WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MySpace, Inc. v. Patrick F. Bily, Domains by Proxy, Inc.
Case No. D2007-0633
1. The Parties
The Complainant is MySpace, Inc., Beverly Hills, California, United States of America, represented by Cantor Colburn LLP, Bloomfield, Connecticut, United States of America.
The Respondents are Patrick F. Bily, Santa Barbara, California, United States of America and Domains by Proxy, Inc., Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <broadcastingmyspace.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2007. On April 27, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 27, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the respondent “Patrick bily” 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 May 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2007.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 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 holds registrations of the mark MYSPACE and marks incorporating MYSPACE with the United States Patent and Trademark Office (“USPTO”), the earliest of which issued December 14, 2004, and which showed a first use in commerce as early as July 2003. Complaint, Annexes F, H, and I. Complainant also has applications pending and trademarks issued in 24 countries and the European Union. Complaint, Annex K.
The MYSPACE mark has been used in conjunction with a web site to which the domain name <myspace.com> resolves. It allows members to construct personal web pages, as well as offering numerous features, such as videos, music, old television shows, and many more. Complaint, Annex G. In November 2006, the web site to which <myspace.com> resolved had recorded 38.7 billion page views in the United States alone, making it the number one web portal in the United States. Complaint, Annex P. Searches using the leading Internet search engines show that Complainant’s web site is the highest ranked search result for the entry of “MySpace” in the search engine. Complaint, Annex R. The web site to which <myspace.com> resolves is ranked fifth in overall World Wide Web traffic (Complaint, Annex S) and is ranked third in overall traffic among users in the United States. Complaint, Annex T.
Either Respondent Domains by Proxy, Inc. or Respondent Patrick F. Bily first registered the domain name at issue on December 7, 2006. Complaint, Annex, A. It is impossible to determine the initial registrant, because at the time that Complainant conducted a Whois search, the registrant was shown as Domains by Proxy, Inc., but when the registrar was contacted, the registrar reported that the registrant of the domain name at issue was “Patrick bily.”
In a letter to the Chairman of Complainant’s parent, News Corp., dated March 27, 2007, one Patrick F. Bily (whose address corresponded to that communicated by the registrar to the Center for “Patrick bily”), purported to be the registrant of the domain name <broadcastingmyspace.com>. In that letter, respondent Patrick F. Bily invited Complainant’s parent to make “a six-figure offer for my domain name.” Complaint, Annex B.
5. Parties’ Contentions
Complainant contends that the domain name at issue is confusingly similar to the MYSPACE mark in which Complainant has rights, that Respondents have no rights or legitimate interests in respect of the domain name, and that Respondents have registered and are using the domain name at issue in bad faith.
The Respondent did not reply to the Complainant’s contentions.
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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) 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,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Proper Parties Respondent
Respondent Domains by Proxy, Inc. was listed as the registrant of the domain name at issue in the Whois prior to the filing of the Complaint. Following the filing of the Complaint, the Registrar notified the Center that the registrant of the domain name at issue was “Patrick bily.” The Rules require that the Complainant should forward all communications to “all postal-mail and facsimile addresses shown in the domain name’s registration data in the Registrar’s Whois database for the registered domain-name holder, the technical contact, and the administrative contact.” Rules, paragraph 2(a)(i). Accordingly, panels have found that in cases of the user of privacy services, both the privacy service and the registrant communicated to the Center in response to a request to verify the registrant are proper parties respondent. See, e.g., Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585. Accordingly, the Panel finds that both Domains by Proxy, Inc. and Patrick F. Bily are proper parties respondent, and they will hereafter be referred to jointly and severally as “Respondent.”
B. Identical or Confusingly Similar
The domain name consists of Complainant’s famous mark to which the common term “broadcasting” is appended and the gTLD suffix “.com.” It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 <nokiagirls.com>; EAuto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104 <eautomotive.com>.
C. Rights or Legitimate Interests
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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, Section 2.1.
In the present case. the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Based on the case file, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
D. Registered and Used in Bad Faith
Respondent contacted Complainant and invited Complainant to make “a six-figure offer for my domain name.” Such an invitation constitutes an offer to sell, and the requested price is far in excess of the Respondent’s out-of-pocket costs. Policy, paragraph 4(b)(1), Microsoft Corporation v. Ahmet Mehrotra, WIPO Case No. D2000-0053. Accordingly, this constitutes bad faith registration and use under the Policy. World Wrestling FederationEntertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.
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, <broadcastingmyspace.com> be transferred to the Complainant.
M. Scott Donahey
Dated: July 3, 2007