WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Go Daddy Software, Inc. v. Internet Masters

Case No. D2002-0570

 

1. The Parties

Complainant is Go Daddy Software, Inc., an Arizona Corporation with its principal place of business at 14455 North Hayden Road, Suite 219, Scottsdale AZ 85260, United States of America. Complainant's authorized representative in this proceeding is Christine Jones, General Counsel, Go Daddy Software, Inc., 14455 North Hayden Road, Suite 219, Scottsdale, AZ 85260, United States of America. Respondent is Internet Masters whose address is GYE, GU 09, Ecuador, with an email address at gpinchev@internetmasters.com.

 

2. Domain Name and Registrar

The domain names in issue are <godaddi.com> and <godadi.com>.

The domain names were registered on January 29, 2002.

Tucows Inc. is the registrar for the domain names <godaddi.com> and <godadi.com>.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on June 20, 2002, via email, and on June 19, 2002, in hard copy form. The Respondent was listed as Gabriel Pinchevsky, GYE, GU 09 EC.

On June 20, 2002, the Center acknowledged receipt of the Complaint.

On June 20, 2002, the Center transmitted via email to Tucows Inc. a request for registrar verification in connection with this case. On June 21, 2002, Tucows Inc. transmitted via email to the Center Tucows' Verification Response, (1) confirming that Tucows Inc. had received a copy of the Complaint; (2) confirming that the domain names <godaddi.com> and <godadi.com> are registered with Tucows Inc.; (3) advising that the Respondent (initially identified as Gabriel Pinchevsky) is the registrant of the domain names in dispute; (4) providing full details of the registrant, technical, administrative and billing contacts.

On June 20, 2002, the Center received an email from Gabriel Pinchevsky at Internet Masters, Inc. acknowledging receipt of the Complaint.

On June 21, 2002, the Center forwarded an email to Tucows Inc. advising that according to the records provided by Tucows Inc. Internet Masters is the registrant of the domain name and that Gabriel Pinchevsky is the Administrative Contact for the registrant. On June 21, 2002, Tucows Inc. confirmed that Gabriel Pinchevsky is not listed in the current whois as the registrant, but that the registrant is listed as Internet Masters. Tucows had advised that it knew that Gabriel Pinchevsky is the owner of Internet Masters. For this reason Tucows had initially advised that Gabriel Pinchevsky was the registrant.

On June 24, 2002, the Center forwarded to the Complainant a Complaint Deficiency Notification advising that according to information received from the Registrar the Registrant appears as "Internet Masters". The Center advised the Complainant that it must amend the Complaint to correct the name of the Registrant.

The Center received an Amended Complaint by e-mail on June 25, 2002, and in hard copy on June 27, 2002. In the Amended Complaint the Respondent appears as Internet Masters, GYE, GU 09, EC.

The Center has verified that the Complaint satisfies the formal 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"). Complainant has made the required payment to the Center. The formal date of the commencement of this administrative proceeding is June 28, 2002.

On June 28, 2002, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent via facsimile and email to the address identified in the Tucows verification response, and also via post/courier to the postal address identified in the Tucows verification response. The Center advised that (1) the Response was due by July 18, 2002, (2) in the event of default the Center would still appoint a Panel to review the facts and to decide the case, (3) the Panel may draw such inferences from Respondentsí default as it considers appropriate, (4) Complainant had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response is due, (5) the fees for the administrative proceeding will be paid in their entirety by Complainant unless the Respondent chooses to have the case decided by a three-person Panel, (6) the Panel will decide the case within 14 days of its appointment, and (7) the Center can be contacted at stated postal and email addresses, a stated telephone number, and a stated fax number.

On June 29, 2002, the Center received an e-mail from Gabriel Pinchevsky through his email address at gpinchev@internetmasters.com confirming receipt of the Complaint and accompanying documents.

On July 19, 2002, the Center transmitted to the parties via email a Notification of Respondent Default advising the Respondent that the Center would proceed to appoint a single-member Administrative Panel which would decide whether to consider a Response, if submitted later, in deciding the case.

On July 30, 2002, the Center transmitted to the parties via email Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Ross Carson had been appointed as the single panelist, and the decision was due August 13, 2002.

On July 30, 2002, the Center transmitted the file in the case via e-mail and courier to Mr. Carson.

