WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.
Case No. D2008-0792
1. The Parties
The Complainant is SoftCom Technology Consulting Inc., of Toronto, Ontario, Canada, represented by Rohit Parekh, Canada.
The Respondent is Olariu Romeo/Orv Fin Group S.L., of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <myhostingfree.com> is registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2008. On May 21, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain name at issue. On May 22, 2008, Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint complied with 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 Respondent of the Complaint, and the proceedings commenced on May 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 16, 2008.
The Center appointed David Bernstein as the sole panelist in this matter on June 23, 2008. 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 asserts the following facts:
Complainant SoftCom Technologies Consulting Inc. is a computer network service provider that, among other activities, provides network hosting services and domain name registration services under the MYHOSTING trademark. SoftCom states that it has been continually using the MYHOSTING trademark since 1998 and registered the <myhosting.com> domain name on April 23, 1993.
SoftCom registered the MYHOSTING trademark in Canada, where Complainant resides, on July 20, 2005, and in the European Union (“EU”), where Respondent resides, on October 20, 2006.
SoftCom has registered dozens of other domain names using the MYHOSTING mark, including in many ccTLDs, which have been registered from dates spanning from 1998 to 2008.
On August 26, 2007, Respondent registered the domain name <myhostingfree.com> and subsequently established a website at the website to which the domain name resolves that offers web hosting services in direct competition with those offered by Complainant.
Complainant sent a cease and desist letter to Respondent on March 3, 2008, to protest its use of the <myhostingfree.com> domain name. Respondent did not respond, and thereafter Complainant invoked the Policy and filed its Complaint with the Center.
5. Parties’ Contentions
Complainant alleges that the <myhostingfree.com> domain name is identical to and/or confusingly similar to the MYHOSTING trademark, in that the disputed domain name incorporates the entire trademark MYHOSTING with the addition of only the common word “free.” Complainant alleges that this similarity is likely to cause consumer confusion, and that the addition of the term “free” does not eliminate the likelihood of confusion.
Complainant further alleges that Respondent has no rights or legitimate interests in the domain name <myhostingfree.com>. More specifically, Complainant alleges that Respondent cannot show a bona fide offering of goods or services because its services are in direct competition with those of the Complainant and its use of the domain name is aimed to divert business from the Complainant. Additionally, Complainant argues that the Respondent has no rights or legitimate interests in the domain name because its registration and use of the disputed domain name occurred well after Complainant’s MYHOSTING mark was registered in Canada and the EU, and that Respondent is not, and never has been, commonly known by the disputed domain name. Further, Complainant alleges that Respondent’s failure to reply the Complainant’s cease and desist letter provides additional evidence that the Respondent lacks rights or legitimate interests in the domain name.
Finally, Complainant alleges that, by using a confusingly similar domain name to directly compete with the Complainant’s web hosting and services business, Respondent’s use of the disputed domain name constitutes bad faith registration pursuant to the Policy, specifically paragraph 4(b)(iii). Complainant further alleges that Respondent’s use of the disputed domain name is in bad faith under paragraph 4(b)(iv) in that it diverts Internet users to a website that provides competing services and that such diversion may confuse Internet users as to Complainant’s sponsorship of, affiliation with, or endorsement of Respondent’s services. Lastly, Complainant asserts that Respondent’s bad faith is further demonstrated by its belief that Respondent registered the domain name with actual knowledge of Complainant’s rights in the MYHOSTING trademark, as evidenced by the use of the similar “myhostingfree.com” logo in the same location and fashion as the “myhosting.com” logo on Complainant’s website. In the alternative, Complainant argues that Respondent should have known of Complainant’s rights in the MYHOSTING trademark due the prior registration of the mark in Canada and the EU and Complainant’s forty-four registered domain names registered using the MYHOSTING mark.
Respondent did not reply to Complainant’s contentions.1
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:
(i) 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;
(ii) the respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Since Respondent did not file a Response, the Panel may decide the dispute based on the Amended Complaint, all factual allegations therein are accepted as true, and the Panel may draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
Complainant has submitted copies of its trademark registration for MYHOSTING in Canada and the EU. These registrations constitute prima facie evidence of the validity of the mark. Complainant thus has established that it has rights in the mark MYHOSTING.
Although the domain name <myhostingfree.com> is not identical to Complainant’s mark, it is confusingly similar because it incorporates, in its entirety, Complainant’s mark with the mere addition of the common word “free.”
In prior cases, this Panel has held that, when a domain name incorporates in its entirety a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. This similarity is established whenever a mark is incorporated in its entirety, regardless of other terms added to the domain name. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. That is because “the issue under the first factor is whether the letter string of the domain name is confusingly similar to the letter string of the trademark, devoid of marketplace factors. . . . It is an objective test that looks only at the mark and the domain name; it is not a subjective test that also looks at the mental reaction of Internet users to the domain name.” Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. Thus, as the domain name incorporates the entirety of Complainant’s mark, it is sufficiently similar to be confusingly similar to that mark.
The Panel therefore finds that Complainant has satisfied the first prong of the test.
