com> due to the Respondentís registration of this domain name.
The Respondent failed to reply to the Complainantís correspondence of May 18, 2001, whereby the Complainant demanded that the Respondent cease and desist from any further use of the Domain Name or the "LYCOS" trademark. A true and correct copy of the Complainantís cease and desist letter to the Respondent is on the record. The Complainant submits that in its failure to reply to such correspondence, the Respondent has failed to provide any evidence of its right or legitimate interest in respect of the "LYCOS" mark or the Domain Name.
The Complainant points out that the Respondent has taken advantage of the Complainantís failure to renew a domain name that incorporates a famous mark (i.e., LYCOS) that must have been known by the Respondent to be associated with the Complainant, its related companies and its and their products and services (i.e., Internet e-mail services). Furthermore, it is noted that the Respondent has no connection with Complainantís enterprise.
The Complainant claims the Respondent has put in place a mechanism whereby any person who attempts to access the Complainantís website and services through the Domain Name is automatically linked to a pornographic website, "www.pornolio.com". The Respondentís pornographic website features a series of hyperlinks to third party websites that feature additional pornographic content, which indicates that the Respondent receives a royalty or other fee for the Internet traffic that it drives to such third partiesísites and/or for persons who register as members of such sites by virtue of having accessed such sites through the Respondentís website.
Additionally, the homepage of Respondentís pornographic website are said to feature advertisements for third party websites, with such advertising revenues being increased by the virtue of more persons accessing the Respondentís pornographic website.
Finally, it is stated that the Respondentís redirection of Internet traffic to other websites through the use of the Domain Name is not a bona fide offering of services. Therefore, the Respondent has used the Domain Name to attract Internet users to the Respondentís website for its commercial gain by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís pornographic website.
The Complainant says that it has received numerous complaints from persons who had previously accessed and used the Complainantís website through the Domain Name and who have inadvertently accessed the Respondentís pornographic website. Examples of these complaints have been provided.
The Complainant alleges the Respondent has also failed to provide his or her true name as the registrant of the Domain Name. Additionally, the Respondent appears to have used a false name (i.e., the famous author Charles Bukowski, who died in 1994) as the administrative contact for the domain name registration.
No response was received from the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain Name Identical or Confusingly Similar
It is clear from the evidence, and not disputed by the Respondent, that "LYCOS" is well recognized and famous in relation to Internet services in many countries of the world. It is also asserted and not disputed that "LYCOS" is a brand of very significant value. The "LYCOS" trademark is widely registered. The Complainant uses "LYCOS" with a range of other distinctive or descriptive terms to identify various aspects of its business. Likewise the evidence is that the Domain Name has been used by the Complainant in trade and separate common law rights subsist in the said domain name.
The Domain Name is a combination of the trademark "LYCOS" and the term "box". The Domain Name is confusingly similar to the trademark" LYCOS".
No Right or Legitimate Interest
Given the huge use and exposure of the "LYCOS" trademark and in the absence of any explanation from the Respondent as to why it might have a right or legitimate interest in using the word "LYCOS" or "lycosbox", it is difficult to imagine how the Respondent might have a right or legitimate interest to use "LYCOS" as part of its domain name, leave alone as the first and dominant part. The panel is unaware of any particular meaning attributable to the word other than as a description of the Complainant or those associated with it.
The Complainant makes out its case on this ground.
Domain Name Registered and Being Used in Bad Faith
It appears that there has been no bona fide use of the Domain Name by the Respondent. The only use made appears to be to direct users to commercial porn sites and links. The use of an identical or very similar trademark to direct users to websites in this way amounts to a prima facie case of improper motive/bad faith. Unsurprisingly, such use is not asserted to be in good faith and it hardly could be.
Further, the Panel finds that the person who registered the Domain Name is not the Registrant whose name appears as such, and that the deception undertaken warrants a finding of egregious bad faith on the part of the party that registered the Domain Name and/or the Respondent. Whether or not the Respondent is simply a front, it seems that the true identity of the party that actually holds or controls the domain name remains uncertain. Nevertheless, the Domain Name appears too have been registered by deception and is being used as an instrument of deception and bad faith.
Given the absence of any explanation and the prima facie case that the Complainant has put forward, it is found that the Domain Name was registered and is being used in bad faith.
Accordingly, the Complainant makes out its case on all three grounds.
The Domain Name should be transferred to the Complainant.
Clive L. Elliott
Dated: August 17, 2001