WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Surfboard Holding B.V. v. Mainstream Advertising Inc., Nathan Joseph
Case No. D2011-0685
1. The Parties
The Complainant is Surfboard Holding B.V. of Zeist, Netherlands, represented by Onel trademarks, Netherlands.
The Respondent is Mainstream Advertising Inc., Nathan Joseph of Woodland Hills, Alabama, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ixquic.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2011. On April 19, 2011, the Center transmitted by email to Moniker Online Services, LLC.a request for registrar verification in connection with the disputed domain name. On April 19, 2011, Moniker Online Services, LLC. 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 May 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on June 6, 2011. 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. On June 21, 2011, the Panel extended the due date for decision until June 27, 2011, in accordance with paragraph 10 of the Rules.
4. Factual Background
The Complainant is the owner of the registered trademark IXQUICK, registered in a number of countries. In the United States the mark was filed on August 17, 2000, and registered on October 25, 2002 in class 42 with claimed prior use as of 1999. The mark is also registered in the EU in classes 35 and 42.
The Complainant provides little evidence of its business. The primary description of its business is contained in a short Wikipedia entry attached to the Complaint. In substantial part, that entry states that:
“Ixquick is a metasearch engine based in New York and the Netherlands. Ixquick was founded by David Bodnick (currently Ixquick's lead "Technologist") in 1998, from New York. It is now owned by a Dutch company – Surfboard Holding BV, which acquired this search engine in 2000.”
“Ixquick returns the top ten results from multiple search engines. It uses a "Star System" to rank its results – by awarding one star for every result that has been returned from a search engine. Thereby, the top search results are the ones that have been returned from the most search engines. Ixquick also can search in 17 languages, including Simplified and Traditional Chinese, Danish, Dutch, English, Finnish, French, German, Italian, Japanese, Korean, Norwegian, Polish, Portuguese, Spanish, Swedish, and Turkish. Each language version includes local search engines. Ixquick was re-launched on March 23, 2005, with many new features including a re-engineered metasearch algorithm, and an international phone and lowest-price directory.”
The disputed domain name was registered on January 31, 2001. The case file contains no details about the business of the Respondent.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is almost identical to the Complainant’s domain name <ixquick.com> and its IXQUICK trademarks. Moreover, the Respondent’s website offers a search facility, which is also the ‘main service’ offered by the Complainant, and mentions the Complainant’s mark in various places on that site. This use of this almost identical domain name creates a likelihood of confusion and harms the trademark rights and reputation of the Complainant.
In view of the content of the Respondent’s website it is clear that there is no bona fide use of the disputed domain name. The only purpose of this content and registration of the disputed domain name is free riding on the reputation and name of the Complainant by means of use of a misspelled domain name. The company name of the Respondent differs from the disputed domain name. The Respondent’s website has never been used as a full functional website, other than catching people who have misspelled <ixquick.com>. The Respondent has no legitimate interest or reason to register the disputed domain name.
The Complainant operates a unique search engine widely known by users. The Complainant says that this reputation was gained long before the registration of the disputed domain name. By mentioning ‘Ixquick’ on the Respondent’s website, users might think that the website originates from the Complainant. The Complainant says that this behaviour is unlawful. The Complainant says that it is obvious that this registration has been done in bad faith, namely for commercial gain by free-riding on the reputation of the Complainant’s trademark.
The Complainant provides evidence of an undated screenshot of the Respondent’s homepage. The homepage prominently features the title “Ixquic.com A IxQuick Resource & Online Community”. The homepage features an apparent search facility and list of links on ‘Related Topics’, such as ‘tax preparation’, ‘tax consultants’, ‘representatives’, ‘food processing’, ‘manufacturing’. From the Internet archive ‘Waybackmachine’ the Complainant provides an example of the Respondent’s website as it was between August and October 2004. Between those dates, the website was titled ‘my city’ and featured an apparent search facility and a miscellaneous collection of links to a diverse range of subjects.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Delay in bringing Complaint
As noted above, the disputed domain name was first registered in 2001. This means that the disputed domain name was registered around 10 years before the Complainant filed the Complaint. The Complainant provides no explanation as to why it took so long to file the Complaint. Such a lack of explanation is notable. The disputed domain name is registered in the “.com” TLD, which is one of the more obvious domain spaces in which a domain name (that in this case wholly comprises a trademark) may be registered.
