WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sidestep, Inc. v. WebQuest.com Inc.
Case No. D2007-0549
1. The Parties
The Complainant is Sidestep, Inc., Santa Clara, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.
The Respondent is WebQuest.com Inc., Modesto, California, United States of America, represented by David M. Dingeman, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <sidesteps.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2007. On April 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 13, 2007, 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. 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 Respondent of the Complaint, and the proceedings commenced on April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Response was filed with the Center on May 9, 2007. The Complainant submitted a supplemental filing on May 12, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 23, 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
The Complainant SideStep, Inc. is a Delaware corporation with its principal place of operation in Santa Clara, California. Since October 2000, the Complainant has provided online comparative shopping and links to reservations websites for air travel, hotels, car rentals, cruises, and vacation packages. The Complainant provides these services by means of a proprietary search engine accessed by a downloadable “Sidestep” toolbar; it also now makes such searches available directly on its website, currently located at “www.sidestep.com.” The Complainant’s services entail agreements with a wide variety of airlines, hotel and car rental chains, online travel reservations systems, and other service providers.
The Complainant’s website indicates that more than 6 million users employ its services each month. The “Sidestep” search engine has been widely publicized online and in other advertising, and also through numerous media reports and industry awards reported in the Complaint or on the Complainant’s website. Such mentions include “Best 100 Products of the Year, 2006,” PC World; Webby Awards, Official Honoree, 2006; “Best of the Web,” Forbes magazine (2003, 2005, and 2006); “Best of the Web, 2005,” Business Week Online; and “50 Coolest Websites,” TIME magazine (2003, 2005). As the Respondent acknowledges, a Google search on “sidestep” produces numerous results in the first pages that relate to the Complainant.
The Complainant holds the following registered trademarks in the United States, Canada, and the European Union:
FIRST USE IN COMMERCE
The Complainant applied for the first of these marks, in the United States, on October 5, 2000, at about the time it launched its “Sidestep” search engine.
The Respondent Webquest.com, Inc. is a California corporation, according to the State’s online database. The Respondent states that it is “in the business of providing pay-per-click search engines pertinent to the generic words and phrases they were derived from.” The Respondent cites as examples advertising directory websites using automotive terms as domain names, such as <truckparts.com>, <dashmats.com>, <bedcovers.com> (referring to covers for the beds of pickup trucks), <autobodykits.com>, <truckaudio.com> and <steeringwheels.com> in addition to the website to which the Domain Name resolves at “www.sidesteps.com” (the last is termed the “Respondent’s website” in this decision).
According to the Registrar’s WHOIS database, the Domain Name was created on December 19, 1999. However, the Complainant furnishes historical WHOIS evidence from “www.domaintools.com” indicating that the Respondent was not the original registrant but acquired the Domain Name in June 2005 from an earlier registrant, listed as Highland International Ltd. For Sale at DomainCollection.com.
The Respondent asserts at one point in the Response that it acquired the Domain Name “in 2002”; in another section the Response states more specifically that the Respondent registered the Domain Name in “September 2002.” As evidence of this, the Respondent points to an archived web page from September 23, 2002, showing that on that date the Domain Name resolved to an advertising directory website at “www.thesearchdirectory.com.” The Respondent says it acquired the domain name <thesearchdirectory.com> in 2001, which appears to be borne out by the WHOIS record for that domain.
The Domain Name currently resolves to an advertising directory website headed “Sidesteps.com,” with separate pages for each of several categories of goods and services. Many of the categories relate to travel, such as “Airline Tickets,” “Hotels,” “Flights,” “Cheap Flights,” “Car Rental,” and “South Beach Hotels.” The “Airline Tickets” page displays links for competitors of the Complainant, such as “www.travelzoo.com” (“search across multiple airline sites for low fares”), “www.bookingbuddy.com,” and “www.travel.yahoo.com.” Similarly, the “Hotels” page displays links for competitors at “www.hotels.com,” “www.hotwire.com,” and “www.booking.com.” None of the categories appears to have anything to do with truck sidesteps or other automotive products.
On June 13, 2005, the Complainant’s general counsel sent an email, furnished as an exhibit to the Complaint, to the registered contact for the Domain Name. The email asserted the Complainant’s trademark rights and demanded that the Respondent cease using “a derivative” of that mark as a domain name. There is no evidence in the record that the Respondent replied to this demand. The Respondent states that the Complainant “never provided any notice of a dispute” and that the Respondent was never “given notice” that SIDESTEP is a registered mark.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its registered SIDESTEPS mark, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant argues that the Respondent acquired the Domain Name after the Complainant’s mark was registered and well known, and notes in its supplemental “Reply” filing that the Complainant applied for trademark registration two years before the Respondent even claims to have acquired the Domain Name. The Complainant asserts that it had common-law rights to the mark once it launched its website in October 2000.
The Complainant argues that the Respondent’s use of the Domain Name to advertise competing travel services reinforces the inference that the Respondent registered and used the Domain Name in a bad-faith attempt to mislead Internet users for commercial gain. As the Domain Name varies from the Complainant’s mark by only one letter, the Complainant characterizes the Respondent’s conduct as “typosquatting,” again supporting an inference of bad faith.
