WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GoDaddy.com, Inc. v. Chad Lovell
Case No. D2007-1289
1. The Parties
The Complainant is GoDaddy.com, Inc., Scottsdale, Arizona, United States of America, represented internally, United States of America.
The Respondent is Chad Lovell, Olathe, Kansas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <godaddysgirls.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2007. On September 3, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On September 4, 2007, Dotster, 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 September 10, 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 September 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2007. A responsive email from Respondent, accepted by the Panel as a Response, was filed with the Center on September 19, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 21, 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.
In his initial email response dated September 19, 2007, Respondent suggested that he would require more than 20 days for submitting a more detailed response. By email dated October 19, 2007, Respondent indicated to the Center that he had been involved in an accident from which he was finally recovering. The Panel was appointed on October 21, 2007. Taking into account the prior correspondence from Respondent, the Panel through email from the Center on October 24, 2007, extended to Respondent an additional five calendar days in which to provide any additional information he considered relevant to this Proceeding. The Center did not receive further correspondence from Respondent following that extension.
4. Factual Background
Complainant is the holder of trade and service mark registrations for the word mark GO DADDY, on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 2,558,989, dated April 9, 2002, in international classes (IC) 9, covering computer programs, as further specified, and in IC 42 covering, inter alia, registration, transfer and management services of domain names, claiming first use in commerce as early as April 19, 1999, and; registration number 2,593,111, dated July 9, 2002, in IC 35, covering income tax preparation and filing services.1 Complainant has also registered certain GO DADDY-formative word, and word and design marks, on the Principal Register of the USPTO, including GO DADDY.COM and GODADDY.COM. (Complaint, Annex 3)
Complainant uses the GO DADDY mark in connection with an Internet-based business relating to the registration of domain names and the performance of various services associated with establishing and maintaining websites on the Internet, including their design and hosting. (Complaint)
Complainant has engaged in a marketing campaign that associates physically attractive women with its services, referring to these women as “Go Daddy Girls”. The Go Daddy Girls have recently included a well-known IndyCar driver, Danica Patrick, whose racing team has been sponsored by Complainant. Complainant registered the <godaddygirls.com> domain name on February 9, 2005, and has used that domain name to direct Internet users to a website it maintains using Internet address “www.godaddygirls.info” (domain name registered on September 12, 2006). At that web portal, Complainant provides photographs and information regarding various Go Daddy Girls. (Complaint, Annexes 4-5)
According to the Registrar’s Verification Report, Respondent is registrant of the disputed domain name, <godaddysgirls.com>. According to a Dotster WHOIS database printout furnished by Complainant, the record of registration of the disputed domain name was created on March 5, 2007. The registrant data on the record of registration associated with the WHOIS database printout provided by Complainant is different than the current registrant data reflected in the Registrar’s Verification Report. The change in registration data is not explained by Respondent (or Complainant).
Respondent has used the disputed domain name to redirect Internet users to sponsored links to a number of pornographic websites, with headings labeled “Free Porn – Pic/Videos”, “Watch Gay Movies Online”, “Free Porn – Uncensored”, and so forth. These links appear to be provided through a service of Dotster. The Internet address for Respondent’s web portal is “www.dotster.revenuedirect.com/park.php?domain_name=GODDADDYSGIRLS.COM” (Complaint, Annex 6, screen printout dated March 8, 2007). Similar web portal information is contained on subsequent screen printouts furnished by Complainant (id.).
Respondent offered the disputed domain name for sale on the “Sedo” website for $9,000.00 (nine thousand dollars) as of May 16, 2007. Complainant persuaded Sedo to remove the disputed domain name from posting for sale on that website. (Complaint, Annex 10)
Complainant contacted Respondent with a cease and desist and transfer demand, and received a response from Respondent rejecting that demand. Complainant, inter alia, indicated that it was willing to purchase the domain name from Respondent at a “reasonable price”, and inquired as to what that price might be. (Complaint, Annex 8, email correspondence from March 8 through May 25, 2007)
Respondent has actively participated in a dialog on a website at Internet address “www.nodaddy.com” that is a forum for critics of Complainant. Respondent has solicited suggestions regarding methods he might use to retain registration of the disputed domain name. (Complaint and Response)
The Registration Agreement in effect between Respondent and Dotster, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it is the holder of rights in the trade and service mark GO DADDY, and various GO DADDY-formative marks based on use in commerce and as evidenced by registration at the USPTO.
Complainant contends that it has used the GO DADDY mark in connection with a marketing campaign that incorporates the term “girls”, to form “Go Daddy Girls”, and including the registration of and use of domain names that incorporate “godaddygirls”.
Complainant argues that the disputed domain name is confusingly similar to its GO DADDY mark. Complainant contends that the mere addition of the generic term “girls” does not distinguish the disputed domain name from its mark, especially when Complainant has associated that same term with its mark for promotional purposes.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that Respondent registered the disputed domain name knowing that it infringed on Complainant’s mark. Complainant states that by requesting other Internet users to suggest a use for the disputed domain name, Respondent in effect concedes his lack of rights or legitimate interests. Complainant alleges that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith, including by offering the disputed domain name for sale on the Sedo site, and by stating on a web forum that he was willing to sell the disputed domain name (although not to Complainant), and that Respondent has used the disputed domain name for commercial gain to attract Internet users to his website by creating a likelihood of confusion.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent argues that at least one of Complainant’s trademarks is a word and design mark, and that he has not used a design in the disputed domain name. Respondent further alleges that one of the trademark registrations claimed by Complainant is not registered in Complainant’s name.
