WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.
Case No. D2007-1141
1. The Parties
The Complainant is mVisible Technologies, Inc., Deerfield Beach, Florida, United States of America, represented by Foley & Lardner, United States of America.
The Respondent is Navigation Catalyst Systems, Inc., El Segundo, California, United States of America, represented by Lewis & Hand, LLP, United States of America.
2. The Domain Names and Registrars
This proceeding involves 35 different domain names. The following 34 domain names are registered with Basic Fusion, Inc.:
<imyxer.com>, <musicmyxer.com>, <mymyxers.com>, <mymyxertone.com>, <mymyxxer.com>, <myxercodes.com>, <my-xer.com>, <myxergames.com>, <myxerones.com>, <myxer.org>, <myxerotnes.com>, <myxerringtones.com>, <myxers.net>, <myxersringtones.com>, <myxerstones.com>, <myxertone.com>, <myxertonees.com>, <myxertone.net>, <myxertones.net>, <myxertones.org>, <myxertonez.com>, <myxertonse.com>, <myxertonz.com>, <myxertoones.com>, <myxertpnes.com>, <myxertyones.com>, <themixxer.com>, <myxere.com>, <myxereones.com>, <myxerjams.com>, <myxerringbacktones.com>, <myxerringers.com>, <myxerspace.com>, <mymyxer.com>.
The domain name <myxerpones.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007. On August 6, 2007, the Center transmitted by email to Basic Fusion, Inc. and GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue (“Disputed Domain Names”). On August 6, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 13, 2007, Basic Fusion, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 9, 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 the Respondent of the Complaint, and the proceedings commenced on August 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was set as September 4, 2007. Respondent requested an extension on August 23, 2007, which the Center granted in accordance with the Rules, paragraph 5(d), extending the due date for the Response to September 11, 2007. The Response was filed with the Center September 11, 2007.
The Center appointed David H. Bernstein, Sandra J. Franklin and David E. Sorkin as panelists in this matter on November 8, 2007. The Panel finds that it was properly constituted. Each member of 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.
On October 6, 2007, Complainant submitted to the Center its Supplemental Brief (“Supplemental Brief”) in Support of Complaint. On October 15, 2007, Respondent submitted its objections to the Supplemental Brief.
Before proceeding to the merits of its decision, the Panel first had to decide whether it would consider any of the parties’ unsolicited supplemental filings. Complainant’s Supplemental Brief raises a number of issues. First, the Supplemental Brief notes that Respondent has registered six additional domain names (<myxere.com>; <myxereones.com>; <myxerjams.com>; <myxerringbacktones.com>; <myxerringers.com>; <myxerspace.com>), five of which were registered after the Complaint was filed in this proceeding, and one (<myxerringers.com>), which was registered on July 28, 2007, just five days prior to the date the Complaint was filed (Complainant affirms that it was not aware of this domain name at the time it filed its Complaint). Second, Complainant introduces additional evidence of bad faith by Respondent, in the form of references to five federal court cases involving claims against Respondent for trademark infringement and violations of the Anticybersquatting Consumer Protection Act. Third, Complainant responds to two issues raised by Respondent in its Response, which Complainant contends were not reasonably foreseeable at the time it filed its Complaint: (i) the strength of Complainant’s marks and (ii) Respondent’s characterization of Complainant’s services.
Respondent filed its objections to the Supplemental Brief. Respondent first argues that all of the facts and arguments in the Supplemental Brief were, with the exception of the newly registered domain names, known to Complainant at the time it filed its Complaint. Respondent then responds to all of Complainant’s arguments raised in the Supplemental Brief.
