WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Morris Digital Works, LLC v. SZK.com
Case No. D2006-1009
1. The Parties
The Complainant is Morris Digital Works, LLC of Georgia, United States of America, represented by Hull, Towill, Norman, Barrett & Salley, P.C., United States of America.
The Respondent is SZK.com of Italy.
2. The Domain Name and Registrar
The Disputed Domain Name <wwwhorsecity.com> is registered with Dotster, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2006. On August 8, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On August 8, 2006, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 10, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2006.
The Center appointed Charné Le Roux as the sole panelist in this matter on September 13, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is an American based company and the owner of a US trademark registration for the HORSECITY trademark, registered on August 6, 2002. It is also the proprietor of the domain name, <horsecity.com>, which it registered on July 15, 1997. It has been using its trademark HORSECITY and its domain name since July 1997 in connection with advertising services related to horses, the promotion of equine related goods and services of others, the provision of horse related books, videos and other associated entertainment goods and services.
The Respondent registered the Disputed Domain Name on June 5, 2003. The Disputed Domain Name is currently owned by the Respondent on record and is connected to a website which features sponsored links to the websites of what appears to be the competitors of the Complainant.
5. Parties’ Contentions
The Complainant contends that it is the owner of and has used the trademark HORSECITY, which is registered, and the domain name, <horsecity.com>, since 1997. The Complainant contends that the Disputed Domain Name is confusingly similar to its HORSECITY trademark because it is virtually identical to the bulk of the Complainant’s URL, with the exception that the combination of the letters “www” precedes the word “horsecity”.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that the Disputed Domain Name has been used to attract Internet users who misspell the Complainant’s domain name and that these Internet users are then directed to Internet websites other than the Complainant’s. It also contends that the Respondent is not using the Disputed Domain Name to provide legitimate services and is instead prying on the notoriety and marketing efforts of the Complainant.
The Complainant furthermore contends that the Respondent acquired and is using the Disputed Domain Name in bad faith. The Complainant indicates that the Disputed Domain Name was registered by the Respondent as an intentional misspelling of the Complainant’s URL and is an intentional attempt to attract, for commercial gain, Internet users to respond to its website by creating the likelihood for confusion with the Complainant’s website. The Complainant contends that the Respondent’s commercial gain arises from the web traffic received at the Respondent’s site for which the Respondent receives a financial benefit. The Respondent’s registration and use of the Disputed Domain Name consequently unfairly profits from the marketing efforts and advertising of the Complainant.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Matters
a. Default of the Respondent
The Respondent has not reacted to the Complaint but this does not relieve the Complainant of the burden of proof. The Respondent’s failure to deny the Complainant’s allegations and the evidence submitted by the Complainant does, however, in terms of the Rules, permit the Panel to draw appropriate inferences.
6.2 Substantive Matters
Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the Disputed Domain Name to be transferred:
a. that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to the trademark or service mark in which the Complainant has rights and;
b. that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name and;
c. that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proven that it owns rights in the trademark HORSECITY, the domain name <horsecity.com> and the URL <www.horsecity.com>.
The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark HORSECITY and its URL <www.horsecity.com>. The Disputed Domain Name consists of a misspelling of the Complainant’s URL, being <www.horsecity.com>, with the addition of the combination of the letters “www” to the word “horsecity” without the period between “www” and the domain name. The combination of the letters “www” does not distinguish the Disputed Domain Name from the trademark HORSECITY because of its association with Internet addresses. Internet users will consider that the Disputed Domain Name is simply a variation of the Complainant’s trademark and URL.
B. Rights or Legitimate Interests
The panel in Do the Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624 summarizes the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely, that once the complainant has asserted that the respondent has no rights or legitimate interests, the burden of proof shifts to the respondent. The respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of it claim.
Paragraph 4(c) of the Policy provides circumstances whereby the respondent may demonstrate its rights or legitimate interests in a domain name. The Complainant in this matter has made the required assertion to which the Respondent has not reacted.
The Panel finds that the Respondent’s failure to file a response has demonstrated a lack of legitimate interests. See Time Out Group Ltd. v. Mark Jacobson, WIPO Case No. D2001-0317.
Furthermore, on the facts of this matter, the Respondent uses the Disputed Domain Name to promote the sale of goods and the provision of services in competition with the Complainant. The Panel finds that Internet users will be attracted to the website linked to the Disputed Domain Name by the HORSECITY trademark and that they will access the website because they are interested in the Complainant’s goods. It appears that the Respondent’s only interest in the Disputed Domain Name is to derive a benefit from the goodwill that attaches to the Complainant’s trademark and to share in revenues that are generated by the diverted traffic through the sponsored links.
The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The Complainant relies on paragraph 4(b)(iv) of the Policy which provides that bad faith may be evidenced by use by the respondent of a domain name with the intention to attract, for commercial gain, Internet users to respond to its website or other online location by creating the likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the respondent’s website or location or the product or service on its website or location.
The Panel finds that the Complainant has made out a case in terms of paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent is intentionally diverting Internet users to its website by exploiting the confusing similarity between the Disputed Domain Name and the Complainant’s HORSECITY trademark and that it is engaging in such conduct in order to reap commercial benefits.
The Panel orders that the Disputed Domain Name, <wwwhorsecity.com>, be transferred to the Complainant.
Charné Le Roux
Dated: September 22, 2006