Respondent argues that he is using the disputed domain name for free speech purposes. Respondent states that he is not selling anything on his website.
Respondent states that he has used his website for “cash parking” so that he can earn money through click-throughs by Internet users.
Respondent asserts that because Complainant in its advertising encourages Internet users to register any domain name that they need, Complainant is effectively estopped from complaining about his registration and use of the disputed domain name.
Respondent asserts that he attempted to contact Complainant by telephone, but Complainant has not returned his telephone calls.
Respondent has requested the Panel to reject Complainant’s request for transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent promptly acknowledged notification of the Complaint from the Center, and submitted an email with argumentation challenging the Complaint. Although Respondent indicated that he would file a subsequent pleading, he did not do so. Based on Respondent’s previous correspondence with the Center, following its appointment the Panel extended an additional period of time for Respondent to supplement his earlier correspondence. The Center received no additional submissions or requests for extension from Respondent. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has established rights in the trade and service mark GO DADDY based on use in commerce and as evidenced by registration on the Principal Register of the USPTO (see Factual Background supra). Complainant has similarly established rights in certain GO DADDY-formative marks, including GODADDY.COM.
The term GO DADDY is inherently distinctive when used in connection with a service business for registration of domain names and website design and hosting services. Although those terms are common terms in the English language, they have no substantive relationship to the use made of them by Complainant.
Complainant has used the term “girls” in connection with its trade and service mark (forming “Go Daddy Girls”) for purposes of advertising and promoting its Internet-based business. Complainant has registered the <godaddygirls.com> and <godaddygirls.info> domain names and uses them in connection with the promotion of its business.
The disputed domain name <godaddysgirls.com> directly incorporates Complainant’s GO DADDY mark, and adds an “s” and the term “girls” to it. It is well established by decisions under the Policy that the mere addition of a generic or common adjectival term to a distinctive trademark does not create a new and distinctive domain name for purposes of comparison with the mark. See, e.g., HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802 and Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214. By adding the term “girls” to Complainant’s mark, Respondent does not distinguish his domain name from that mark. The addition of the “s” as plural or possessive similarly does not distinguish the disputed domain name from Complainant’s mark. The disputed domain name is similar in sight and sound to Complainant’s mark. Because Complainant has used the term “girls” in connection with its own marketing campaign, the disputed domain name is also similar in meaning to a usage by Complainant of its mark.2 The disputed domain name is confusingly similar to Complainant’s GO DADDY trade and service mark.
Complainant has established that it has rights in the trade and service mark GO DADDY, and that the disputed domain name is confusingly similar to that mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
Respondent has made two uses of the disputed domain name. The first is to redirect Internet users to a listing of links to third-party operated pornographic websites. This usage appears to have been consistent over a period of months. Respondent has acknowledged that he received compensation for this “cash parking”.
Complainant’s service mark is being used to divert Internet users to third-party providers of services that have no association with a business operated by Respondent. This is not a bona fide offering of services prior to notice of a dispute by Respondent. Moreover, in the circumstances of this proceeding, Respondent was clearly aware of Complainant and its trade and service mark when he registered and began using the disputed domain name. He should reasonably have anticipated that Complainant would object to his registration and use of the disputed domain name. Respondent had constructive notice of a dispute when he registered and began to use the disputed domain name.
Respondent has not been commonly known by the disputed domain name.
Respondent’s use of the disputed domain name is commercial. Respondent is not making “fair use” of Complainant’s trade and service mark. He is using it to misleadingly divert Internet traffic to third-party service providers based on the distinctive character of the mark for his own commercial gain.
Respondent’s second use of the disputed domain name is to offer it for sale. This is not a bona fide offering of products or services within the meaning of the Policy, nor is it a fair use of the disputed domain name.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that the domain name has been registered by a respondent “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name” (id., para. 4(b)(i)), and; (2) that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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] website or location of a product or service on [its] website or location” (id., para. 4(b)(iv)).
Respondent registered and has used the disputed domain name for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. Complainant’s distinctive mark is being used to divert Internet users to Respondent’s website which includes various links to third parties offering pornography-related services, and Respondent is receiving compensation for click-throughs to such third parties. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent’s public offer to sell the disputed domain name to any party other than Complainant suggests that his purpose for the sale would be to undermine Complainant’s business. Such offer for sale is in bad faith within the meaning of paragraph 4(b) of the Policy. The listing of bad faith factors is not exhaustive. Respondent has evidenced his bad faith intent to profit from a sale that relies on the value of Complainant’s rights in its trade and service mark.
Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning of the Policy.
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, <godaddysgirls.com> be transferred to the Complainant.
Frederick M. Abbott
Dated: November 9, 2007
1 Complainant has provided evidence of word trademark registration for “GO DADDY SOFTWARE” (reg. no. 2,338,707). However, the registration data shows “JOMAX TECNOLOGIES” as trademark owner, and Complainant has not provided information concerning its relationship to that listed owner.
2 Respondent registered the disputed domain name subsequent to the date that Complainant established rights in its trade and service mark, and subsequent to the date that Complainant initiated its Go Daddy Girls marketing campaign. In U.S. trademark law, third-party use of a distinctive mark may evidence an intention to take advantage of the reputation of the trademark owner, and this intention may itself serve as evidence of confusing similarity. Registration and use by Respondent of the disputed domain name incorporating Complainant’s previously registered distinctive trademark supports a finding of confusing similarity in so far as Respondent appears to have assumed that Internet users would confuse the mark and the disputed domain name. See, e.g., AMF v. Sleekcraft Boats, 599 F. 2d 341 (9th Cir. 1979).