The Panel is mindful of the need for procedural efficiency in these proceedings. Forcing Complainant to file a new Complaint with respect to the six new domain names would be inefficient, especially since the legal and factual issues governing the resolution of that dispute would be exactly the same as the legal and factual issues this Panel already is considering with respect to the other 29 Disputed Domain Names. Moreover, in considering the Complainant’s assertion that Respondent’s registration of all the domain names was in bad faith, it is relevant to consider the fact that the Respondent registered five additional domain names after the Complaint was filed and served on Respondent. Accordingly, the Panel decided to include the six additional domain names that were registered just before or after the filing of the Complaint. On November 21, 2007, the Center informed the parties of the Panel’s decision to accept these additional domain names, and the Panel extended the deadline for submission of its decision to November 30, 2007.
The Panel did not, however, consider any of the additional evidence and argument raised by the Complainant in its Supplemental Brief. All of the factual evidence was available to Complainant at the time it prepared its Complaint (i.e., information on other UDRP proceedings and litigations in which Respondent was involved). Similarly, all of the legal arguments are either issues that Complainant could have anticipated (i.e., questions about the strength of its MYXER Marks) or issues the Panel is able to address without further briefing from the parties. See, Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609. Accordingly, the Panel has disregarded Complainant’s Supplemental Brief, except to the extent that it seeks permission to add the six additional domain names to the list of names at issue in this proceeding.
4. Factual Background
Complainant, a Delaware corporation with its principal place of business in Deerfield Beach, Florida, owns two United States trademark registrations: MYXER TONES (Reg. No. 3,219,875; filed March 28, 2006; registered March 20, 2007) and MYXER TONES (and design) (Reg. No. 3,224,719; filed March 28, 2006; registered April 3, 2007). Both registrations claim a date of first use of September 20, 2005 and disclaim the exclusive right to use TONES apart from MYXER TONES. Complainant also has two trademark applications pending with the United States Patent and Trademark Office (“USPTO”), both of which were filed on September 11, 2006, have preliminarily been approved by the USPTO, and were published in the Trademark Official Gazette on October 23, 2007: MYXER (Serial No. 78/971,578) and MYXER (and design) (Serial No. 78/971,619).
Complainant also owns four pending European Union Community Trade Mark applications: MYXER TONES (Trade Mark No. 005376661; filed September 26, 2006), MYXER TONES (and design) (Trade Mark No. 005376678; filed September 26, 2006), MYXER (Trade Mark No. 005771753; filed March 5, 2007), and MYXER (and design) (Trade Mark No. 005771761; filed March 5, 2007).
Respondent registered the first of the Disputed Domain Names on January 3, 2006, about three-and-a-half months after Complainant’s claimed date of first use. Respondent is using the Disputed Domain Names for a landing page that includes pay-per-click advertisements for third-party web sites offering services similar to those offered by Complainant.
5. Parties’ Contentions
Complainant claims ownership of a family of MYXER service marks, including but not limited to the marks MYXER, MYXER TONES, MYXER TAGS, and MYXER PICS (collectively, the “MYXER Marks”). Complainant claims to have used the MYXER Marks since September 2005 in connection with its services related to the creation and distribution of content for use on mobile telephones. Complainant claims that its services have been provided through its website accessible through the domain names <myxer.com>, <myxertones.com>, and <myxertags.com>, among others.
Complainant contends that, as a result of its efforts, its MYXER Marks are associated with its services and that Complainant enjoys substantial goodwill and a valuable reputation. According to Complainant, there are more than one million unique users of its services in over twenty countries worldwide. Complainant adds that, during the month of June 2007, more than 650,000 unique visitors accessed its website. Complainant claims that at all times relevant to its Complaint, it has successfully saturated the Internet market with its name, services, and MYXER Marks, and that it spends over $100,000 each year advertising its MYXER Marks in connection with its services.
Complainant alleges that Respondent has been found, by at least one prior UDRP panel, to have been in violation of the Policy and that Respondent is again engaging in a deceptive scheme, this time involving the registration and use of the Disputed Domain Names.
Complainant claims that each of the Disputed Domain Names is confusingly similar to the MYXER Marks in which Complainant has rights. Complainant alleges the Disputed Domain Names fully incorporate and are confusingly similar to the distinctive MYXER Marks. With respect to Respondent’s registration of <themixxer.com>, Complainant argues that the addition of the generic term “the” to the phonetic equivalent of MYXER makes that domain name confusingly similar to the MYXER mark.
