WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Classmates Online, Inc. v. Maxim Snezko a/k/a Steve Cho
Case No. D2007-0825
1. The Parties
Complainant is Classmates Online, Inc. of Renton, Washington, United States of America, represented by Foley & Lardner, United States of America.
Respondent is Maxim Snezko a/k/a Steve Cho of North Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wwwclassmates.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2007. On June 6, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On June 8, 2007, Network Solutions, LLC 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 June 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2007. The Response was filed with the Center on July 9, 2007.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 24, 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 Classmates Online, Inc., d/b/a Classmates.com, is one of the leaders in the business of online relationship services. Complainant owns a number of U.S. trademark registrations, including Registration Nos. 2,758,007; 2,755,056, and 2,584,325, for the marks CLASSMATES and CLASSMATES.COM, as used in connection with its online relationship services. Complainant also owns a Community Trademark (CTM) registration for its CLASSMATES.COM design mark, as well as the domain name <classmates.com> (Collectively “the CLASSMATES marks”). Complaint, Annex 1, Exhibit A.
Over 40 million Internet users are currently registered to use Complainant’s services. Classmates.com is one of the 20 largest advertisers on the Internet. Its advertising reaches more than 60% of the Internet population in the United States of America each week and, as established by outside research companies, for the past ten months, Complainant has consistently achieved a 63% brand awareness rating among the United States of America Internet population. Complaint, Declaration of Tara McGuane, Annex 1, Exhibit B.
The site located at the disputed domain name <wwwclassmates.com> automatically links to a website belonging to one of Complainant’s competitors, Reunion.com. Complaint, Annex 2, Exhibit E. Currently, a search of Complainant’s CLASSMATES.COM mark on the YAHOO! search engine results in reference to Respondent’s domain name.
Complainant sent a “cease and desist” letter to Respondent on September 9, 2002 via email and FedEx. No response was received and the FedEx envelope was returned as undeliverable. Complaint, Annex 1, Exhibits E and F. On October 18, 2002, Complainant again tried to contact Respondent in an effort to resolve the dispute informally. Complaint, Annex 1, ¶12. At that time, Complainant offered to purchase the domain name from Respondent for a nominal sum to reimburse Respondent for his out of pocket expense in purchasing the domain name. In response, Complainant received an email from Respondent claiming that the parties’ domain names were “very different and similar in only that they both contain the word classmates”. Respondent further stated that “I would like to try to create a site that competes with you by the name of Worldwideweb Classmates, which will be located at ‘wwwclassmates.com’”. Complaint, Annex 1 ¶13 and Exhibit K.
Complainant and Respondent had another exchange of emails on October 17 and November 11, 2002, in which Respondent stated, in part, as follows:
[B]eing a business person, and a pragmatic one at that, I will listen to what you have to offer. Please don’t insult me, by offering me a multiple of what I paid to register it. I am very familiar with domain names, and have purchased several in the past, some in the 6 figure range. As a person that understands the value of domain names, I implore you to make an appropriate offer, and not waste either of our time.
Complaint, Annex 1, Exhibits K through M.
The disputed domain name was registered on November 18, 2007.
5. Parties’ Contentions
Complainant contends that there can be no doubt that Respondent’s <wwwclassmates.com> domain name is confusingly similar to Complainant’s CLASSMATES marks. It notes that the only difference between the disputed domain name and Complainant’s CLASSMATES marks is the addition of the “www” prefix. According to Complainant, the registration and use of the <wwwclassmates.com> domain name by Respondent amounts to unlawful typosquatting.
Complainant further urges that Respondent has no rights or legitimate interests in the <wwwclassmates.com> domain name because Respondent has no trademark or intellectual property rights in the name or any word or part thereof and is not commonly known by the domain name. “Instead, Respondent’s inclusion of a ‘www’ prefix with Complainant’s registered CLASSMATES marks is merely an attempt to trade upon the goodwill associated with those marks, mislead and divert consumers to the website of one of Classmates.com’s competitors,” Complainants asserts.
