WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Digital Spy Limited v. Moniker Privacy Services and Express Corporation
Case No. D2007-0160
1. The Parties
The Complainant is Digital Spy Limited, of London, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Moniker Privacy Services of Pompano Beach, Florida, United States of America and Express Corporation, of Roseau, Dominica, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <digitalspy.com> is registered with Moniker Online Services, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2007, naming Moniker Privacy Services as the Respondent. On February 8, 14, and 16, 2007, the Center transmitted by email to Moniker Online Services, Inc. a request for registrar verification in connection with the domain name at issue.
On February 16, 2007, Moniker Online Services, Inc transmitted by email to the Center its verification response stating that Express Corporation is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
On February 19, 2007, the Center transmitted to the Complainant by email a notification of deficiency in the Complaint. In response to the notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 19, 2007, adding Express Corporation as a Respondent to the Complaint.
The Center verified that 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 Respondents of the Complaint, and the proceedings commenced on February 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2007. A Response in the name of Express Corporation was filed with the Center on March 14, 2007.
The Center appointed John Swinson as the sole panelist in this matter on March 22, 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.
The language of the proceeding is English.
4. Proper Respondent
The listed name of the registrant of the disputed domain name at the time when the Complaint was filed was Moniker Privacy Services. After the original Complaint was filed, the Center sought particulars of the registration and was advised by the Registrar that Express Corporation was the registrant of the disputed domain name.
Accordingly, the Panel will proceed on the basis that the domain name is registered in the name of Express Corporation, and for the purposes of this decision, Express Corporation will be treated as the Respondent.
It should be stressed that Moniker remains a pro forma Respondent: that the conduct to be discussed in this decision is that of Express Corporation and not that of Moniker and that Moniker has acted promptly in supplying Express Corporation’s details. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975 and the comments made therein.
5. Factual Background
The Complainant is a United Kingdom company (based in London) that was formed in 2001. The Complainant operates a website at “www.digitalspy.co.uk” which contains digital TV, entertainment and media news and forums. The Complainant’s website has been in operation since April 2000.
The Complainant does not own any registered trademarks over “Digital Spy”. The Complainant has a large collection of “digital spy” related domain names, such as <digitalspy.org>, <digitalspy.us>, and <digitalspy.biz>.
The Respondent claims to be an entity based in the United States of America which purchased the disputed domain name in August 2006.
When used in a browser, the disputed domain name automatically redirects Internet users to a website at “www.rewardcreditcards.ws” which contains sponsored links related to credit card products.
The Whois record search with Moniker Online Services shows that the disputed domain name is registered to the Respondent and the record for the disputed domain name was created on December 20, 1999.
6. Parties’ Contentions
The Complainant makes the following submissions and arguments:
The Complainant’s business is known as “Digital Spy” and the Complainant has established substantial goodwill in reputation in this name. For example, its business has won an award, its website has increasing monthly usage, and it receives regular premium advertising contracts from significant United Kingdom companies. The Complainant’s website or name has been quoted in newspaper articles and other media publications.
The Complainant holds a common law or unregistered trademark or service mark over “Digital Spy”.
Other media organisations sometime mistakenly use the dispute domain name as the website address for the Complainant’s “www.digitalspy.co.uk” website. This causes users looking for the Complainant’s website to visit the credit card website accessible via the disputed domain name.
Users who are aware of the Complainant’s name and looking for its website would often visit the disputed domain name as a point of first reference, and searches reveal that people who visit the disputed domain name also visit <digitalspy.co.uk>.
Users of the disputed domain name are likely to be misled into thinking the website at the disputed domain name is affiliated or endorsed by THE Complainant.
The Respondent is intentionally using the disputing domain name to bait users and trading off the popularity of the Complainant’s business in order to sell other unrelated goods and services.
The Complainant approached the registrar of the disputed domain name (Moniker) to purchase the name (it seems that the Complainant in doing so believed that Moniker was the registrant of the domain name), but was told on both occasions via what in hindsight appears to be a computer-generate email that it had recently been sold and the owner was not interested in selling the disputed domain name, but in any event the disputed domain name would cost at least USD 25,000 – USD 30,000.
