WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VeriSign Inc. v. Western Business Services, INC./Doug Olsen
Case No. D2007-0488
1. The Parties
Complainant is VeriSign Inc., Mountain View, California, of United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.
Respondent is Western Business Services, INC./Doug Olsen, Spanish Fork, Utah, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <verisigngateway.com> is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2007. On April 2, 2007, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On April 3, 2007, Schlund + Partner transmitted by email to the Center its verification response confirming that 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 regarding the registrant information provided by the registrar, Complainant filed an amendment to the Complaint on April 19, 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 April 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2007. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on May 18, 2007.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on May 30, 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 is a provider of Internet domain names and other products and services relating to access to the Internet. Complainant owns several United States registrations for the trademark and service mark VERISIGN, including the following:
VERISIGN, No. 2,302,350, Registered Dec. 21, 1999;
VERISIGN, No. 2,559,289, Registered Apr. 9, 2002; and
VERISIGN, No. 2,758,215, Registered Sep. 2, 2003.
In addition, Complainant owns trade or service mark registrations for VERISIGN in some 30 countries or jurisdictions worldwide.
Respondent registered the disputed domain name <verisigngateway.com> (the “Domain Name”) on May 24, 2006.
5. Parties’ Contentions
Complainant contends that Respondent’s domain name is confusingly similar to Complainant’s VERISIGN marks in which it has well-established rights.
Complainant contends that it is the authoritative directory provider of all “.com”, “.net”, “.cc”, and “.tv” domain names and an industry leader in providing naming and directory products and services to globalize access to the Internet. Complainant provides a broad range of products, including web security; payment and authentication; registry and database; telecommunications; and other Internet related products and services.
Complainant contends that it first used the VERISIGN mark in 1995, originally registered the domain name <verisign.com> on June 29, 1995, and that it has continually used the VERISIGN marks to advertise and promote its products and services offered on the website located at <verisign.com>.
Complainant contends that it has promoted the VERISIGN marks globally, spending in excess of $250 million annually to promote the marks and the domain name, and those marks have gained widespread recognition in the United States of America and worldwide. Complainant has developed valuable goodwill and reputation in the marks and the domain name.
Complainant contends that Respondent’s domain name incorporates Complainant’s VERISIGN trademark and adds the generic term “gateway”, which is a common term used in the telecommunications industry to refer, for example, to a device enabling data to flow between different networks. The incorporation of Complainant’s trademark, together with a generic term, is sufficient to establish confusing similarity between the trademark and the disputed domain name.
As of January 31, 2007, Complainant contends that Respondent’s domain name redirected to the home page for “Cardservice International” (CSI) which displayed links offering the products and services of CSI. Subsequently, as of February 14, 2007, and following a cease-and-desist letter from Complainant’s counsel to Respondent, Respondent’s website included use of the VERISIGN marks and a direct link to Complainant’s website, while maintaining multiple links to CSI’s website.
Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain name. Complainant asserts that the Domain Name was registered after Complainant registered its VERISIGN marks and that Respondent has not identified itself as or been known by the Domain Name.
Complainant further contends that Respondent has never been authorized by Complainant to use the VERISIGN marks as part of the Domain Name. Complainant does note in the Complaint an assertion by Respondent that it did have authority to use the mark. Complainant alleges that shortly after it sent its February 1, 2007 cease and desist letter, Respondent Doug Olsen contacted counsel and asserted that he believed he had authority to register the domain name as a result of being an authorized agent of CSI. Complainant acknowledges that Complainant and CSI previously entered into a referral agreement and a channel reseller agreement but that neither agreement provided CSI, or any subsidiary of CSI, a license to register a domain name using VERISIGN marks as a domain name. Complainant contends that its policy prohibits any third parties from registering or maintaining any domain names that incorporate the VERISIGN marks, and that such permission is never given to any third parties.
Complainant thus contends that it has established a prima facie case that Respondent had no authority to use the VERISIGN mark in the Domain Name and can make no showing to the contrary.
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith. Respondent intentionally registered a domain name using another well-known trademark, creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, in order to attract Internet users to its website to generate added revenues for itself.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules and in hard copy by courier service to the address provided in Respondent’s registration information. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
The Panel finds, first, that Complainant possesses well-established rights in its VERISIGN trade and service marks. It owns at least three United States Patent and Trademark registrations on the Principal Register of the United States, from as early as 1999, and has used the mark continuously since 1995. In addition, the evidence supports a broad pattern of registration of the mark in many countries throughout the world.
Second, the Panel finds that Respondent’s Domain Name is confusingly similar to Complainant’s VERISIGN marks. The Domain Name incorporates the VERISIGN mark in its entirety. “The intentional registration of a domain name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion”. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.
The Domain Name adds the word “gateway” to Complainant’s mark, however, this is insufficient to negate otherwise confusing similarity. “Gateway” is a generic term used in computer networking and with respect to the Internet, and there is established authority in many cases under the Policy that the use of generic terms in conjunction with an established mark does not diminish or negate confusing similarity. “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. 2005). See Sanofi-aventis v. After Hours Hosting/Brett Banta, WIPO Case No. D2006-0469; Nokia Corporation v. Horoshiy, Inc. LaPorte Holdings, WIPO Case No. D2004-0851; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Eastman Chemical Co. v. Manila Industries, Inc., NAF Case No. FA 450806 (2005); Pioneer Hi-Bred International, Inc. v. Manila Industries., Inc., NAF Case No. FA 444468 (2005). The principle that likelihood of confusing similarity cannot be avoided by the addition of descriptive content has been found to include the addition of entire words to a famous trademark. See The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (“Coca Cola” and “cocacoladrinks” held confusingly similar); America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004, citing Sporty’s Farm LLC. v. Sportsman’s Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195; America Online, Inc., v. Yeteck Communication, Inc., WIPO Case No. D2001-0055.
