WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

LinkShare Corporation v. Joseph Obringer

Case No. D2007-0236

 

1. The Parties

Complainant is Linkshare Corporation (“Complainant”), a corporation incorporated under the laws of the State of Delaware, with a principal place of business located at New York, New York, United States of America.

Respondent is Joseph Obringer (“Respondent”), an individual residing at Glenview, Illinois, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <linkshare.mobi> (the “Disputed Domain Name”). The registrar is Rebel.comCorp (the “Registrar”), located at Ottawa, Ontario, Canada.

 

3. Procedural History

On February 16, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On February 17, 2007, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On February 19, 2007, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On February 21, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Disputed Domain Name and that the Disputed Domain Name is registered in the Respondent’s name.

The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On February 26, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On March 20, 2007, the Center advised Respondent that it was in default for failing to file his Response. No Response has been received.

On April 11, 2007, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.

 

4. Factual Background

Complainant is the largest affiliate network marketing company in the world. Complainant is the owner of a series of registered trademarks in the United States including LINKSHARE, LINKSHARE SIGNATURE, B2B LINKSHARE, THE LINKSHARE NETWORK and LINKSHARE JAPAN (the “LINKSHARE Marks”). Complainant also owns and operates a website located at “www.linkshare.com” which is the primary vehicle for Complainant’s clients, customers and users to access online services. Complainant registered the “www.linkshare.com” domain name on January 2, 1998, and has continuously operated its website ever since. Complainant owns at least forty other domain names, all including the phrase “LINKSHARE” (the “LINSKSHARE Domain Names”).

 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the LINKSHARE Marks, that its LINKSHARE Marks are valid and subsisting, and that they serve as prima facie evidence of Complainant’s ownership and the validity of the LINKSHARE Marks. 15 U.S.C. § 1115.

ii. Complainant argues that the Disputed Domain Name is confusingly similar to the LINKSHARE Marks and to the LINKSHARE Domain Names, pursuant to Paragraph 4(a)(i) of the Policy, because the disputed Disputed Domain Name wholly incorporates the phrase “LINKSHARE” with the addition of the “.mobi” sponsored top level domain extension.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Name under Paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that the links from the website to which the Disputed Domain Name resolves have no relation to Complainant and the links are to predominantly pornographic websites. Complainant polices its network to assure that its members do not engage in such activities. Such activities by Respondent do not constitute the sale of bona fide good or services.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under Paragraph 4(c)(ii) because he is not commonly known under the Disputed Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the LINKSHARE Marks in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Disputed Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondent has deliberately registered the Disputed Domain Name containing the phrase “LINKSHARE” to attract the attention of internet users and to divert these internet uses to Respondent’s website for which Respondent receives commercial revenue from sponsored links.

iv. Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant notes that ICANN has recently approved “.mobi” as a sponsored Top Level Domain Name (“mTLD”), specifically for users who access the Internet through mobile devices. General registration for the mTLD domain names began on September 26, 2007, which was the same day that Respondent registered the Disputed Domain Name.

Complainant argues that Respondent’s activities have prevented Complainant from reflecting the LINKSHARE Marks in it corresponding domain name using the mTLD, in violation of paragraph 4(b)(ii), supporting Complainant’s allegations that the Respondent has registered and used the Disputed Domain Name in bad faith.

Complainant further argues that Respondent’s activities are an intentional effort to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s LINKSHARE Marks as a source, sponsorship, affiliation or endorsement of Respondent’s website. Such activity is in violation of paragraph 4(b)(iv), supporting Complainant’s allegations that the Respondent has registered and used the Disputed Domain Name in bad faith.

B. Respondent’s contentions

Respondent has chosen not to respond to the Complaint and, therefore, has not contested the contentions of Complainant set forth in paragraphs A (i)-(iv) above.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772, n. 3.

A. Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

B. Enforceable Trademark Rights

Complainant contends that it has registrations of the LINKSHARE Marks, that its LINKSHARE Marks are valid and subsisting, and that they serve as prima facie evidence of Complainant’s ownership and the validity of the LINKSHARE Marks. 15 U.S.C. § 1115.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has failed to contest these allegations.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the LINKSHARE Marks.

C. Identity or Confusing Similarity

Complainant argues that the Disputed Domain Name is confusingly similar to the LINKSHARE Marks, pursuant to Paragraph 4(a)(i) of the Policy, because the Disputed Domain Name wholly incorporates the phrase “LINKSHARE” with the addition of the “.mobi” sponsored top level domain extension.

Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the LINKSHARE Marks.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).

The Panel notes that the entirety of the phrase LINKSHARE is included in the Disputed Domain Name with the .mobi extension.

The addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name. The same is true of “.mobi” because it is an mTLD required for registration of a domain name.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the LINKSHARE Marks pursuant to the Policy paragraph 4(a)(i).

D. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name. As stated above, Complainant has alleged that Respondent fails to meet the requirements of Paragraphs 4(c)(i)-(iii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has chosen not to contest the allegations of Complainant. The Panel finds no evidence that the file contains evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

E. Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant notes that ICANN has recently approved “.mobi” as a sponsored Top Level Domain Name (“mTLD”), specifically for users who access the Internet through mobile devices. General registration for the mTLD domain names began on September 26, 2007, which was the same day that Respondent registered the Disputed Domain Name.

Complainant argues that Respondent’s activities have prevented Complainant from reflecting the LINKSHARE Marks in it corresponding domain name using the mTLD, in violation of paragraph 4(b)(ii), supporting Complainant’s allegations that the Respondent has registered and used the Disputed Domain Name in bad faith.

Complainant further argues that Respondent’s activities are an intentional effort to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s LINKSHARE Marks as a source, sponsorship, affiliation or endorsement of Respondent’s website. Such activity is in violation of paragraph 4(b)(iv), supporting Complainant’s allegations that the Respondent has registered and used the Disputed Domain Name in bad faith.

Respondent has chosen not to contest the allegations of Complainant regarding Respondent’s bad faith. The Panel finds that Complainant’s allegations are supported by the evidence. Therefore, the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b) and that Respondent used the Disputed Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Panel concludes (a) that the Disputed Domain Name <linkshare.mobi> is confusingly similar to Complainant’s registered LINKSHARE Marks, (b) that Respondent has no rights or legitimate interest in the Disputed Domain Name and (c) that Respondent registered and used the Disputed Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <linkshare.mobi> be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: April 25, 2007