Complainant adds that Respondent’s websites, accessible through most of the Disputed Domain Names, contain sponsored links to the websites of Complainant’s competitors, providers of downloadable ringtones for cellular phones. Complainant also claims, specifically with respect to three of the Disputed Domain Names (<myxertones.net>, <myxertones.org>, and <myxerstones.com>), that the websites accessible through these domain names also specifically link to “Myx”, “Myx Tone”, and “Myxertones”. Complainant adds that the website accessible through the <myxersringtones.com> domain name contains a link to “Myx Ringtone”. Complainant claims that all of these link to Complainant’s competitors offering downloadable ringtones for cellular phones.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant notes that the WHOIS domain name registration for the Disputed Domain Names does not suggest that Respondent is commonly known by the Disputed Domain Names or by the MYXER Marks. Additionally, Complainant avers that Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Names. Complainant claims that Respondent’s actions are intentionally deceptive and are a part of a scheme to mislead consumers into believing that the “sponsored” website links located through the Disputed Domain Names are affiliated with or endorsed by Complainant.
Complainant contends that the Disputed Domain Names were registered and are being used in bad faith. Complainant claims that Respondent was aware of the MYXER Marks, due to Complainant’s widespread use of those marks in connection with its services. Complainant also notes that several of the MYXER Marks were registered with the USPTO, putting Respondent on constructive notice of the Complainant’s rights with respect to those marks. Complainant also argues that actual knowledge of Complainant’s rights can be inferred from Respondent’s multiple registrations of domain names containing misspellings of the MYXER Marks.
Complainant avers that Respondent registered the Disputed Domain Names intentionally in a bad faith attempt to trade upon the goodwill associated with its MYXER Marks. Complainant alleges that Respondent derives commercial benefit from its use of the Disputed Domain Names as the websites accessible through most of the Disputed Domain Names contains a search engine and “sponsored results” with links to other sites.
Complainant also argues that Respondent intentionally disrupts Complainant’s business. Complainant notes that three of the Disputed Domain Names (<myxertone.net>, <myxertones.net>, and <myxertones.org>) link to “Myx Tone”, which in turn leads to a website with links to a variety of Complainant’s competitors.
Respondent contends that Complainant fails to prove confusing similarity to a trademark in which it has rights. Respondent notes that MYXER is the phonetic equivalent of “Mixer”, which is defined in the Oxford Pocket Dictionary of Current English as, inter alia, “[in sound recording and cinematography] a device for merging input signals to produce a combined output in the form of sound pictures.” Respondent notes that “Tone” is defined as, inter alia, “a musical sound, esp. one of a definite pitch and character. A musical note, warble, or other sound used as a particular signal on a telephone or answering machine…”
Respondent avers that Complainant’s website allows its customers to mix recorded music from compact discs and other sources into ringtones that they may then use on their cellular phones or sell to other cellular phone users. However, according to Respondent, Complainant’s trademark registrations do not list mixing ring tones as one of its services. Respondent contends that, had Complainant accurately described its services in its trademark applications, the MYXER TONES mark application would have been rejected as generic or, at best, would have been rejected as descriptive of the services offered until a showing of acquired distinctiveness could be made.
Respondent claims that the words “mix” and “mixer” – which Complainant features as metatags for its website – are, and have been, widely used to refer to the practice of mixing audio recordings for use as cellular phone ring tones since long before Complainant began using the term’s phonetic equivalent in association with its services. Therefore, according to Respondent, Complainant lacks any trademark rights in the MYXER Marks and the entire Complaint should be denied.
Respondent also claims that twelve of the Disputed Domain Names were registered by Respondent prior to March 20, 2007, when the first of Complainant’s registrations was granted. Further, Respondent avers that Complainant has not established any common law rights to the MYXER Marks prior to March 20, 2007. Respondent notes that Complainant’s claims that it used its marks since September 2005, that its service had experienced tremendous growth since its inception, and that it currently serves over one million users in twenty countries, shed no light on the nature or extent of Complainant’s use of the MYXER Marks.
