WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

VeriSign Inc. v. Default Profile/N/A:u7ca7r9m

Case No. D2007-0007

 

1. The Parties

The Complainant is VeriSign Inc., California, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.

The Respondent is Default Profile/N/A:u7ca7r9m, c/o Registerfly.com Inc., New Jersey, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <jamsterringtones.info> (“Disputed Domain Name”) is registered with RegisterFly.com, Inc.1

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2007, naming Respondent as “Dave Carter c/o Registerfly.com, Inc.” On January 5, 2007, the Center transmitted by e-mail to RegisterFly.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 19, 2007, RegisterFly.com, Inc. transmitted by e-mail to the Center its verification response identifying Respondent’s name as “Default Profile” and the Respondent’s organization as “N/A:u7ca77r9m”. The Center notified Complainant on January 19, 2007, of the discrepancy between the name of Respondent as listed in the Complaint and the name of the Respondent as provided by the Registrar and, accordingly, requested Complainant to amend t Complaint, which Complainant did on January 24, 2007. 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 Respondent of the Complaint, and the proceedings commenced on January 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 23, 2007.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 19, 2007. 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

Complainant states that, “through its Jamster and Jamba subsidiaries, [it] operates one of the largest off-deck catalogs of premium mobile content, including music, graphics, games and community services, which can be ordered using a short messaging service, and is distributed to carriers and consumers worldwide.”

Complainant states that it is the owner2 of the following U.S. trademark applications:

- JAMSTER: U.S Serial No. 76-619,714; filed November 8, 2004; priority date May 10, 2004.

- JUMSTER: U.S. Serial No. 76-617,377; filed October 22, 2004; abandoned February 14, 2006.

The first application listed above matured into a registration on December 12, 2006 (U.S. Reg. No. 3,182,229), prior to the Complaint being filed.

Although the second application listed above has been abandoned, this important fact was not noted by Complainant in its Complaint but was confirmed by Complainant in its response to an order by the same Panel in an earlier proceeding under the Policy, Verisign, Inc. v. jumbo domains, WIPO Case No. D2006-1582.

Complaint provided as an exhibit a list of approximately 139 “registrations and applications for the JAMSTER Marks globally.” The exhibit did not indicate which of the filings are pending applications and which have been registered. In response to an order by the same Panel in an earlier proceeding under the Policy, Verisign, Inc. v. jumbo domains, WIPO Case No. D2006-1582, Complainant provided such a list, showing numerous registrations worldwide for the JAMSTER mark owned by Jamster International Sąrl.3

The registrations cited by Complainant are referred to hereafter as the “Jamster Marks.”

The Disputed Domain Name was registered on March 7, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the Jamster Marks because “[t]he only difference between Complainant’s mark and the Disputed Domain Name is the addition of the generic term for the goods offered under Complainant’s JAMSTER Marks, namely ‘RINGTONES.’”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant has not authorized Respondent to use the Jamster Marks; the Disputed Domain Name was registered after Complainant had established rights in the Jamster Marks; the Disputed Domain Name “does not reflect Respondent’s common name”; and “Respondent’s website lacks any substantive content of its own.”

- The Disputed Domain Name has been registered and used in bad faith because Respondent is using the Disputed Domain Name in connection with a website “[u]nder the guise of providing information about ringtones” that “directs users to immediately accessible prominent providers of ringtones for purchase” and, by publishing multiple websites with identical content, “Respondent is not providing free information, but instead is using the identical content to drive traffic and generate revenue each time users are directed to the website located at the Disputed Domain Name and click on various links contained on that website.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (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. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the JAMSTER mark.

As to whether the Domain Name is identical or confusingly similar to the Jamster Marks, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “jamsterringtones”), as it is well-established that the top-level domain name (i.e., “.info”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

Therefore, the only difference between the relevant portion of the Disputed Domain Name (“jamsterringtones”) and the Jamster Marks is the addition of the words “ringtones” to the Disputed Domain Name. The Panel agrees with the Complainant that “the word ‘ringtones’ is generic of Complainant’s goods and services, [and therefore] its addition to Complainant’s JAMSTER mark actually increases confusion.” See Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (finding confusing similarity where a domain name “incorporates the whole of the Complainant’s trademark… together with [a] descriptive [phrase]… associated with the Complainant and its renowned activities”); and Verisign, Inc. v. jumbo domains, WIPO Case No. D2006-1582 (finding <jamsterdownload.com> confusingly similar to the Jamster Marks).

Accordingly, the Domain Name is confusingly similar to the Complainant’s JAMSTER Marks and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant has not authorized Respondent to use the Jamster Marks; the Disputed Domain Name was registered after Complainant had established rights in the Jamster Marks; the Disputed Domain Name “does not reflect the Respondent’s common name”; and “Respondent’s website lacks any substantive content of its own.”

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, “http://arbiter.wipo.int/domains/search/overview/index.html”.

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant specifically alleges that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In particular, Complainant argues that bad faith exists because Respondent is using the Disputed Domain Name in connection with an “illegitimate business front” for a website that offers products and services that are competitive with those offered by Complainant. A printout of this website provided as an exhibit by Complainant supports this argument. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

Further, Complainant argues that Respondent’s “guise of providing information” about products related to Complainant amounts to “spamdexing,” that is, “the practice of deliberately creating web pages which will be indexed by search engines in order to increase the chance of a website or page being placed close to the beginning of search engine results” (quoting Wikipedia). See also Wal-Mart Stores Inc. v. Sok kyu Kim, Sokkyu, WIPO Case No. D2006-1502; and Consumernet, Inc. d/b/a Car Buying Tips v. Car Buying Tips, Inc. a.k.a. William Dearn, NAF Claim No. FA0305000158428. The Panel agrees that, where a respondent creates a website using a domain name that is confusingly similar to a complainant’s trademark and the website appears to serve no purpose other than to attract search engines – as evidenced by, among other things, brief articles that appear in numerous other locations online, alongside numerous contextually relevant advertisements – the complainant has acted in bad faith under the Policy.

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

 

7. Decision

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 <jamsterringtones.info> be transferred to the Complainant.4


Douglas M. Isenberg
Sole Panelist

Dated: April 2, 2007


1 The Panel notes that, on March 16, 2007, ICANN issued a formal notice of termination of RegisterFly.com’s Registration Accreditation Agreement, indicating that it will cease operating as an ICANN-Accredited Registrar on March 31, 2007. See http://www.icann.org/announcements/announcement-2-16mar07.htm.

2 The owner of these marks is listed on the website of the U.S. Patent and Trademark Office as Jamster International Sąrl, not VeriSign, Inc. In its complaint, Complainant states that “Complainant is VeriSign, Inc…. including its wholly owned subsidiaries Jamster International Sąrl and Jamba GmbH.”

3 In its complaint, Complainant states that “Complainant is VeriSign, Inc…. including its wholly owned subsidiaries Jamster International Sąrl and Jamba GmbH.”

4 Although the Policy does not address the issue of domain name transfers where a respondent’s registrar has lost its ICANN accreditation during a proceeding under the Policy, as here (see footnote 1, above), the Panel believes the spirit if not the letter of the Policy requires any registrar with responsibility for the Disputed Domain Name to abide by the decision in this case.