The Complainant is The Go Daddy Group Inc. of Scottsdale, United States of America, internally represented.
The Respondent is LaSalle Barnes, Sr. of Burbank, United States of America.
The disputed domain name <mywebsite2night.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2009 by email and on January 20, 2009 in hardcopy. On January 16, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 18, 2009.
On January 29, 2009, the Complainant transmitted to the Center a request to file a supplemental filing. The Center acknowledged receipt of the Complainant's request on January 30, 2009 and informed the Parties that consideration and/or admission of any supplemental filing, and/or any procedural steps that may be required as a result thereof, was at the sole discretion of the Panel, pursuant to paragraph 12 and general powers under paragraph 10 of the Rules.1
The Center appointed William R. Towns as the sole panelist in this matter on March 2, 2009. 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 is the owner of a United States registration for the mark WEBSITE TONIGHT, issued by the United States Patent and Trademark Office (USPTO) on September 14, 2004, in connection with an Internet-based website creation tool that can be used to “click and build” a website, with no knowledge of HTML required. The Complainant is the parent company of several Internet companies, including the ICANN- accredited registrars GoDaddy.com, Inc. and Wild West Domains, Inc., the latter of which is involved as registrar here.
The Respondent is a reseller of the Complainant's products and services, including WEBSITE TONIGHT products, under a Reseller Agreement with Wild West Domains (the “Reseller Agreement”). The record reflects that the Respondent registered the disputed domain name <mywebsite2night.com> on March 31, 2005. The disputed domain name resolves to a website offering domain name services, web hosting, email accounts, marketing tools and web building tools, including WEBSITE TONIGHT, through links on the home page. The Respondent's website appears to have been created through web page templates provided by the Complainant.
The Complainant on several occasions prior to the filing of the Complaint provided notice to the Respondent of this dispute, and at one point offered to purchase the disputed domain name for a minimal amount. According the Complainant, the Respondent indicated he would consider this offer, but thereafter did not contact the Complainant again, and otherwise did not respond in any manner to the Complainant's notice letters.
The Complainant maintains that the disputed domain name is confusingly similar to its WEBSITE TONIGHT mark, in which the Complainant has established prior rights. According to the Complainant, the Reseller Agreement does not permit the use of domain names appropriating the Complainant's trademarks, and the Respondent is making an unauthorized and infringing use of the dispute domain name to compete directly with the Complainant and its affiliates in the offering of the Complainant's goods and services, including WEBSITE TONIGHT products. The Complainant asserts that such use does not constitute a bona fide use under the Policy, and that the Respondent is not otherwise making any legitimate noncommercial or fair use of the domain name.
In view of the foregoing, the Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent, as a direct competitor of the Complainant, registered the disputed domain name primarily for the purpose of disrupting the Complainant's business, and is using the disputed domain name intentionally to attract Internet users, for commercial gain, to the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the domain name <mywebsite2night.com> is confusingly similar to the Complainant's WEBSITE TONIGHT mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The Panel considers that the disputed domain name incorporates the Complainant's mark in its entirety. No differences in meaning or sound result from the replacement of “to” in “tonight” with the number “2”. See CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201. Nor is Panel persuaded that the addition of the generic or descriptive term “my” dispels the confusing similarity between the disputed domain name and the Complainant's mark. See Bumble & Bumble LLC v. Eduard Gladyshev, WIPO Case No. D2008-1956.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The Complainant maintains that the Respondent was not authorized under the Reseller Agreement to register a domain name reflecting the Complainant's WEBSITE TONIGHT mark, and there is no indication that the Respondent has been commonly known by the disputed domain name. Nevertheless, the record reflects the Respondent's registration of a domain name incorporating the Complainant's mark in its entirety, and use of the domain name to attract Internet users to a commercial website on which the Respondent offers for sale the Complainant's products and services, including WEBSITE TONIGHT products.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.2 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the ‘safe harbors' of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. Further, under the circumstances of this case, the Respondent cannot credibly claim to be making a legitimate noncommercial or fair use of the domain name within the contemplation of paragraph 4(c)(iii) of the Policy. See Covanta Energy Corporation v. Anthony Mitchell, WIPO Case No. D2007-0185 (respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy).
The Panel has found nothing in the Reseller Agreement that would permit the Respondent to appropriate the Complainant's mark for use as the Respondent's domain name. See Go Daddy Software, Inc. v. Hostnut.com, Inc., WIPO Case No. D2004-0981. Nor in the view of the Panel does the record otherwise reflect the Respondent's use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, in light of the criteria set out for distributors or resellers of trademarked products in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Oki Data panel observed that the following circumstances must be present in order for an offering of goods or services to be bona fide for purposes of paragraph 4(c)(i):
(i) the respondent must actually be offering the Complainant's goods or services at issue. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
(ii) the respondent must use the site to sell only the trademarked goods: otherwise it could be using the trademark to bait other Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774. (Use of Nikon-related domain names to sell Nikon and competitive cameras was not a legitimate use);
(iii) the site must accurately disclose the registrant's relationship with the trademark owner. See R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official United States website for Quaife.)
(iv) the respondent must not be allowed to corner the market in domain names that reflect the trade mark.
It is evident from even a cursory glance at the Respondent's website that the third criterion of Oki Data has not been met. The website does not in any manner disclose the Respondent's relationship with the Complainant, and the Respondent's use of a domain name incorporating the Complainant's WEBSITE TONIGHT mark in its entirety is likely to cause Internet visitors to become confused as to whether the Respondent's website is owned or operated by the Complainant or one of its affiliated companies.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
It is a clear inference from the record that the Respondent knew of and had in mind the Complainant's WEBSITE TONIGHT mark when registering the disputed domain name. The Respondent's registration of a domain name incorporating the Complainant's mark with full knowledge of the Complainant's rights in the mark is evidence of bad faith. See Ticketmaster Corporation. v. Spider Web Design, Inc., WIPO Case No. D2000-1551.
Such bad faith is further evidenced from the Respondent's assertion on his website of trademark rights in the disputed domain name (through the Respondent's use of the ™ symbol), and the absence of a disclaimer disclosing the Respondent's relationship to the Complainant. The Panel also notes the Respondent's failure to meaningfully respond to the Complainant's notice letters regarding this dispute.
In view of foregoing, and in the absence of any explanation from the Respondent, the Panel concludes based on the circumstances in the record that the Respondent registered the disputed domain name in order to exploit and profit from the Complainant's rights in the mark, using the domain name to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion in terms of paragraph 4(b)(iv).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(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 name <mywebsite2night.com> be transferred to the Complainant.
William R. Towns
Dated: March 16, 2009
1 The Complainant submitted a corrected Annex 4 to the Complaint, which is a WhoIs printout indicating that the domain name <websitetonight.com > was registered by one of the Complainant's affiliated companies, Starfield Technologies, Inc. on May 5, 2003. The original Annex 4 was a WhoIs printout for the domain name <godaddy.com>, registered by the Complainant's affiliate GoDaddy.com, Inc, apparently submitted inadvertently.
2 Some panels have held that a respondent's lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.