Respondent also avers that Complainant has not submitted any evidence to support its assertions of common law trademark rights in the MYXER Marks prior to registration. Respondent claims that the Complaint is devoid of evidence of the nature and magnitude of Complainant’s alleged use of its marks in the United States, where Respondent resides. Respondent notes that the lack of evidence is significant here, where Complainant is represented by “renowned trademark counsel at Foley & Lardner”, and that the Panel may infer that if evidence of material use in commerce by Complainant prior to March 20, 2007 existed, it would have been submitted along with the Complaint.
Respondent also claims, in the alternative, that the following domain names are not confusingly similar to the MYXER Marks: <themixxer.com>, <myxergames.com>, <my-xer.com>, <myxercodes.com>, <musicmyxer.com>, <mymyxer.com>, <mymyxers.com> and <mymyxxers.com>. Respondent argues that the first of these domain names, <themixxer.com>, is the phonetic equivalent of a dictionary word and that Complainant cannot, simply by registering a misspelled phonetic equivalent of a dictionary word, obtain trademarks rights to all alternative misspelled versions of the word.
With respect to <my-xer.com>, Respondent claims that this domain name clearly denotes two separate words and is a highly unlikely spelling for a user searching for Complainant’s website. Respondent also claims that Complainant’s alleged trademark rights do not extend to the words “codes,” “music,” “games” or in conjunction with the possessive adjective “my.”
Respondent contends that it has rights and legitimate interests in and to the Disputed Domain Names. Respondent claims that it uses the Disputed Domain Names to help Internet users find information about various goods and services based upon descriptive keywords. Respondent claims that the results returned in response to a search are keyed by user’s interests and are supplied by advertisers who bid on keywords.
Respondent claims to have registered the Disputed Domain Names without any knowledge of Complainant or its MYXER Marks. Respondent states that, before registering a domain name, it checks it against a database of trademarks registered with the USPTO. Respondent claims that, at the time it registered twelve of the Disputed Domain Names, Complainant had no registered mark and Respondent, therefore, was not aware of Complainant’s marks. As for the remaining Disputed Domain Names, Respondent states that the trademark database for registrations for 2007 will not be available until next year.
Respondent claims that it has registered and has used the Disputed Domain Names in good faith. Respondent states that it did not register the Disputed Domain Names with the intent to sell them to Complainant or its competitors and has never attempted to do so. Respondent reiterates that it had no knowledge of Complainant or its marks prior to registering any of the Disputed Domain Names. Respondent further argues that even if knowledge of Complainant were imputed to it, that it would still not have been acting in bad faith by registering phonetic equivalents or misspellings of common, generic phrases.
Respondent also claims that the fact that advertisers choose to populate the landing pages of the Disputed Domain Names with advertisements for ringtone services have no bearing on whether it registered and used the Disputed Domain Names in bad faith.
Respondent also notes that the only panel to rule against it on the issue of bad faith did so in the context of an uncontested proceeding. Respondent also notes that it prevailed, by unanimous decision, in the only other proceedings brought against it and decided under the Policy.
Finally, Respondent contends that the number of domain names it registered should have no bearing on whether it acted in bad faith.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) Each 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 Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant has proven ownership of trademark rights in the MYXER TONES mark, and claims first use as of September 20, 2005. Respondent’s registration of some of the Disputed Domain Names pre-date the date Complainant applied to register the MYXER TONES mark. Complainant, though, also asserts unregistered trademark rights. Moreover, the Policy does not require that a complainant’s acquisition of trademark rights (whether registered or unregistered) pre-date a respondent’s registration of identical or confusingly similar domain names. See, MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827. This issue, however, may be relevant to the third element and will be addressed further below.