The Complainant made an offer to Moniker purchase the disputed domain name for USD 2,500.
In reply, the Respondent contends that the Complainant has failed to establish any of the required elements. The Respondent makes the following submissions and arguments:
The Respondent registered the disputed domain name because it was a generic term (descriptive of electronic espionage) and uses it in connection with the bona fide offering of goods and services (i.e. post paid advertising links). The Complainant cannot assert exclusive use over a domain name which uses common generic terms.
Other parties unrelated to the Complainant or Respondent use the term “Digital Spy” to advertise digital spy cameras, recorders, gadgets etc. A Google search for “digital spy” which excludes concepts related to the Complainant’s business yields over 80,000 results.
The Respondent is based in the United States of America and did not know of the alleged common law mark of the Complainant prior to being notified by the Complainant, largely because the Respondent does not have a presence in the United Kingdom, the Complainant’s business is directed mainly towards the United Kingdom, and there was no basis for the Respondent to know of the Complainant.
The Respondent did not register the disputed domain name with the Complainant’s alleged trademark in mind, and had no knowledge of the Complainant, its website, business name or trademark when it purchased the disputed domain name. If the Complainant does have a trademark over the name, it is not distinctive and should be able to be used by the Respondent as it was registered in good faith.
The Respondent had no intention to disrupt the Complainant’s business or confuse consumers when it purchased the disputed domain name.
The Respondent denies that it ever received an offer from the Complainant to purchase the disputed domain name, or that it ever offered to sell the disputed domain name in the circumstances alleged by the Complainant.
The Complainant has failed to show that customers identify the phrase “Digital Spy” exclusively or almost exclusively with the Complainant.
The disputed domain name is not likely to confuse consumers and misleading divert them to disputed domain name, as there in nothing on the website accessible via the disputed domain name related to the Complainant’s services.
There is no evidence that the Respondent registered the disputed domain name solely for the purpose of profiting from the Complainant so bad faith cannot be established.
7. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant does not own a registered trademark over the term ‘Digital Spy’ (or any similar name), but asserts it has a common law trademark or service mark right over DIGITAL SPY. The panel accepts the Complainant’s submissions in this regard.
The Complainant contends that it has been using the mark since April 2000 on a website accessible via <digitalspy.co.uk>. The name and branding of this website is clearly “Digital Spy”.
“Digital Spy” is part of the Complainant’s business name and has been since August 2001. Other media organisations and the general public appear to commonly refer to the Complainant and its website as “Digital Spy”. In January 2007, the monthly usage of the “www.digitalspy.co.uk” website reached over 81 million page impressions; the Complaint has advertising contracts with several well established United Kingdom companies to advertise on the “www.digitalspy.co.uk” website, and the Complainant’s revenue for the year ended August 2006 was £300,000.
The Complainant’s website is also promoted in conjunction with popular television series in the United Kingdom, such as Big Brother.
As an aside, the Panelist (who lives in Australia) is aware of the Complainant’s website, even though that website is directly primarily at members of the public in the United Kingdom. For example, recently the Complainant’s website was referred to in a newspaper report in the national Australian newspaper, The Australian.
The Respondent contends that “digital” and “spy” are generic words, and that “digital spy” is a generic and common term that cannot be and is not associated with the Complainant. In support of this, the Respondent provides examples of Google search results which incorporate the term “digital spy”. (These search results were produced using search parameters that excluded results related to the Complainant’s website (by excluding the search terms “digitalspy.co.uk”, “show”, “entertainment”, “media”, “tv” and “television”).
The Respondent’s contentions overstate the situation. The Respondent has provided no evidence that the phrase “digital spy” on its own has any meaning or connotation. Moreover, the search results provided by the Respondent do not refer to the phrase “digital spy” on its own - rather the phrase is always being used as a descriptor for something, e.g. digital spy camera, or digital spy recorder. (And even though the Respondent attempted to exclude sites related to the Complainant’s website when searching, results referring to the Complainant’s website still appear, further demonstrating the strength of the Complainant’s common law rights.)