 

4. Factual Background

The Trademarks

The Complaint is based on the registered service mark GO DADDY and trademark GO DADDY SOFTWARE. The Complainant owns United States Registrations for these marks, copies of which appear at Annex 4 to the Complaint.

Details of the United States registrations are as follows:

Country

Registration No.

First Use in Commerce

Mark

United States

2558989

3 November 2000

GO DADDY

United States

2388707

1 July 1999

GO DADDY SOFTWARE

Complainant advises that the foregoing trademark and service mark registrations are used in connection with the registration, transfer and account management services of domain names for identification of users on a global computer network. The trademarks are also used in connection with the registration and account management services of email accounts for identification of users on a global computer network.

Complainant advises that Complainant Go Daddy Software, Inc. is an ICANN accredited registrar of Internet domain names. For the past ten consecutive months, Go Daddy Software, Inc. has been number one in net new domain name registrations among all ICANN accredited registrars. Complainant submits that the GO DADDY mark has come to be closely associated with Internet domain name registration and is very valuable to Complainant's business in the domain name registration area.

Complainant advises that Respondent registered the domain names in dispute more than three years after Go Daddy Software, Inc. applied for its trademark registration and began using its mark in commerce.

 

5. Partiesí Contentions

A. Complainant

(i) The Complainant submits that the domain names <godaddi.com> and <godadi.com> are confusingly similar to the Complainantís registered trademarks GO DADDY and GO DADDY SOFTWARE.

(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain names <godaddi.com> and <godadi.com>.

(iii) The Complainant further submits that the Respondent has registered the domain names <godaddi.com> and <godadi.com> in bad faith

Confusing Similarity

The Complainant submits that the domain names <godaddi.com> and <godadi.com> are confusingly similar to Complainant's trademark GO DADDY and Complainant's <godaddy.com> domain name. The domain names in dispute contain the same exact words and letters, the only distinction being the replacement of the letter "y" at the end of the mark with an "i". Respondent also dropped one letter "d" in the registration of the second domain name. Complainant submits that the replacement of letters appears to anticipate potential spelling errors on the part of consumers attempting to reach the Complainant's godaddy.com site.

Lack of Rights or Legitimate Interest in Domain Name

Complainant submits that Respondent was aware of the Complainant's trademarks at the time of registration of the domain names in dispute, the Respondent being aware that GO DADDY and GO DADDY SOFTWARE are registered trademarks of the Complainant. The Complainant further submits that the Respondent registered identical or substantially similar domain names with the specific purpose of using them to link to a web site offering low-cost domain name registration services very similar to those offered by Complainant. (See Annex 5 to Complaint). Respondent registered the domain names in dispute for the purpose of gaining a business advantage from the familiarity of the Go Daddy name and Go Daddy Software, Inc.'s status as the number one net new domain name registrar. Complainant submits that it attempted to resolve this issue with the Respondent including contacting Respondent via email (see Annex 6 to Complaint). Respondent refused to cooperate, and implied that the domain names in dispute may be for sale to Complainant, an action deemed by WIPO panels to constitute prima facie evidence of bad faith.

Bad Faith Registration And Use

Complainant submits that not only did Respondent register the domain names in dispute knowing such names were confusingly similar to a previously registered trademark. Respondent did so merely by replacing the letter "y" at the of the godaddy.com domain name with the identical sounding letter "I" and dropping one letter "d" from the middle of the <godaddy.com> name. Complainant submits that Respondent intentionally attempted to attract, for financial gain, Internet users to Respondent's web site or other on-line location, such as "InternetMasters.com", to which the domain names in dispute resolve, by creating the likelihood of confusion with the GO DADDY trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's web site.

B. Respondent

Respondent has not filed a Response, or any other formal document, with the Center.

 

6. Discussion and Findings

Paragraph 4.(a) of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:

(i) The domain names in issue are identical or confusingly similar to a mark in which Complainant has rights; and

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

(iii) The domain names have been registered and is being used in bad faith.

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4.(a)(iii) above, if proved by a complainant, shall be evidence of a Respondentís registration and use of a domain name in bad faith.

Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.

a. Preliminary Observations

The Panel has assured itself that the parties have been treated with equality and Respondent has been given a fair opportunity to present its case (the Rules, Paragraph 10.(b)). Accordingly, in the Panelís view, the Respondent has been afforded due process.

b. Identical or Confusing Similarity

Complainant has the burden of proving that the trademark and domain names in dispute are identical or confusingly similar.