Respondent contends that, despite the trademark registrations, Complainant has no valid trademark rights because Complainant offers “mixing” services for ring-”tones” and that, had the USPTO been made aware of Complainant’s mixing services, it would not have approved registration of the mark, at least until a showing of acquired distinctiveness could be made.
A United States trademark registration is prima facie evidence of the validity of the mark. It is not conclusive or determinative, but such a registration is entitled to some deference from a UDRP panel. Given the limited evidentiary record available to the Panel, the absence of any discovery, the inability of the Panel to take testimony and make credibility determinations, and the short time period available to the Panel for decision, a panel should disregard a United States trademark registration only if Respondent presents “compelling evidence” that the registration was improperly granted or is likely to be cancelled. Electronic Commerce Media, Inc. v. Taos Mountain, NAF Claim No. 95344 (October 11, 2000).
Respondent has not made a compelling showing that the registrations were procured by fraud and should be cancelled. Even if Complainant’s services might include the mixing of ring tones (a disputed issue of fact the Panel need not resolve), it is not clear that “myxer tones” would be merely descriptive of any such services. In any event, even if Complainant provides services other than those listed in its registration (such as the mixing of ring tones), that would not render the registration invalid or subject to cancellation for the myriad of other services that are listed.1
Having determined that Complainant satisfied its burden of showing trademark rights, the Panel must next consider whether each of the thirty-five disputed domain names is identical or confusingly similar to those trademark rights. One of the dispute domain names (<myxer.org>) is identical to the distinctive portion of the MYXER TONES mark (the generic word “tones” having been disclaimed) with the addition of a gTLD. Two of the disputed domain names (<myxertones.org> and <myxertones.net>) are identical to the MYXER TONES mark without the space between the two words and the addition of a gTLD. It is well established that spaces and gTLDs are without legal significance in determining identity or similarity, and thus these three domain names are identical to Complainant’s trademark. See, e.g., J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035.
Fifteen of the Disputed Domain Names (<imyxer.com>, <my-xer.com>, <myxerones.com>, <myxerotnes.com>, <myxerstones.com>, <myxertonees.com>, <myxertonez.com>, <myxertonse.com>, <myxertonz.com>, <myxertoones.com>, <myxertpnes.com>, <myxertyones.com>, <myxere.com>, <myxereones.com>, and <myxerpones.com>) are slight misspellings of either MYXER or MYXER TONES. These minor variations do not prevent these domain names from being confusingly similar to Complainant’s marks. See, Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (finding <microosoft.com> confusingly similar to complainant’s MICROSOFT mark and noting that “[d]isputed domain names with misspelled variations of trademarks have been held to be ‘confusingly similar’ in many WIPO cases”); America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495 (finding a number of domain names that were misspelled variations of Complainant’s marks to be confusingly similar to those marks).
Three of the Disputed Domain Names (<myxers.net>, <myxertone.com>, and <myxertone.net>) fully incorporate either MYXER or MYXER TONES, but either add or remove the single letter “s” to the marks. The addition or deletion of the letter “s” does not prevent a finding of confusing similarity. See, e.g., Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303; Banco Bilbao Vizcaya Argentaria, S.A. v. femi abodunrin, WIPO Case No. D2004-0404.
Of the remaining fourteen Disputed Domain Names, thirteen of them (<musicmyxer.com>, <mymyxers.com>, <mymyxertone.com>, <mymyxxer.com>, <myxercodes.com>, <myxergames.com>, <myxerringtones.com>, <myxersringtones.com>, <myxerjams.com>, <myxerringbacktones.com>, <myxerringers.com>, <myxrespace.com>, and <mymyxer.com>) are similar to the domain names noted above in that they either fully incorporate MYXER or MYXER TONES or some slight variation on those marks. Wal-Mart Stores, inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Additionally, these domain names result from the addition of terms (such as “the”, “my”, “codes”, and “ring”) that, in this context, are generic for the services at issue. The addition of these generic terms does not sufficiently distinguish the resulting domain names from Complainant’s marks. See, Accor v. Howell Edwin, WIPO Case No. D2005-0980; Société des Hôtels Méridien v. Mr. Cuneyt Ozarici, WIPO Case No. D2005-0201; Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088.