In the light of the above, the Panel accepts that Complainant has provided adequate grounds for a finding that it holds common law trademark and service mark rights in the name DIGITAL SPY.
The Panel also notes that the Respondent provided a signed “declaration” of Mr. Gregory A. Ricks (the President of the Respondent) stating that the Respondent “did not register the Disputed Domain with the Complainant’s trademark in mind”, suggesting that Mr. Ricks believes that the Complainant had trademark rights in DIGITAL SPY. However, the Panel does not need to rely on this admission to reach the decision in this case.
The only difference between the disputed domain name and the Complainant’s common law mark is the addition of the top-level domain “.com” suffix.
It is well established that the suffix “.com” is an irrelevant distinction that does not change the likelihood for confusion. There is no doubt on the similarity of the disputed domain name with the Complainant’s common law trademark
Accordingly, the Panel finds that Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondent has no relationship with or permission from the Complainant for the use of the DIGITAL SPY mark.
Paragraph 4(c) of the Policy sets out three circumstances which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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 has not been known at all by the disputed domain name, and does not have any trademark or service mark rights in it.
There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The disputed domain name is used to redirect Internet users to <rewardcreditcards.ws> and to promote the credit card related services there. There is no connection between the disputed domain name and a website advertising credit card services. In fact, the term “digital spy” is not used anywhere on the “www.rewardcreditcards.ws” website.
The Respondent contends that it uses the disputed domain name in connection with the bona fide provision of advertising services (by posting paid advertising links on the disputed domain name). However, as discussed below, the Panel does not consider that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent has not provided any explanation as to why it selected or registered the disputed domain name. The Respondent has not given evidence of any business or business plan related to the disputed domain name. All the evidence suggests that the Respondent selected and is using the disputed domain name only because it is similar to the Complainant’s popular website address, and due to user confusion, will generate a lot of traffic by mistake so that the Respondent can receive commercial gain from advertising to the Internet users who intend to visit the Complainant’s website by use the disputed domain name by mistake. This is not bona fide within the meaning of paragraph 4(c) of the Policy.
Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Respondent contends that it had no knowledge of the Complainant, its business name of DIGITAL SPY, its website or common law mark when it registered the disputed domain name.
As stated above, the Respondent provided a signed “declaration” of Mr. Gregory A Ricks (the President of the Respondent) from Texas stating that he had had no knowledge of the Complainant, its business name of DIGITAL SPY, its website or trademark when the Respondent registered the disputed domain name. The statements in this declaration are of limited assistance as they are not made under oath and are not credible.
The Panel notes that a Gregory Ricks from Texas has been involved as a Respondent in at least four other proceedings under the Policy. In two prior WIPO decisions, Welch Foods, Inc., A cooperative v. MSS, WIPO Case No. D2001-1065, and Philip Morris USA Inc. v. Domain Admin, WIPO Case No. D2005-0108, Mr. Ricks filed no response and was ordered to transfer domain names of well-known marks. See also See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975 and the comments made therein.
It is clear that the Respondent is using the disputed domain name to redirect Internet traffic to a website where the Respondent receives money for advertising credit card services. The Respondent does not deny such redirection of traffic. The Respondent is clearly a sophisticated Internet user, who understands domain names and how to attract traffic to website for revenue generation purposes. The Complainant provided evidence of the volume of traffic going to the Respondent’s website at the disputed domain name. Clearly, the Respondent would be aware of the volume of such traffic and the reason why Internet users are visiting the Respondent’s website. It is not because these Internet users are searching for information about credit cards.
Registering a domain name with knowledge of another company’s rights in the name, and with intention to divert traffic is evidence of bad faith. Given the reputation of the Complainant, the redirection of Internet traffic is likely to deliver a commercial benefit to the Respondent. By redirecting Internet users looking for the website of “www.digitalspy.co.uk” to its own pages, the Respondent is obviously attempting to attract users for commercial gain.
The Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its common law trademark.
In light of the above, the registration of the disputed domain name was made in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
The Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.
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 <digitalspy.com> be transferred to Complainant.
Dated: April 4, 2007