However, as this Panel has discussed in other cases, a delay in bringing a complaint does not provide a defense per se under the Policy. See STL Group B.V. v. Bookstore.com, Inc., WIPO Case No. D2011-0415; Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010-2256. While the disputed domain name was first registered before the commencement of the Policy, the Registrar in this case has confirmed that the Policy applies to the domain name. The Complainant has otherwise demonstrated rights in a mark subsisting before the registration of the disputed domain name. In choosing not to respond, the Respondent has provided no evidence as to whether the Complainant’s delay should be held against it.
B. Identical or Confusingly Similar
The Complainant clearly has registered rights in the IXQUICK trademark. The Panel finds that the disputed domain name is confusingly similar to this mark. The only relevant difference is that the disputed domain name does not include the letter “k”. Phonetically, the disputed domain name and trademark are identical. The Panel also considers that the disputed domain name is substantially the same in overall appearance and impression. While the Complainant provided little evidence, as far as the Panel can tell, the Complainant’s registered trademark is arbitrary or fanciful in a trademark sense. As a registered mark, it is entitled to a presumption of sufficient distinctiveness.
In these circumstances, the Panel considers that the slight difference between the disputed domain name and the Complainant’s mark is trivial, and therefore unlikely to avoid confusion with the Complainant’s mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
C. Rights or Legitimate Interests
The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy sets out three illustrative examples of such rights or legitimate interests, which are:
“(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.”
The Complainant’s case against the Respondent in relation to the second element of the Policy is brief. The Complainant claims that the Respondent is free riding on the reputation of its mark by use of a misspelled domain name. The Complainant’s evidence is that the Respondent has used the disputed domain name to link to what appears to be a ‘pay per click’ website, both recently and as far back as 2004. Previous panels have found that such a use, in the absence of any other evidence of rights or legitimate interests, is not a legitimate non-commercial or fair use of the domain name. See, e.g., Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073.
Having submitted no response, the Respondent has not disputed these allegations. There is otherwise no evidence in the case file that suggests the contrary to the Complainant’s case, or evidence to support a finding of there being rights or legitimate interests of a kind set out in paragraph 4(c) of the Policy. Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In relation to bad faith, and as stated by the panel in Mandarin Oriental Services B.V. v. Control Alt Delete, WIPO Case No. D2000-1671: “The essential question for the Panel is whether or not the Respondent registered the Domain Name with the Complainant specifically in mind.”
The first issue to be resolved is whether the disputed domain name was registered before the Complainant’s mark. This is because the Complainant’s evidence is that its earliest mark was registered in October 2002, after the registration of the disputed domain name in January 2001. This issue is addressed in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). That part of the WIPO Overview 2.0 notes that “Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
However, the Complainant’s evidence in this case indicates that its application for its mark was filed in 2000, before the registration of the disputed domain name. The date of filing is the priority date for trademark purposes, under Article 4 of the Paris Convention for the Protection of Industrial Property. Accordingly, the Panel considers that the date of filing of the Complainant’s mark in this case, combined with the registration of that mark, establish that the Complainant had prior ‘rights’ of which the Respondent could have been aware when the disputed domain name was registered.
This does not however, establish whether the Respondent was in fact aware of those rights. But, having regard to all the evidence, the Panel considers that the Respondent was aware of the Complainant’s mark, and registered the disputed domain name to exploit the trademark value of that mark. The reasons for this are as follows:
Firstly, the Complainant’s mark appears partially meaningless (the term “ix”) and so there is an inference that the Respondent registered the disputed domain name with the Complainant’s mark in mind. This is reinforced by the fact that the more natural spelling for the domain name (“ixquick”) is already incorporated in a domain name registered by the Complainant. The Panel considers it unlikely that the Respondent was not aware of this fact.
Secondly, the Respondent’s website appears to provide a form of Internet search capacity – which is similar to the nature of the Complainant’s business. The available evidence suggests that the disputed domain name has been used for a substantial period for this purpose. The Panel considers it unlikely that the Respondent registered a domain name which is confusingly similar to the Complainant’s mark, and in a similar field of business to the Complainant, without some awareness of the Complainant’s mark.
Thirdly, the Respondent has apparently used the disputed domain name to direct traffic to a “pay per click” website. It is now well-established that the use of a parking page in this manner is evidence of bad faith. See, e.g., Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021.
Fourthly, the Respondent provided no evidence to rebut the allegations made against him, or to provide contrary evidence to suggest that his registrations were made in good faith. There is no explanation or evidence which would indicate that there is some objective connection between the Respondent and the disputed domain name.
Finally, the disputed domain name was registered shortly after the Complainant’s filing of its US-registered mark. Taken together with the other reasons mentioned above, the Panel considers this timing is suggestive of an opportunistic registration.
For all these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ixquic.com> be transferred to the Complainant.
James A. Barker
Dated: June 27, 2011