The Complainant is Myxer Inc., of Florida, United States of America, represented by Foley & Lardner, of United States of America.
The Respondent is Compsys Domain Solutions Private Limited, of Mumbai, India.
The disputed domain names <mixermyxer.com>, <myxerertones.com>, <myxerringtons.com>, <myxertonze.com> and <wwwmymyxer.com> are registered with Lead Networks Domains Pvt. Ltd.
Between August 2008 and October 2008 the Complaint underwent successive amendments in respect of the number and identity of the disputed domain names. The procedural history below relates to a version of the Complaint read through the filter of the final amendment dated October 10, 2008.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2008. On August 1, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd., a request for registrar verification in connection with the disputed domain names. On August 12, 2008, Lead Networks Domains Pvt. Ltd., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a final amendment to the Complaint on October 10, 2008. 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 October 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 25, 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.
The Complainant's business includes the sale of ring tones, which are the tunes or sounds that mobile telephones make to alert the user to a call. Ring tones are fashionable, the business is competitive and in general purchased ring tones are downloaded directly to the telephone. The Complainant trades in other features that appear on telephones and computers such as pictures, videos and games.
The Complainant has operated through the Internet since at least as early as 2005, spends hundreds of thousands of US dollars annually on advertising, and receives millions of unique visitors annually from numerous countries to its websites.
The Complainant's registered trademarks include the following (the “MYXER trademarks”) in international class 038:
United States Registrations:
MYXER Reg. No. 3,365,947 Reg. Date January 8, 2008
MYXER (stylised) Reg. No. 3,464,617 Reg. Date July 8, 2008
MYXER TONES Reg. No. 3,219,875 Reg. Date March 20, 2007
MYXER TONES (stylised) Reg. No. 3,224,719 Reg. Date April 3, 2007
European Union Community Trademarks:
MYXER Reg. No. 005771753 Reg. Date January 30, 2008
MYXER (stylised) Reg. No. 005771761 Reg. Date January 30, 2008
MYXER TONES Reg. No. 005376661 Reg. Date September 5, 2007
MYXER TONES (stylised) Reg. No. 005376678 Reg. Date September 5, 2007
Nothing factual is known about the Respondent except for the name and address recorded as the registrant of the disputed domain names.
The Complainant contends that it owns and has rights in the registered trademarks listed above. Documentation is submitted to the effect that the trademarks were registered in the previous name of the Complainant, namely mVisible Technologies Inc., and assigned to the Complainant under its present name, which was adopted on January 9, 2008.
The Complainant submits that the disputed domain names are confusingly similar to its trademarks. They all incorporate, and are confusingly similar to, the distinctive trademarks MYXER or MYXER TONES. The Complainant submits that when a disputed domain name incorporates a distinctive trademark in its entirety, this constitutes confusing similarity. Furthermore, that confusing similarity is generally found where there is an adaptation of a trademark with additional or missing letters or a mis-spelling. The Complainant cites a number of previous UDRP decisions that it would like to be treated as precedent in this respect.
The Complainant submits that the disputed domain name <wwwmymyxer.com> is confusingly similar to its trademarks, and cites a number of previous UDRP decisions specifically relating to the prefix “www” without a dot between “www” and the rest of the domain name. It is also contended that the prefix “my” is not distinguishing and is recognised as being in some cases a device for intentional confusion.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent's use of the disputed domain names or the MYXER trademarks is not legitimate, noncommercial or fair but is a scheme to mislead consumers into believing that links offered are sponsored or endorsed by the Complainant. It is asserted that the Respondent is in violation of the Lanham Act, 15 U.S.C. § 1125, among other laws.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith, particularly in respect of paragraphs 4(b)(iii) and (iv) of the Policy. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or of products and services offered for sale through sponsored links and competing services available on the Respondent's websites.
The Complainant says that its trademarks are well-known in the relevant business and that the Respondent must have been aware of them or had constructive notice of them (section 22 of the Lanham Act, 15 U.S.C. § 1072) when it registered the disputed domain names. The Respondent's websites contain links to competitors such as “Mixertones Ringtones” and “MyxerTones® Downloadables”. A number of citations are submitted to the effect that use of a disputed domain name illegitimately for presumed click-through fees and consequent commercial gain may constitute bad faith.
The Complainant says that the disputed domain names represent mis-spellings of the Complainant's trademark, and submits previous UDRP decisions to the effect that the registration of multiple misspellings of a Complainant's trademark may constitute bad faith.
The Complainant contends that the Respondent's intention is to disrupt the business of the Complainant. It is not uncommon for consumers accidentally to mis-spell a domain name. The Respondent attempts to capitalise on consumers who accidentally mis-type either the Complainant's MYXER trademarks or its <myxer.com> or <myxertones.com> domain names, thereby constituting typosquatting. Some of the Respondent's domain names contain only two letters that are different from the Complainant's <myxertones.com> domain name (e.g., <mixertonze.com> and <mixerertones.com>) or the prefixes “www” or “my”.
The Complainant requests the transfer to it of the disputed domain names.
The Respondent did not reply to the Complainant's contentions.