The Complainant owns and has used valid and subsisting registrations in the United States for the trademarks GO DADDY and GO DADDY SOFTWARE in connection with the registration, transfer and account management services of domain names for identification of users on a global computer network. The trademarks are also used in connection with the registration and account management services of email accounts for identification of users on a global computer network. Use of the trademarks GO DADDY SOFTWARE and GO DADDY commenced in the United States on July 1, 1999, and on November 3, 2000, respectively. Complainant's Internet services are offered through its website at godaddy.com. Complainant's site is widely used and well-known by Internet users.

The Respondent did not file a Response to the Complaint. The domain names in dispute <godaddi.com> and <godadi.com> are confusingly similar to the Complainant's trademarks for or including the words GO DADDY.

In Bloomberg L.P. v Baltic Consultants Ltd., FA 95834 Nat. Arb. Forum, (November 20, 2000) the respondent's domain name <bloombergl.com> was found to be confusingly similar to Complainant's trademark "Bloomberg".

The Panel finds that the domain names in dispute and the Complainantís trademarks are confusingly similar.

c. Rights or Legitimate Interests

The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the domain names in dispute.

A Respondent may demonstrate rights and legitimate interests in a domain name or domain names in dispute by establishing one or more of the circumstances set out in Paragraph 4.(c)(i)(ii) and (iii) of the Policy. The Respondent is not limited to the three circumstances which read as follows:

(i) before any notice to you 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 organization) 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.

The Respondent did not file a Response to the Complaint. The Respondent is not using the domain names in dispute in connection with a bona fide offering of goods or services. Respondent is using the domain names <godaddi.com> and <godadi.com> to divert internet users looking for Complainant's GO DADDY website who misspell the mark to an unrelated website offering services competitive with Complainant's services.

The Respondent is not a licensee of the Complainant and based upon Respondent's website the Respondent does not appear to be known by the name "Go Daddy".

The Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. The website associated with the domain names in dispute is a commercial site and generates a profit from users who register domain names through the site.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

d. Registration and Use in Bad Faith

The third matter which the Complainant must prove is that the domain names in dispute have been registered and are being used in bad faith.

The Complainant has used the trademarks GO DADDY SOFTWARE and GO DADDY in the United States since July 1, 1999, and November 3, 2000, respectively. The Respondent registered the domain names in dispute on or about January 29, 2002. The Respondent did not file a Response. The Panel finds on a balance of probabilities that the Respondent would not have selected the domain names <godaddi.com> and <godadi.com> without knowing of the reputation of GO DADDY in relation to the registration, transfer and account management services of domain names for identification of users on a global computer network and also the registration and account management services of email accounts for identification of users on a global computer network. In Veuve Cliquot Ponsardon, Maison Fondée en 1772 v.The Polygenix Groupe Co., WIPO Case No. D2000-0163, the Panel held that "Veuve Cliquot.org is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith."

The Complainant has made widespread use of the trademarks comprised of or including GO DADDY in association with in connection with the registration, transfer and account management services of domain names for identification of users on a global computer network. The trademarks are also used in connection with the registration and account management services of email accounts for identification of users on a global computer network. Complainant Go Daddy Software, Inc. is an ICANN accredited registrar of Internet domain names. For the past ten consecutive months, Go Daddy Software, Inc. has been number one in net new domain name registrations among all ICANN accredited registrars. Complainant has never consented to Respondent's registration of a variation of the GO DADDY trademarks. A trademark including GO DADDY is not associated with the Respondent is any way. The Respondent's registration and use of the domain names in dispute in order to divert internet users who fail to include the letters Y and D in GO DADDY to Respondent's own website at "InternetMasters.com" where it provides services in competition with the Complainant is evidence of use in bad faith under paragraph 4.b(iv) of the Uniform Domain Name Dispute Resolution Policy. (See WIPO Case No. D2001-1237 Nokia Corporation v Phonestop).

The Panel finds that the domain names <godaddi.com> and <godadi.com> have been registered and are being used in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain names registered by the Respondent are confusingly similar to the trademarks to which the Complainant has rights.

(b) That the Respondent has no rights or legitimate interests in respect of the domain names in dispute; and

(c) That the Respondentís domain names have been registered and are being used in bad faith.

Accordingly, pursuant to Paragraph 4.(i) of the Policy, the Panel requires that the registration of the domain names <godaddi.com> and <godadi.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: August 8, 2002