The Respondent argues that the Domain Name is based not on the Complainant’s mark but on the plural form of an English word or phrase that denotes a step attached to the side of a truck or sports utility vehicle. The Respondent argues that the Complainant has not demonstrated actual or potential confusion among consumers between the Domain Name and the SIDESTEP trademark, implicitly denying the UDRP element of confusing similarity.
The Respondent claims common-law rights in the Domain Name as a service mark and asserts that it has a legitimate interest in using such common, generic words to sell advertising on a search-engine directory page. According to the Respondent, it intends to develop a website associated with the Domain Name oriented to side steps and other truck parts.
The Respondent denies prior knowledge of the Complainant and its SIDESTEP mark, arguing that the Complainant has not demonstrated “a wide reputation” or “extensive publicity.” The Respondent denies any intent to divert Internet users seeking the Complainant’s website to its own and argues that the two websites are quite different in function, sophistication, and target audience. Rather than seeking to mislead, the Respondent claims that it acquired the Domain Name in accord with its business practice of registering “generic domain names” and using them for advertising directories served by search engines. The Respondent says its intention was ultimately to develop a website using the Domain Name that would focus on automotive side steps, similar to its topical directory website at “www.truckparts.com.” Until then, the Respondent’s website has displayed categories and advertising links “generated by the registration company.” The Respondent concludes that this cannot be bad faith under the UDRP.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the 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. Supplemental Filing
The Complainant submitted a “Reply” to the Response, to correct “inaccurate statements and mischaracterizations of facts set forth in the Response.” These concerned the timing of the Respondent’s acquisition of the Domain Name, the assertion that the hosting company determines the content to display on the Respondent’s website, and the Respondent’s claim not to have had previous notice of the Complainant’s mark.
The Rules do not explicitly provide for supplemental filings in a Policy proceeding. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Therefore, UDRP Panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. As the Respondent had not raised these factual points and conclusions before (it did not, for example, respond to the cease-and-desist email), the Panel is willing to consider the Complainant’s reply to them.
The Panel, therefore, accepts the Complainant’s Reply as part of the record in this proceeding.
B. Identical or Confusingly Similar
The Complainant indisputably holds the registered trademark SIDESTEP. For purposes of the first UDRP element, the timing of registration is irrelevant; any arguments about priority belong instead in the consideration of the second or third UDRP elements.
The Domain Name is identical to the Complainant’s mark except for the addition of the plural “s.” Contrary to the Respondent’s argument, the first element of a UDRP complaint does not require an evidentiary assessment of the likelihood of confusion among consumers, even though that may be relevant for the third UDRP element (or in a trademark infringement action). The test for confusing similarity under the first UDRP element is simply an objective test, a comparison between the Domain Name and the Complainant’s trademark. Here, as in Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231, the textual differences between the Domain Name and the Complainant’s mark are slight, and the meaning is similar.
The Panel finds, therefore, that the Complainant has established the first element of the Policy.
C. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of 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 Complainant states that it never gave the Respondent permission to use the Complainant’s SIDESTEP mark in the Domain Name, and the Respondent does not challenge that statement.
The Respondent claims common-law rights to the Domain Name as a service mark, but this is not indicated on the Respondent’s website and the Respondent does not furnish evidence to support such a claim. A domain name normally functions as an address, not a brand. See, e.g., 1 J. McCarthy, Trademarks And Unfair Competition § 7:17.1 (4th ed. 1998). A trademark must indicate the origin of goods or services. A domain name might serve that purpose if, for example, it were the only or prominent name that appeared on product labeling, signage, and advertising for particular goods or services. There is no evidence in the record here supporting common law protection for the Respondent’s Domain Name by demonstrating that it has appeared in advertising or labeling or as anything but an address for the Respondent’s website that also appears at the top of each page of the website. The name is not associated with the Respondent (which is not identified on the website) or with any particular product or service. It is merely the address for an advertising directory page that displays links to third-party advertisers under several categories of services, many of them unrelated to any others listed on the website. There is no association of a product or service with the Respondent, and therefore no trademark function of the Domain Name. Thus, the Panel rejects the Respondent’s claimed rights based on common-law trademark protection for the Domain Name.
The Respondent also asserts its intent from the outset to develop a website associated with the Domain Name that would display links to advertisers of side steps and other truck parts. There is no such advertising on the Respondent’s website at present, nor any evidence of “demonstrable preparations” to use the Domain Name in such a fashion.
The Respondent contends that in any event it has a legitimate interest in using a domain name based on “generic” English words to display pay-per-click third-party advertising links. The Panel agrees that using a domain name to present sponsored advertising links may represent, in some cases, a “bona fide offering of goods and services.” However, this use would not be deemed to be in connection with a bona fide commercial offering if the generic words were identical or confusingly similar to a famous or distinctive mark of which the Respondent was, more probably than not, aware. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. FA0406000285459.