Prior panels have reached such conclusions specifically with respect to cases involving use of the VERISIGN mark. VeriSign, Inc. v. Martin Franze, Inc., WIPO Case No. D2006-0299 (<freeverisign.com> confusingly similar to VERISIGN marks); VeriSign, Inc. v. Nandini Tandon, WIPO Case No. D2000-1216 (<verisignindia.com> and <verisignindia.net> confusingly similar to VERISIGN marks). Here, the term “gateway”, because it relates directly to Complainant’s products or services, actually enhances, rather than diminishes, confusing similarity. See Edmunds.com, Inc. v. Web Advertising, Corp./Keyword Marketing, Inc., WIPO Case No. D2006-1380 (<edmundscar.com> confusingly similar to EDMUNDS mark); Acuity, Inc. v. Netsolutions Proxy Services, WIPO Case No. D2005-0564; Capital Broadcasting Company, Inc. v. Private, WIPO Case No. D2000-1609.
An Internet user searching for Complainant’s website or services would likely be confused by Respondent’s domain name and think that he/she was being directed to one of Complainant’s websites where he/she could obtain information about Complainant’s services, which is completely untrue. Respondent’s Domain Name suggests a sponsorship by, or affiliation with, Complainant which does not in fact exist.
The Panel concludes that the Domain Name is confusingly similar to Complainant’s VERISIGN trademark in which Complainant possesses established legal rights.
B. Rights or Legitimate Interests
Complainant must establish that Respondent has no rights or legitimate interest in the Domain Name. See paragraph 4(a)(ii) of the Policy. Once a complainant has made a prima facie case that a respondent lacks rights or legitimate interests, the burden shifts to Respondent to come forward with evidence demonstrating its rights and legitimate interests. See Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela, WIPO Case No. D2005-0786; WalMart Stores, Inc. v. Lynda’s/Lynda Hickman, WIPO Case No. D2003-0719. In the Panel’s view, Complainant makes out its prima facie case, and Respondent, in default here, does nothing to assume its burden to counter that case with evidence of its rights or legitimate interests.
There is no evidence that Respondent is commonly known by the Domain Name. See paragraph 4(c)(ii) of the Policy. There also is no evidence that Respondent is making a legitimate noncommercial or fair use of any one or more of the domain names. See paragraph 4(c)(iii) of the Policy.
There is evidence to the effect that Respondent may be an authorized agent of Cardservice International (CSI) and that Complainant and CSI at one time had a reseller agreement. However, Complainant denies that it ever authorized CSI or its agents to use its VERISIGN marks in any domain name, and Respondent has not come forward with any evidence to show that it actually had authority to use Complainant’s VERISIGN trademark in any way.
The evidence of record is sufficient for the Panel to infer that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. See paragraph 4(c)(i) of the Policy. The Panel considers that Respondent in all likelihood knew of Complainant’s trademark before registering the Domain Name and consciously chose to use Complainant’s mark in launching its own website. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072. The unlawful use of another’s trademark cannot be considered bona fide, i.e. in good faith, with respect to an offering of goods or services. AltaVista Company v. Mr. James A. Maggs, NAF Case No. FA0095545. Respondent has not come forward to demonstrate how its website might constitute a bona fide offering of goods or services.
Based on the evidence, the Panel concludes that Respondent does not have rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Finally, Complainant must show that Respondent both registered and is using the Domain Name in bad faith. See paragraph 4(a)(iii) of the Policy.
There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). VERISIGN is an arbitrary term and has become a well-known mark with respect to Internet services. There can be little doubt that Respondent knew of Complainant’s trademark and intentionally chose to incorporate it into a confusingly similar domain name.
Under paragraph 4(b)(iv) of the Policy, bad faith exists where respondent is using a domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of respondent’s website. There is a strong inference here that the only reason Respondent would use Complainant’s trademark as it did would be to trade on Complainant’s goodwill in the mark for Respondent’s own commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642. Inasmuch as Respondent indicates on its website that it is an agent of CSI and the primary purpose of Respondent’s website appears to be to direct traffic to CSI, the reasonable inference is that Respondent realizes commercial gain from CSI and that it is using Complainant’s trademark in a confusing manner to do so. See Orbital Engine Company (Australia) Pty Ltd v. Ramazan Goitemir, WIPO Case No. D2004-0709. Respondent’s addition to its website of a direct link to Complainant’s website, again using the VERISIGN trademark, after receiving Complainant’s cease-and-desist letter, would tend to exacerbate user confusion and thus further demonstrates Respondent’s bad faith use of the Domain Name.
The Panel concludes that Respondent both registered and is using the Domain Name in bad faith and that Complainant therefore has established the final element of its case.
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 <verisigngateway.com> be transferred to the Complainant.
John R. Keys, Jr.
Dated: June 13, 2007