WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Netstock, Inc. v. Music Wave
Case No. D2002-0441
1. The Parties
The Complainant is Netstock, Inc, of 1000-124th Avenue NE, Bellevue, Washington 98005, United States of America, which is represented in this proceeding by Randall Moeller of Graham & Dunn PC, 1420 Fifth Ave, Suite 3300, Seattle, WA 98101-2390, United States of America.
The Respondent is Phayze Inc, of 11, 13 rue de líescart, Paris, France.
2. The Domain Names and Registrar
The domain names in dispute are <sharbuilder.com> and <sharebulder.com>.
The registrar with whom the domain names are registered is IDR Internet Domain Registry LTD ("idregister.org"), POB 1057, 12 Hasharon Way, Kfar Saba 44110,
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also adopted by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on May 7, 2002 (by email), and May 16, 2002 (hardcopy).
3.3 Following verification of the registration of the domain name and other details with the Registrar on May 24, 2002, the Center completed its compliance checklist on May 24, 2002, and notified the Respondent of the Complaint and the commencement of administrative proceedings, together with a copy of the Complaint, on the same date. This was done in accordance with paragraph 2(a) of the Rules by email and post/courier.
3.4 In accordance with the Rules and Supplementary Rules, the Respondent was given 20 calendar days within which to file a Response.
3.5 On June 24, 2002, the Center issued a Notification of Respondent Default to the Respondent by email and post/courier, advising that it would now move to the appointment of an Administrative Panel in accordance with the Rules and Supplementary Rules.
3.6 Following receipt of the necessary Acceptance and Declaration of Impartiality, on July 1, 2002, the parties were notified of the appointment of the administrative panel to be composed of Staniforth Ricketson (as sole member).
3.7 In light of the above, the Panel finds that:
- The Complaint was filed in accordance with the requirements of the Rules and the WIPO Supplemental Rules.
- The Respondent was properly notified of the Complaint, in accordance with paragraph 2 of the Rules.
- The Panel was correctly constituted.
- The appropriate language for the proceeding is English (in accordance with paragraph 11(a) of the Rules).
4. Factual Background
4.1 The present proceeding has a similar factual basis to that in WIPO Case No. D2002-0442, which was filed at the same time, and relates to the domain name <sharebuider.com> registered with a different Registrar ("joker.com"). The Complainant in both proceedings is the same, but the Respondents are different, although apparently linked, as noted below.
4.2 The Complainant is a provider of online investment services, and launched a website with the URL <sharebuilder.com> in 1999. Through this site it offers low cost investment services and educational materials on investment.
4.3 Since December 1999, the Complainant has been the owner of registered US service mark SHAREBUILDER Reg. No 2488646 for "stock brokerage services, namely facilitating the purchase and sales of equities by means of a global computer network", first use and first use in commerce, December 23, 1999.
4.4 In or about April 2002, the Complainant learned that the Respondent had registered the domain names of <sharbuilder.com> and <sharebulder.com>. On April 11, 2002, the Complainant sent a registered letter to Phayze Inc, informing the Respondent that it owned the SHAREBUILDER trade mark and asking the Respondent to discontinue its use of the domain names or any other confusingly similar name (see Annex 7, Complaint). No response was received to the communication, and evidence that the letter could not be delivered at the address appearing at the address in WHOIS is attached (Annex 8).
4.5 As in D2002-0442, both domain names <sharbuilder.com> and <sharebulder.com> resolve to the website "www.amatuervideos.nl", which contains pornographic advertisements and purports to offer free passwords to other pornographic websites (printout of website, viewed April 22, 2002, is contained in Annex 9).
4.6 On April 23, 2002, the Complainant sent a further letter, seeking the cessation of use of the domain name and infringement of its trade marks, to the listed administrative contact of PGW Internet Solutions, the listed registrant of www.amatuervideos.nl and www.amaturevideos.nl but received no response (Annex 11). An earlier email message was also sent on April 8, 2002, but no reply to that was received (Annex12). The same communications were made in WIPO Case No. D2002-0442.
4.7 The Complainant then initiated the present proceeding.
5. Partiesí Contentions
The Complainant seeks transfer to it of the disputed domain names:
<sharbuilder.com> and <sharebulder.com> (Complaint, paragraph 13).
In support of such contention, it is necessary for a Complainant under the UDRP to address each of the elements described in paragraph 4(a) of the Policy. The Complainant adopts the same arguments here as put forward in WIPO Case No. D2002-0441:
- With respect to the elements described in paragraph 4(a)(i), the Complainant submits that the disputed domain names are identical or confusingly similar to the Complainantís service mark SHAREBUILDER. In so far as its rights are concerned, the Complainant refers to its registered US service mark for SHAREBUILDER but also asserts that it has rights in the mark as a common law mark, pointing to its use of the mark over a two-year period as well as its distinctiveness. In so far as the issue of confusing similarity is concerned, the Complainant argues that the disputed domain names are misspellings of SHAREBUILDER that are likely confuse consumers into believing the Respondentís domain names, and the associated website, are affiliated, sponsored or approved by the Complainant. In support of these contentions, it cites a number of US decisions dealing with similar questions.
- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the disputed domain names. It states that the Respondent is not a licensee of the Complainantís mark and has not been authorized in any way to use the same. It argues further that the Respondent is not now, and has not been, commonly known by the domain names <sharbuilder.com> and <sharebulder.com>, and that the Respondent is not making a legitimate non-commercial or fair use of the domain names. Rather, it asserts that the Respondent has acquired the domain names simply for the purpose of diverting Internet users to its website "www.amatuervideos.nl".
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the Respondent has registered and used the domain names in bad faith, namely to attract, for commercial gain, Internet users to the www.amatuervideos.nl website by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation or endorsement of the <sharebuider.com> domain name, the "www.amatuervideos.nl" website or of a product or service on the website or advertised through the website. The Complainant argues that this infringes and tarnishes its trade marks, and, once again, cites a body of US decisions as well as WIPO Panel decisions in support of its contentions.
As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to "draw such inferences therefrom as it considers appropriate".
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements. Each of these must be shown in turn. In this regard, the following findings of the Panel are the same as in WIPO Case No. D2002-0442, but are repeated below (with appropriate modifications) in view of the fact that this is a separate proceeding as the disputed domain names are registered with a different registrar.
6.1 That the Complainant has rights in a trade or service mark with which the Respondentís domain name is identical or confusingly similar
In view of its registration of US service mark SHAREBUILDER Reg. No 2488646, the Complainant has satisfied the first part of this requirement, namely that it has "rights in a trade or service mark". The Complainant also relies upon its assertion that it has rights in SHAREBUILDER as a common law or unregistered mark, but no evidence in support of this assertion is given apart from the bare statement that there has been at least two years use and that the mark has become distinctive of the Complainantís online share investment services. In the absence of some evidence of use and the extent and amount of such use, this probably would not be enough to satisfy the first part of paragraph 4(a)(i), even in a case where no Response had been filed. However, in the present proceeding, it is unnecessary for the Panel to address this issue, as the proof of the US registration is sufficient for the purpose of showing that the Complainant has "rights in a trade or service mark".
The next question is whether the disputed domain names are identical or confusingly similar to the Complainantís mark. In this regard, even if the top level suffix ".com" is disregarded, it cannot be said that the domain names and registered service mark are identical, given that the former are misspellings of the latter. On the other hand, the Panel has no doubt they are confusingly similar, particularly as the absence of the letter Ďeí in the first domain name and the absence of the letter "i" in the second are easily overlooked when the domain names are seen for the first time. In such a case, the eye naturally reads "sharbuilder" and "sharebulder" as "sharebuilder", and the misspellings are not immediately noticed. Accordingly, the second part of paragraph 4(a)(i) is satisfied in the case of both domain names.
6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the present proceeding, the Panel accepts the statements in the Complaint that the Complainant has give no consent or authorization to the Respondent to use the name "sharebuilder" or anything similar as a domain name or otherwise in its business. In the absence of any Response, the Panel is further entitled to accept the Complainantís statements that it (the Complainant) has found no evidence of any use, past or proposed, by the Respondent of the domain names in relation to a bona fide offering of goods or services, or that it has ever been known by that name or that it is making a legitimate noncommercial use of the domain names within the circumstances outlined in paragraph 4(c)(iii).
Accordingly, the Panel finds that the Complainant has satisfied this element of paragraph 4(a).
6.3 That the Respondent registered and is using the Domain Name in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that there could be use in bad faith where there had been registration in bad faith followed by a passive holding of a domain name in circumstances in which there was no way in which the name could be used legitimately and where it was impossible to locate and identify the respondent: Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several early Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. 2000-0869 and E & J Gallo Winery v Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the Complainant has argued that the registration and use of the domain names by the Respondent essentially come within the circumstances outlined in paragraph 4(b)(iv). In the absence of any Response, the Panel accepts these contentions, noting the following:
(i) the misspellings, though small, are still significant, so far as the capacity to confuse is concerned;
(ii) the names "sharbuilder" and "sharebulder" have no obvious connection to any business apparently conducted by the Respondent at its website "www.amatuervideos.nl";
(iii) the Respondent has not acknowledged in any way the approaches made by the Complainant to transfer the domain names to it prior to the issue of the proceeding;
(iv) Internet users who are looking for investment services of the kind offered by the Complainant will clearly be confused when they access the Respondentís website "www.amatuervideos.nl" while intending to access a website concerned with investment services;
(v) The damage to the Complainantís goodwill and reputation from this kind of conduct can readily presumed, particularly in the absence of any response by the Respondent; and
(vi) There are a number of prior Panel decisions in which it has been held that similar kinds of diversions of users to websites offering goods and services of a different kind (including pornographic websites) can amount to use in bad faith: see, for example, Nokia Corporation v Nokiagirls.com.a.k.a IBBCC, WIPO Case No. D2000-0102 (April 18, 2000); MatchNet plc v MAC Trading, WIPO No. D2000-0205.
Accordingly, the Panel finds that the Complainant has satisfied this element of paragraph 4(a).
The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy.
The Panel accordingly directs that the registration of the domain names <sharbuilder.com> and <sharebulder.com> should be transferred to the Complainant.
Dated: July 14, 2002