As to the final Disputed Domain Name, <themixxer.com>, the Panel is divided. This domain name fully incorporates a slight variation on Complainant’s MYXER mark, but does not include the “y”, which represents a significant distinguishing feature of Complainant’s mark, a deliberate misspelling of the otherwise common word “mixer.” Nonetheless, a majority of the Panel considers this domain name to be sufficiently similar to Complainant’s MYXER mark to satisfy the confusing similarity requirement set forth in paragraph 4(a)(i) of the Policy.
Accordingly, the Panel concludes that all thirty-five domain names at issue are identical or confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a Respondent has a right or legitimate interest in a disputed domain name where:
(i) Before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
It is the Complainant’s burden to prove that Respondent lacks rights or legitimate interest. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Because it is difficult to produce evidence to support a negative statement, the threshold for Complainant to prove a lack of legitimate interest is low. Once Complainant makes out a prima facie showing on this element, the burden of production shifts to Respondent, although the burden of proof always remains on the Complainant. Id.; see also, Syncopated Software Development Corporation v. Do Life Right, NAF Claim No. 780309.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the Disputed Domain Names. In particular, Complainant alleges that Respondent is not making a noncommercial or fair use of the Disputed Domain Names and that Respondent’s websites are part of a scheme to mislead consumers into thinking that the sponsored links appearing in Respondent’s sites are endorsed by Complainant.
Respondent contends that it does have a legitimate interest in these domain names. As it explains:
“Navigation Catalyst Systems uses domain names to help Internet users find information about various goods and services, based upon descriptive keywords. The results returned in response to a search are keyed by user’s interests, and supplied by advertisers who bid on keywords. A Web page is much like a blank billboard, for which advertisers bid to have their advertisements displayed. In this way, customers search for information about descriptive goods or services are able to obtain relevant information. There is a recognized market need for descriptive keyword browser search services, and Navigation Catalyst Systems is helping to fill that need.”
Response, pp. 13-14 (citations omitted).
As this passage shows, Respondent rests its claim of a legitimate interest on a defense of “sponsored link” pay-per-click (“PPC”) landing pages. These pages, which have become pervasive throughout the Internet, are automatically generated web pages that have no fixed substantive content of their own; rather, the pages simply republish advertisements, pulled from advertising programs like Overture or Google Adwords, based on the words contained in the domain name.
These landing pages arguably provide little societal benefit, but the relevant question here is whether they represent a “use . . . in connection with a bona fide offering of goods or services” sufficient to give rise to rights or legitimate interests under paragraph 4(c)(i) of the Policy. If the links on a given landing page are truly based on the generic value of the domain name, such use may be bona fide because there are no trademark rights implicated by the landing page. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 (PPC landing pages are legitimate if “the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); see also, National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. If, though, the links are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inv. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same).
That is the situation here. Respondent’s domain names appear to be used for their trademark value and not for any descriptive value in the names. Indeed, “myxer” is not a dictionary word. Respondent claims that “myxer” is merely a phonetic misspelling of the word “mixer,” and thus that the domain name is descriptive of its services, but the Panel is doubtful that the correctly-spelled word “mixer” is descriptive for services that involve the downloading of music and ring tones. In any event, where there is a trademark that uses the particular word (whether a misspelling or not) for the very services at issue, a respondent cannot rely on the assertion that it is merely a misspelling of a generic word to immunize its conduct. Cf. e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369 (discussing when misspellings might give rise to a legitimate interest).
Proof that the real value in these domain names is based on the trademark value of “MYXER” is that 33 of the 35 domain names at issue resolve to landing pages (either as shown in the attachments to the Complaint or as reviewed by the Panel itself2) that include links to services that are closely related to or directly competitive with Complainant’s services. The links range from those advertising ring tone and MP3 downloads to links to “cellular accessories” and downloads for “music”. On their face, these links have nothing to do with mixing music but instead offer services competitive with Complainant’s services.