Complainant argues that the disputed domain name was registered and is being used in bad faith because: (1) Respondent has suggested that Complainant offer a significant amount of money in order to purchase the infringing domain name; (2) Respondent has registered and is using the infringing domain name primarily for the purpose of trading upon the goodwill of Complainant’s CLASSMATES marks in a blatant attempt to disrupt Complainant’s business by luring Internet users to a competitor’s site; and (3) Respondent’s clear aim is to create a likelihood of confusion among Complainant’s consumer base due to a common typographical error (i.e., the failure to include a period after “www”) made when typing in Complainant’s Internet address and well-known name. “Respondent’s unlawful typosquatting should not be tolerated”, Complainant asserts.
In the Response, Respondent makes two arguments. First, that the evidence does not support a determination that Respondent registered the domain name primarily for the purpose of selling it to Complainant and, second, that the term “classmates” is generic and, thus, not a protectable mark. In support of the latter argument, Respondent cites a 1999 USPTO guideline regarding the registration of domain names and a dictionary definition of the term “classmates” as “a member of the same class at school”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <wwwclassmates.com> is, for all intents and purposes, identical to the CLASSMATES marks. The domain name incorporates the mark in its entirety. The addition in the domain name of the top-level domain “com” is without legal significance. See VAT Holding AG v. vat.com, WIPO Case No. D2000-0607 (<vat.com> identical to VAT trademark). Further the use of the prefix “www” in the challenged domain name does not avoid a determination of identity or confusing similarity under element 1 of the Policy. See New Century Corp. v. Dakasi, WIPO Case No. D2006-1630 (<wwwhome123.com> identical or confusingly similar with HOME 1-2-3 mark); Network Solutions, LLC v. KerryWeb Enterprise, Inc., WIPO Case No. 2006-1560 (<wwwnetworksolutions.net> confusingly similar to NETWORK SOLUTIONS mark).
The Panel further determines that Complainant has rights in the CLASSMATES marks. These rights are manifested in the U.S. and CTM registrations for the CLASSMATES marks, as well as the extensive use and advertising of such marks. The issuance of the U.S. registrations to Complainant gives rise to a presumption that the CLASSMATES mark is valid; that is, not generic.1
In support of its argument that the term “classmates” is generic, Respondent refers to dictionary definitions for such term. However, in assessing whether a term is generic, the term must be viewed in the context of the goods and/or services on or in connection with which it is used. Terms such as “shell”, “apple”, and “dove” are found in the dictionary but, yet, few would seriously contend that, as used in connection with gas and oil operations, computers, and soap, such terms are not protectable marks.
Respondent’s reliance on a 1999 USPTO guideline regarding the registration of domain names does not support the contention that CLASSMATES is generic. That guideline provides that a term composed of a generic term and a top-level domain generally may not be registered.2 However, as noted above, the USPTO has determined that CLASSMATES, as used by Complainant, is not generic.
B. Rights or Legitimate Interests
Given Respondent’s use of a domain name that is identical or confusingly similar to Complainant’s mark in connection with a site that competes with Complainant, the Panel finds that the domain name is not being used in connection with a bona fide offering of goods or services. In addition, no evidence has been offered that Respondent is commonly known by the domain name or is using the domain name in a noncommercial or fair manner.
As a result, the Panel finds that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Panel concludes that the domain name was registered and is being used in bad faith. By engaging in typosquatting, Respondent has intentionally attempt to attract, for commercial gain, Internet users to the “www.reunion.com” site by creating a likelihood of confusion with Complainant’s CLASSMATES marks as to the source, sponsorship, affiliation or endorsement of the site or of the services offered at such site, within the meaning of paragraph 4(b)(iv) of the Policy.3
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 <wwwclassmates.com> be transferred to Complainant.
Jeffrey M. Samuels
Dated: August 7, 2007
1 See 15 U.S.C. §1057(b). The Panel notes that Complainant’s U.S. registrations were issued under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f). A section 2(f) registration indicates that the subject mark, while merely descriptive as originally used, has been found, as a result of longstanding and substantially exclusive use, to have acquired the necessary distinctiveness to be protectable.
2 See In re Oppenhahl & Larson, 373 F.3d 1171 (Fed. Cir. 2004).
3 The Panel agrees with Respondent that the evidence does not establish that the domain name was registered or acquired primarily for the purpose of selling the registration to Complainant, within the meaning of paragraph 4(b)(i) of the Policy. However, such a determination is not required for the Panel to find bad faith registration.