By means of its ultimate amendment to the Complaint dated October 10, 2008 the Complainant named the Respondents as jointly Compsys Domain Solutions Private Limited and PrivacyProtect.org. In response to the Center's enquiry, Lead Networks Domains Pvt. Ltd., had disclosed the registrant of record to be Compsys Domain Solutions Private Limited, and this was notified to the Complainant. A respondent is defined in the Rules as “the holder of a domain-name registration”. The Panel further notes that Compsys Domain Solutions Private Limited appears as the registrant in the publicly available WhoIs. The Panel is satisfied that the registrant Compsys Domain Solutions Private Limited alone should be named as the Respondent and has amended the intituling of this Decision accordingly.
The Center has attempted to communicate with the Respondent at the email and physical addresses provided for Compsys Domain Solutions Private Limited in the registration document, and additionally through PrivacyProtect.org and Domainproxyagent.com at the contact details provided for them in the Complaint. The Panel is satisfied that the Center has at the least fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant has adduced ample documentary evidence of its ownership of and rights in the MYXER trademarks. All are centred upon the word “myxer”.
The disputed domain names are <mixermyxer.com>, <myxerertones.com>, <myxerringtons.com>, <myxertonze.com> and <wwwmymyxer.com>. Each features the word “myxer”, being the Complainant's registered trademark. The Panel finds that the word “myxer”, apparently a contrived and non-dictionary word, is distinctive to the extent that its incorporation into a domain name, in the absence of any good reason, is likely to constitute confusing similarity with the identical trademark. Confusing similarity is not based merely upon the subjective similarity of words or expressions to a trademark, but also on the consequences of search technology. It may reasonably be assumed that some Internet users searching for the Complainant and its products, having heard about MYXER in conversation, may search for terms solely or in combination such as MYXER, “mixer”, “tones”, “ring tones” or “ringtones”. Searching in this way has the potential to locate domain names belonging to the Respondent, owing to their similarity to the Complainant's trademarks.
Since the Complainant has registered trademarks comprising forms of the words MYXER TONES in combination, there is found to be confusing similarity specifically with the disputed domain name <myxerertones.com>, and also with misspellings of MYXER TONES in the disputed domain names <myxerringtons.com> and <myxertonze.com>.
The creation of a domain name by the attachment of a prefix such as “my” to a trademark is generally held not to obviate a finding of confusing similarity (InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069). Similarly the prefix “www”, without a dot after it and clearly intended to capture Internet users who omit the conventional dot of Internet syntax, does not avoid a finding of confusing similarity (Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256).
The Panel finds confusing similarity between the disputed domain names and the Complainant's trademarks to be proven in the terms of paragraph 4(a)(i) of the Policy.
The Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain names. Since this requires the Complainant to prove a negative, conventionally the Complainant states a prima facie case to that effect, after which it is open to the Respondent to refute in the terms of paragraph 4(c) of the Policy or otherwise. In this case, the Complainant states that it is not aware of any rights or legitimate interests that the Respondent could have in the disputed domain names. The Complainant states that the use of the disputed domain names and the MYXER trademarks is a scheme to mislead consumers into believing that links offered by the Respondent's website are sponsored or endorsed by the Complainant, and thus is not legitimate, non-commercial or fair.
The Panel accepts that the Complainant has made out a prima facie case in the terms of paragraph 4(a)(ii) of the Policy. The Respondent has not replied. The Panel can see no reason why the Respondent should have rights or legitimate interests in the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
The Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith. The Complainant refers particularly to the third and forth circumstances, which read as follows:
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Complainant has submitted evidence in the form of screenshots recorded from the websites corresponding to the disputed domain names. The screenshots show that the Respondent's websites essentially comprise links to other websites. The links displayed are an eclectic mixture, mainly offering leads to ringtones and related products for sale, but including an assortment of unrelated businesses including concrete mixers, food mixers, telecommunications items and other things. This strange assortment leads the Panel to the conclusion that in all likelihood the Respondent has subscribed to a provider of sophisticated advertising technology whereby links offered on the Respondent's websites are selected automatically to suit each individual viewer, based on keywords such as “mixer”, search terms, the searcher's geographical location and other clues to the viewer's preferences. Clearly the Respondent's operation is purposeful and it may reasonably be concluded that it conducts the business known as pay-per-click, or click-through, whereby viewers attracted to its website are referred on to businesses that pay the Respondent a fee for such referrals.
The pay-per-click mode of business is not necessarily illegitimate in itself and is widely used by bona fide providers of information, such as news sites and databases, in order to subsidise their operations or increase profits. The business depends, however, on the attraction of visitors. In the present case it is not possible to escape the conclusion that the Respondent has adopted domain names containing the Complainant's trademarks for no other reason than to attract visitors to its websites, in the expectation that some visitors will then generate revenue for the Respondent by clicking on fee-paying links. The Respondent has thereby attempted to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's trademarks in the terms of paragraph 4(b)(iv) of the Policy, and the Panel so finds.
By attempting to divert users seeking the Complainant's trademark and authentic websites, the Respondent is competing with the Complainant and is likely to take away some of its intended visitors, thereby causing disruption to the Complainant's business within the meaning of paragraph 4(b)(iii) 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 names <mixermyxer.com>, <myxerertones.com>, <myxerringtons.com>, <myxertonze.com> and <wwwmymyxer.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: December 9, 2008