The only two exceptions are for the domain names <myxertpnes.com>, which resolves to a landing page at <videogamee.us> with links to video game advertisements, and <themixxer.com>, which resolves to a landing page at <musiclinstruments.com> with links to musical instrument advertisements (and without any links to music, MP3 or ring tone downloads). Although these landing pages, as configured at the time of the Complaint and at the time of the Panel’s review, do not appear to have advertisements for services that compete with Complainant’s services, the Respondent has not made any showing of why it has a legitimate interest in these domain names for these services. There is no descriptive relationship between these domain names (<myxtertpnes> and <themixxer>) and the goods and services advertised on the pages (video games and musical instruments, respectively).
Accordingly, Respondent has failed to rebut Complainant’s showing that Respondent lacks any rights to or legitimate interests in the domain names at issue, and thus Complainant has satisfied its burden under the second factor of the Policy.
C. Registered and Used in Bad Faith
Complainant invokes Paragraphs 4(b)(iii) and (iv) of the Policy with respect to the third element of the Policy. Paragraph 4(b)(iii) provides that a respondent’s registration of a domain name “primarily for the purpose of disrupting the business of a competitor” is evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) provides that a respondent’s use of the domain name to “intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location” shall also be evidence of registration and use of a domain name in bad faith.
Because Respondent’s many domain names resolve to landing pages at which competitive services are offered, Complainant has established that Respondent’s use of these domain names is in bad faith. The domain names appear designed to attract Internet users who are looking for Complainant’s MYXER TONES services, appear to cause confusion with Complainant’s marks and websites, appear to disrupt Complainant’s business by diverting consumers away from Complainant’s websites, and do all of these things for commercial gain because Respondent profits from the PPC revenue generated by these websites.
Respondent argues, however, that its registration of these domain names could not have been in bad faith for two reasons. First, Respondent notes, twelve of the domain names at issue were registered before Complainant obtained its trademark registration. Second, Respondent asserts, it registered these domain names without any actual knowledge of Complainant’s trademark, an assertion it supports by noting that it checked the names against an annually-updated database of USPTO registrations, and that it did not see the MYXER marks on the list of registered marks.
Subject to limited exceptions,3 it is true that registration of a domain name prior to the creation of any trademark rights (and prior to any knowledge of the imminent creation of trademark rights) would be persuasive evidence that the domain names were not registered with a bad faith intent to take advantage of the trademark (since the trademark was non-existent at the time of registration). See, e.g., e-Duction, Inc., supra. Here, though, all of the domain names were registered after Complainant’s first use of the MYXER TONES mark in September 2005, and 33 of the 35 were registered after Complainant applied to register its marks in March 2006 (which, by virtue of the subsequent registrations, means that Complainant’s priority rights date back to at the least the filing of its trademark registrations).
Respondent does, however, raise an interesting question as to whether its registrations of its first two domain names – <myxertone.com> on January 3, 2006 and <myxerpones.com> on February 1, 2006 – were in bad faith. Respondent is correct that Complainant offers scant evidence of its promotional activities as of those dates, and thus it is difficult for the Panel to determine the extent to which Complainant’s marks were being used in the marketplace as of those dates.
Although it is a close question, the Panel finds that Respondent’s registration of these two domain names cannot be excused merely because they were registered prior to the filing of the trademark applications. First, the Panel notes that both marks were eventually registered without any requirement that Complainant show acquired distinctiveness, which indicates that the USPTO found the marks to be inherently distinctive. If the marks are inherently distinctive, then Complainant’s trademark rights attached immediately upon first use in the marketplace in September 2005, regardless of how widely used the marks were and whether they developed independent secondary meaning.
Second, and in any event, by January 2006, Complainant already was using the MYXER TONES marks for its Internet-based business. The fact that the very first domain name Respondent registered was <myxertone.com> – a virtual exact copy of the trademark – gives rise to an inference that Respondent was aware of the MYXER TONES mark and registered this domain name specifically to take advantage of the developing business at Complainant’s <myxertones.com> website.
