WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GoDaddy.com, Inc v. Earl Jones
Case No. D2006-1067
1. The Parties
The Complainant is GoDaddy.com, Inc., Scottsdale, Arizona, United States of America, represented by The Go Daddy Group, Inc., United States of America.
The Respondent is Earl Jones, Kaufman, Texas, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <godaddytraffic.com> is registered with GoDaddy.com, Inc. Thus, the same entity is both the Complainant and the Registrar in this proceeding.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2006. On August 24, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On August 24, 2006, the Registrar 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 (all shown as Chad Newcomb of Coldwater, Michigan). In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 7, 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 September 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2006.
The Center appointed W. Scott Blackmer as the Sole Panelist in this matter on October 19, 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 Arizona corporation. It acts as an ICANN-accredited domain name registrar and offers a variety of online services and associated software, largely related to domain management, web hosting, and website development and marketing. The Complainant is currently the world’s leading registrar for the .com, .net, .org, .info, .biz, and .us top level domains (TLDs), according to 2006 figures reported by Name Intelligence, Inc.1 The Complainant is also the Registrar of the Domain Name in this proceeding.
In addition to a variety of design marks and marks registered in other countries, the Complainant holds the following trademarks registered by the United States Patent and Trademark Office (USPTO) for computer programs, domain registration and management, website development and hosting, and related goods and services:
USPTO Registration Number
First Use in Commerce
Apr. 9, 2002
Apr. 19, 1999
GO DADDY SOFTWARE
Sep. 19, 2000
July 1, 1999
July 9, 2002
Dec. 1, 2001
Apr. 26, 2005
Mar. 8, 2004
July 19, 2005
Dec. 1, 2001
Oct. 17, 2006
Dec. 1, 2001
According to the Complainant, one of its most popular products is website traffic-building software sold under the name TRAFFIC BLAZER. This is a mark originally registered to the Complainant and then assigned to Starfield Technologies Corporation (USPTO Reg. No. 2821786, March 9, 2004, disclaiming the right to use the word “traffic” apart from the mark as shown). Starfield is an affiliated company, the Complainant’s “technology and research branch”, according to the corporate history published at “www.starfieldtech.com/companyinfo/history.htm”). The TRAFFIC BLAZER software features “suggestions for optimizing a website for best search engine placement, automated submissions, site analysis, reports and many other tools that function to increase Internet traffic to the customer’s website”. The Complainant has been selling TRAFFIC BLAZER in the United States and internationally since 2003.
The Complainant registered the domain name <godaddy.com> in March 1999 and uses it for its own principal website.
The Domain Name was registered through the Complainant’s automated domain registration service on May 17, 2005, showing Mary Hernandez of Kaufman, Texas as the registrant and Chad Newcomb of Coldwater, Michigan as the administrative and technical contact.
Six days later, on May 23, 2005, the Complainant sent a message to “eajones85” at the registrant’s listed contact email address, indicating that the Domain Name infringed the Complainant’s trademark and offering to refund the purchase price for the Domain Name. “Mary H” replied later that day, using the same email address, as follows:
“i bought it fair and square sorry. if you want to make offer on it go a head. i have copys of the whole transaction and a good lawyer that has dealt with online cases for three years. I’m well with in my rights”
On that same day, according to the Complainant, Mary Hernandez registered a misspelled variation, <godadytraffic.com>, which she then advertised and sold to a third party.
Three days later, on May 27, 2005, advertisements appeared on the popular eBay auction website assuring buyers of “50,000 hits to your website” using the “Traffic Exchange” service at GODADDYTRAFFIC, the website to which the Domain Name resolved. Both the thumbnail summaries and the full-page descriptions for these eBay listings were headed with unauthorized copies of the Complainant’s registered design logo, as evidenced by screen shots submitted with the Complaint. Following the Complainant’s objections, eBay removed the auction listings.