B. Rights or Legitimate Interests
Despite the fact that Respondent has failed to respond and thus is in default, it is still Complainant’s burden to prove that Respondent lacks rights or legitimate interests in the disputed domain name. See EAuto, L.L.C (ruling for a defaulting respondent where complainant failed to show that respondent lacked any rights or legitimate interests in the domain name at issue). In order to sustain that burden, Complainant needs to at least make a prima facie showing that Respondent lacks rights to or legitimate interests in the domain name. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. For the reasons discussed below, Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name, with reference to the three nonexclusive examples listed in the Policy through which Respondent might demonstrate a legitimate interest:
i) Respondent’s use of the <myhostingfree.com> domain name is not in connection with a bona fide offering of goods or services
For its offering of goods or services under the MYHOSTING mark to be bona fide, Respondent must have had no knowledge of Complainant’s prior rights to the MYHOSTING mark and must also have used the mark in good faith. See Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co., Ltd., NAF Case No. 149188. Complainant has shown that Respondent cannot meet this test.
Complainant owns valid trademarks in the MYHOSTING mark and has owned those rights since long prior to Respondent’s registration of the domain name. Complainant also has produced sufficient evidence to show that consumers visiting Respondent’s website are likely to be confused as to that site’s affiliation with Complainant’s own sites. This finding of likely confusion leads inevitably to the conclusion that Respondent’s site infringes Complainant’s trademark, and thus Respondent’s use of the MYHOSTING mark, even if in connection with the offering of goods and services, is not bona fide for purposes of the Policy. That is because “bona fide” means “in good faith,” and the conclusion that Respondent is infringing Complainant’s trademark precludes a finding that Respondent has acted in good faith. Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416. Thus, Respondent has no rights or legitimate interests in the domain name deriving from any bona fide offering of goods or services.
(ii) Respondent is not commonly known by the Domain Name
There is no evidence that Respondent is commonly known by the domain name. Respondent appears to be commonly known under the name “Orv Fin Group S.L.,” and not the disputed domain name. Nor can Respondent’s past use of the domain name in connection with its commercial website support a finding that Respondent is commonly known by the domain name. It would be a perversion of the Policy if a cybersquatter could establish such rights by infringing a trademark owner’s mark on a competing site.
(iii) Respondent is not 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.
Respondent uses the domain name <myhostingfree.com> for its own commercial benefit, as it clearly sells web hosting and related services on the site. Given the overlap (indeed, direct competition) between the services offered, Complainant has shown a substantial likelihood that consumers would be confused and misleadingly diverted to Respondent’s website. See Document Technologies, Inc, supra. The close proximity between the goods and services offered by Complainant and Respondent therefore indicates that Respondent is taking advantage of the similarity between Complainant’s mark and the domain name and is doing so for commercial gain. See Schouten Industries B.V, supra.
In sum, because Complainant has made a prima facie showing that Respondent has no rights or legitimate interest in the disputed domain name, and because Respondent (by virtue of its default) has not met its burden of coming forward with concrete evidence to the contrary, Complainant has satisfied the second prong of the test.
C. Registered and Used in Bad Faith
Complainant alleges that Respondent registered and is using the domain name in bad faith based on the following examples provided in the Policy:
“4(b)(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
“4(b)(iv) by using the domain name, [Respondent has] attempted to attract, for commercial gain, Internet users to [Respondent’s] website or other on-line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”
Complainant has sufficiently established that Respondent had such bad faith motives in registering and using the disputed domain name. The finding that Respondent is infringing Complainant’s mark is itself sufficient to support a finding of bad faith registration and use. Busy Body, Inc. v. Fitness Outlet, Inc., WIPO Case No. D2000-0127 (finding bad faith where respondent attempted to attract customers to its website and created confusion by offering similar products for sale as complainant). Moreover, the domain name, which appends the word “free” to Complainant’s mark, appears to be used in connection with a false advertising scheme. That is because none of the offered services on “www.myhostingfree.com” are in any way free. In light of this deceptive use of the word free in the domain name, the Panel finds that the registration and use of this domain name has the potential to tarnish Complainant’s trademark since Internet users visiting the site may be annoyed to find that the advertised services are not free, and they may blame the deception on Complainant.
Complainant has thus met the third prong of the test and proven that Respondent registered and is using the domain name in bad faith.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <myhostingfree.com> be transferred to the Complainant.
David H. Bernstein
Date: July 8, 2008
1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that Respondent received fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. The Center sent notification of the Amended Complaint to Respondent by United Parcel Service (“UPS”) to the Respondent’s mailing address in Spain, and UPS has confirmed that the package was in fact delivered. The Center also sent the notification by fax listed in the registrar verification, and receipt of the fax was confirmed. Finally, the Center sent the notification to the email addresses listed in the registrar verification (although those email messages did not go through). Thus, it appears that the Respondent received actual notice of the Complaint, but even if the Respondent did not, the Panel finds that the Center has discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules. Cf. Atrium Medical Corp. v. Emin Keklik, NAF Case No. 1172416 (requiring a UDRP service provider to re-notify Complaint to fix deficiencies in original service).