Moreover, the Panel cannot help but notice that, even after receipt of the Complaint, Respondent registered five additional domain names containing or confusingly similar to the MYXER TONES trademark. The continued registration of these domain names, even after a UDRP proceeding was filed, is further indication of bad faith and supports an inference that all of the domain names were registered in bad faith.
As for Respondent’s claim that it was not specifically familiar with Complainant’s trademark, even if the Panel would credit that assertion, that assertion is not enough to avoid a finding of bad faith registration. Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.
Furthermore, if a party elects to conduct such searches to show its absence of bad faith, the searches should be properly done to make it likely that any existing trademark rights will be found. Respondent’s search fails that standard because the database Respondent used included only registrations (and not pending applications, which, though not determinative, are indicative of potential trademark rights) and was updated only on an annual basis (and thus was not current, which is particularly important in the context of the Internet, where new websites are created and can become quite popular in rapid time; indeed, an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trademark application or registration). The USPTO website has a free, regularly-updated database of trademark applications and registrations (see http://www.uspto.gov/main/trademarks.htm), and is easily searchable, even by non-lawyers.4 Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term.
Searching of this kind is particularly appropriate for companies that operate PPC landing pages. That is especially true in this era of domain name tasting where millions of domain names are tasted each month, are often used at no charge for up to five days for landing pages, and then, at the end of the tasting period, if generating sufficient PPC revenue are kept and if not are released (often to be tasted by a succeeding registrant). In this context, registrants that run PPC landing page businesses cannot be willfully blind to whether the domain names they register are similar to trademarks and are pulling up PPC advertising related to those trademark rights. As the Panel noted in the related context of automatic registration of domain names for resale:
“respondents cannot . . . shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks. . . . Where . . . a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”
Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.
Applying these principles to the facts of this case, the Panel concludes that it is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the PPC landing page business, must have been aware of the relevant trademark. Accordingly, the Panel finds that Respondent registered and used the Disputed Domain Names in bad faith.
In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant: <imyxer.com>, <musicmyxer.com>, <mymyxers.com>, <mymyxertone.com>, <mymyxxer.com>, <myxercodes.com>, <my-xer.com>, <myxergames.com>, <myxerones.com>, <myxer.org>, <myxerotnes.com>, <myxerringtones.com>, <myxers.net>, <myxersringtones.com>, <myxerstones.com>, <myxertone.com>, <myxertonees.com>, <myxertone.net>, <myxertones.net>, <myxertones.org>, <myxertonez.com>, <myxertonse.com>, <myxertonz.com>, <myxertoones.com>, <myxertpnes.com>, <myxertyones.com>, <myxere.com>, <myxereones.com>, <myxerjams.com>, <myxerringbacktones.com>, <myxerringers.com>, <myxerspace.com>, <mymyxer.com>, <myxerpones.com>, and (by a majority vote of the Panel) <themixxer.com>.
David H. Bernstein
Sandra J. Franklin
David E. Sorkin
Dated: November 30, 2007
1 Respondent asserts that this is an issue that should be more properly decided by a court, rather than by a UDRP panel. If Respondent wishes these issues to be decided by a court, under paragraph 4(k) of the Policy, it may file an action in a court of competent jurisdiction. If it does so within ten (10) business days of notification of the decision, the Respondent would get the benefit of a transfer ‘freeze’ as provided for under paragraph 4(k) of the Policy.
2 It is well accepted that the Panel can conduct some factual research on its own, such as review of the parties’ websites. Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Société des Produits Nestlé SA v. Telmex Mgmt. Services, WIPO Case No. D2002-0070.
3 See, e.g., ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.
4 The USPTO database of trademark applications and registrations, along with other databases from other national and regional intellectual property offices, can easily be located through the WIPO Trademark Database Portal. See http://www.wipo.int/amc/en/trademark/index.html.