The Complainant contacted the registrant again by email on May 27, 2005, demanding that she cease and desist from further trademark infringement. According to the Complainant, the registrant again refused and encouraged the Complainant to make an offer to purchase the Domain Name.
On July 28, 2005, “Mary H” sent the Complainant an email with the following message:
“$5000 and not a penny less already have 4 offers for $4500. already have lawyer, you have 48 hours”
On April 17, 2006, Mary Hernandez changed the name of the registrant for the Domain Name to “Earl Jones”, without modifying the other registrant and contact data. The Panel notes that “Mary H” had been using an email address in the name of “eajones85” in correspondence with the Complainant.
The Domain Name currently resolves to a website headed “GODADDY TRAFFIC, THE 1# [sic] TRAFFIC SITE ONLINE TODAY”. The website advertises a “Traffic Exchange” system to increase traffic to a customer’s website, as well as banner advertising, click-through advertising, and “turnkey website” development services. The home page also displays advertising for goods and services offered by third parties. Copyright is asserted on the home page in the name of “GODADDYTRAFFIC.com”. There is no description of the operator of the website, but the “Terms” page on the website purports to establish the terms of an agreement between the Member and “yourdomain.com”. The website at the URL “www.yourdomain.com” advertises domain names, web hosting, and web design services offered by a number of parties but does not identify “yourdomain.com”.
The Panel finds no evidence in the record or in online databases of the USPTO and the States of Michigan and Texas that there is any legal entity with the name “GODADDYTRAFFIC.com” or any registered GODADDYTRAFFIC mark.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to its various GODADDY and GO DADDY marks. The Complainant also asserts that the Respondent has no rights or legitimate “business or identification” interests in the Domain Name, and that its use of the Domain Name to mislead Internet visitors and sell competing products is not a bona fide offering of goods or services under the Policy, paragraph 4(c)(i).
The Complainant infers bad faith registration and use from this conduct, from the Respondent’s infringing display of the Complainant’s trademarked logo, and from its offer to sell the Domain Name to the Complainant for $5000. The Complainant also cites Policy, paragraph 4(b)(iii), arguing that the Respondent uses the Domain Name to sell competing services, on some occasions with the Complainant’s logo, thereby disrupting the Complainant’s business. Finally, the Complainant contends that the Respondent’s registration and sale of a misspelled variant of the Domain Name, immediately following the Complainant’s first cease-and-desist letter, is evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the 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 Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Domain Name includes the Complainant’s GODADDY, GO DADDY, and DADDY marks in their entirety. The space in GO DADDY is immaterial for present purposes, since it is not a distinctive portion of the mark and the technical Domain Name System does not allow spaces in domain names. The Domain Name adds to these marks a common word, “traffic”, which does not lessen the likelihood of confusion. Rather, in this instance it heightens the likelihood of confusion, since the Complainant offers a well-advertised and trademarked TRAFFIC BLAZER service. See, e.g., Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (<microsoftcustomerservice.com> added generic words to a distinctive mark; this normally does not avoid confusion, especially when the generic words are relevant to the trademark owner’s products or services).
The Panel concludes that the Complaint satisfies the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(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 Domain Name was originally registered in the name of Mary Hernandez. The Panel notes that the registrant has an ongoing obligation under the Registration Agreement to provide and maintain accurate registration and contact information. A “Mary H” communicated on several occasions with the Complainant concerning the Domain Name and then effected the registrant name change to “Earl Jones” -- at the same Texas address and with the same administrative and technical contact in Michigan. “Earl Jones” may be an associate of Hernandez, or one or both of the names may be fictitious (which would constitute a violation of the Registration Agreement). “Mary H” used an “eajones” email address from the beginning, and the registrant’s postal address remains unchanged. The Domain Name continues to resolve to the same “www.godaddytraffic.com” website. The assumption is warranted, therefore, that the real party in interest has not changed since registration.