Because that question also goes to the heart of the bad-faith argument, it is addressed below in connection with the third UDRP element.
D. Registered and Used in Bad Faith
The Complainant cites one of the instances of bad faith described (without limitation) in the Policy, paragraph 4(b):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Respondent denies such intent or even prior knowledge of the Complainant and its mark. It argues instead that it chose the Domain Name for the inherent value of the generic word or phrase “sidesteps,” referring to truck parts, before the Complainant’s mark was registered. While this is not inconceivable, the record suggests otherwise.
First, there is the contested issue of timing. The Complainant has furnished printouts of historical WHOIS database records suggesting that the Respondent registered the Domain Name in June 2005, apparently after acquiring it from another party shown on earlier versions of the Registrar’s WHOIS database. This was two and a half years after the Complainant’s mark was registered in the United States and more than four years after the Complainant began to use the mark online in commerce and applied for trademark registration. The Respondent claims it registered the Domain Name in September 2002, but it furnishes no evidence of that act. Instead, the Respondent points to the fact that the Domain Name resolved at that time to a website associated with a different domain name that was registered to the Respondent. But that does not necessarily prove that the Respondent was the registrant of the Domain Name at that time; the linking may have been pursuant to some arrangement between the then-registrant of the Domain Name and the Respondent. Where only the Complainant has produced evidence directly identifying the date of registration by the Respondent, the Panel is inclined to credit that evidence.
The relevant date for purposes of the third element of the UDRP is the date on which the Respondent became the registrant, not the date on which the Domain Name was first created and registered to another party. The weight of the evidence indicates that the Respondent’s registration was in 2005. This means that the Respondent registered the Domain Name after the Complainant had a registered mark and had been using it online for more than four years.
It is also disputed whether the Respondent knew of the Complainant and its SIDESTEP mark at the time the Respondent registered the Domain Name. The Complainant argues, in effect, for the Respondent’s constructive notice of the mark based on the Complainant’s trademark application and subsequent registration. But UDRP panels commonly inquire further into the likelihood that the Respondent was aware of a mark in order to establish bad faith for UDRP purposes, particularly if the mark is not fanciful but based on common words. See, e.g., Alberto-Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757.
Here, there are additional reasons to believe that the Respondent was aware of the Complainant’s mark. Both parties are located in the United States, and both advertise online travel reservations and related services. Contrary to the Respondent’s assertion that the Complainant has not demonstrated “a wide reputation” or “extensive publicity” relating to the SIDESTEP mark, the Panel concludes from the evidence in the record that the Complainant has established precisely that. The Complainant’s SIDESTEP service has been operated for more than six years and has been highly successful, attracting millions of online users each month. SIDESTEP has garnered industry awards, going back at least as far as the Respondent’s registration of the Domain Name, as well as mentions in national media reports and advertising. The Complainant has not furnished sufficient evidence to support its assertion that its service mark was protectible as a common-law mark as early as October 2000 when it launched its website, but the record suggests that the mark was widely known before the first trademark registration in November 2002 and certainly by the time of the Respondent’s Domain Name registration in 2005. The Panel concludes that it is more likely than not that the Respondent was aware of the Complainant’s mark by that time.
A key fact supporting this conclusion is that both current and archived versions of the Respondent’s website consistently advertise travel-related services that compete directly with the Complainant, while they have nothing to say about “side steps” or truck parts. From the earliest archived versions of the website associated with the Respondent, advertising links for air travel and hotel reservations, often touting comparative pricing as the Complainant does, have featured prominently on the website.
The Respondent claims that the hosting company automatically generates content for the advertising directory website associated with the Domain Name. If so, the Respondent has for more than two years allowed the website to be used largely to advertise services in competition with the Complainant, with a Domain Name that differs by one letter from the Complainant’s SIDESTEP mark. It strains credulity to believe that this result was not anticipated. By contrast, although the Respondent stresses that there really is a market for truck side steps, it does not appear that these products have ever been advertised on the website.
As SIDESTEP was a well-known online brand by the time the Respondent registered the Domain Name, it seems unlikely that the Domain Name was attractive to the Respondent for use in advertising truck parts, which the Respondent has never done on the website. Instead, it appears that the mark had value principally in attracting consumers seeking travel pricing and reservations, which the website has highlighted ever since the Respondent registered the Domain Name. The fact that the website has been used in this manner for two years strongly suggests that this was not purely an automated search result, which the Respondent might have been expected to correct if it was not intended. This result is less likely to be a coincidence than a reflection of intentional misdirection for commercial gain, fitting the description in paragraph 4(b)(iv) of the Policy.
The Complainant also argues that the Domain Name represents an instance of “typosquatting,” a deliberate misspelling of the Complainant’s mark and “per se evidence of bad faith.” This argument is less persuasive where the Domain Name is comprised of correctly spelled generic words, as is the case here, as opposed to a variation on a fanciful mark. In light of the Panel’s conclusions above, however, it is unnecessary to address this argument.
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 <sidesteps.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: June 8, 2007