In any event, no Respondent has come forward in this proceeding to assert rights or legitimate interests in the Domain Name. Moreover, “Mary H” did not describe any such rights or legitimate interests in her prior correspondence with the Complainant in reply to the Complainant’s assertions of trademark infringement.
There is no evidence in the record, the website to which the Domain Name resolves, or the USPTO and relevant state databases that any of the circumstances listed in the Policy, paragraph 4(c) apply. GODADDYTRAFFIC is not a registered mark or trade name, and there does not appear to be a legal entity with that name. The Domain Name seems to have been used only in the context of attempting to mislead Internet users by suggesting that the Complainant is the source of website traffic-building services offered, in fact, by the Respondent. The Complainant’s marks were incorporated in the Domain Name and on the website to which it resolves, and the Complainant’s registered logo was misleadingly attached to eBay listings advertising services offered on the Respondent’s website. These blatant attempts to confuse consumers and trade on the Complainant’s marks and reputation cannot be considered a legitimate use of the Domain Name as a “bona fide offering of goods or services”.
The Panel concludes, therefore, that the second element of the UDRP Complaint is satisfied.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith. The Complaint expressly or implicitly relies on three of these:
(i) circumstances indicating that you 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 primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The list of instances of bad faith in paragraph 4(b) is expressly nonexclusive, and the Panel considers additional evidence of bad faith as discussed below.
Within days of registering the Domain Name, the Respondent rejected the Complainant’s offer to refund its fees. The Respondent subsequently demanded $5000, which is clearly in excess of any out-of-pocket costs directly related to the Domain Name (registration fees amounted to less than $10 per year).
Whether or not the Respondent’s original purpose was to “disrupt” the Complainant’s business, the Respondent plainly sought to capitalize on the Complainant’s reputation in diverting Internet users to a website selling the Respondent’s competing services. An intention to mislead Internet users, attracting them to a competing website for commercial gain, can very plausibly be inferred in this case from several undisputed facts:
* The Complainant is the world’s leader in domain registration and related services, which include a popular website traffic-building service.
* Hernandez and Jones (if there is such a person) are customers of the Complainant and have actual knowledge of its marks and business.
* The Domain Name combines the Complainant’s nationally registered and famous marks with a word (“traffic”) used in marketing the Complainant’s traffic-building service.
* The Respondent uses the same misleading name on the website to which the Domain Name resolves, which advertises what is in fact a competing traffic-building service as well as other commercial services. The website does not identify its actual source.
* The Respondent’s website compounds the likelihood of confusion by claiming to be the “1# TRAFFIC SITE ONLINE”, a description that website visitors are more likely to associate with the famous Complainant (and its own traffic-building service) than with the Respondent.
* The Respondent is clearly aware of the value of the Complainant’s reputation and marks, as the Respondent copied the Complainant’s design logo to advertise the Respondent’s own traffic-building service on eBay.
* The Respondent also promptly registered – and sold – another domain name with a misspelled variation on the Domain Name, immediately after receiving a cease-and-desist notice from the Complainant.
Thus, it is probable that Hernandez and Jones (if there is such a person) were aware of the Complainant’s business and sought to take advantage of the fame of the Complainant’s marks, misleading Internet users to attract them to the Respondent’s website for commercial gain in selling the Respondent’s services and other products. It is significant that despite earlier correspondence from Hernandez protesting that she had done nothing wrong, the Respondent has not come forward with an alternative explanation for choosing the Domain Name to rebut this presumption of bad-faith intent and use.
In addition, the Panel notes the Respondent’s failure to respond to the Complaint, or to reply substantively to the Complainant’s assertions of trademark infringement. Moreover, changing the name of the registrant in April 2006 appears to be an attempt at what is sometimes termed “cyberflying” (avoiding or delaying judicial or UDRP proceedings by changing domain registration details after learning of a complaint). This conduct following the Complainant’s assertion of trademark infringement supports the inference of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <godaddytraffic.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: October 23, 2006
1 See tables at http://registrarstats.com.