WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Case No. D2011-1046
1. The Parties
The Complainant is InfoSpace, Inc. of Washington, United States of America, represented by Stokes Lawrence, P.S., United States of America.
The Respondent is Domain Admin, PrivacyProtect.org of Queensland, Australia / Zuch Alessandro of Remanzacco, Italy.
2. The Domain Name and Registrar
The disputed domain name <mywebcrawler.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2011. On June 21, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 22, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”) transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day.
The Center verified that the Complaint together with the amended 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 June 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. The Response was filed with the Center on July 16, 2011.
The Center appointed Habash, Lana I as the sole panelist in this matter on August 2, 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 July 29, 2011, the Respondent sent an e-mail communication to the Center regarding another Complaint filed by the Complainant against the same Respondent but for another domain name <mywebcrawler.net> (pending case, InfoSpace Inc. v. Zuch Alessandro, WIPO Case No. D2011-1254), where he indicated that he was not interested in continuing with the proceedings, and he expressed his willingness to transfer the disputed domain names in both cases.
Based on this correspondence, on August 3, 2011, the Complainant submitted a Request for Suspension of Proceedings for thirty days to allow for reaching a settlement with the Respondent. On August 11, 2011, the Panel issued the Procedural Order No. 1 in this case suspending the proceedings until September 10, 2011.
On August 31, 2011, the Complainant submitted to the Center a request to reinstitute the proceedings as no settlement was reached with the Respondent. On September 5, 2011, the Panel issued the Procedural Order No. 2 reinstituting the proceedings as of September 1, 2011.
4. Factual Background
The Complainant is a provider of Internet search engine services and is a developer of Internet search tools and technologies. The Complainant is the owner of the Trademark WEBCRAWLER with first registration that dates back 1996. The Complainant is also the owner of the domain names <webcrawler.com> and <mywebcrawler.com>, which both resolve to the website “www.webcrawler.com”, which offers search facilities empowered by Google, Yahoo and Bing. The Complainant has been using the Trademark WEBCRAWLER since 1994 and has been using it continuously since then.
The disputed domain name <mywebcrawler.org> was registered in February 2011 by the Respondent Zuch Alessandro, and resolves to a website that offers search facilities through various search engines such as Google, Yahoo, Bing and others in addition to listing of popular websites.
5. Parties’ Contentions
The Complainant contends that:
- The disputed domain name <mywebcrawler.org> is substantially identical and/ or confusingly similar to the Complainant’s Trademark WEBCRAWLER, which has acquired great value and goodwill in connection with the metasearch services it offers, as the disputed domain name incorporates in full the Complainant’s Trademark;
- The addition of the possessive pronoun “my” does not dispel a connection between the Complainant’s Trademark and the disputed domain name, or sufficiently distinguish it or create a new distinct trademark; to the contrary, it suggests the provision of an enhanced and personalized search service;
- The attachment of the top level domain “.org” to the disputed domain name does not materially change the commercial impression of the disputed domain name and does not affect it for the purpose of determining confusing similarity;
- The failure of the Respondent to reply to the cease and desist letter sent by the Complainant on March 31, 2011 indicates bad faith;
- The Respondent has never been known or operated a business under the WEBCRAWLER name and has no trademark or service marks rights in the term;
- The Respondent has no relationship with the Complainant and is not authorized to use the Trademark WEBCRAWLER or any variations thereof;
- Respondent’s use of the Trademark WEBCRAWLER directly infringes on the Complainant’s rights, and the registration and use of the disputed domain name <mywebcrawler.org> is intended to divert Internet users to a commercial website, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use;
- The use of privacy shields by the Respondent is an effort to conceal identity and may be an evidence of bad faith registration and use; and
- The disputed domain name is registered and is being used in bad faith, as it directs Internet users, who are seeking the Complainant’s website to a website containing a series of links to commercial sites, presumably for referral fees. Moreover, the Respondent has intentionally attempted to attract such Internet users to its website by creating a likelihood of confusion.
The Respondent contends that:
- The Respondent has registered the disputed domain name <mywebcrawler.org> considering that it was free and not covered by any trade and is not included by the Complainant’s own trade <webcrawler.com>;
- The Respondent’s interest in the word combination was born with a project that the Respondent was going to carry out, which was transformed in the contents of the website created before any notice of this dispute;
- The meaning of the word “mywebcrawler” is not considered in connection with the trade “webcrawler” but in the common meaning of the word “crawler” to the Internet users as “searching – program through the web”;
- The Respondent offers through his website a searching service based on others search engines, which work separately and give results separately;
- The Respondent declares on the homepage of the website to which the disputed domain name resolves to, by way of a disclaimer, that the website is not affiliated with InfoSpace;
- The Respondent’s website differs from that of the Complainant’s as the latter offers a single source to search the web and gives a single result report. Moreover, the graphic style and the graphic combination of the various elements on the homepage make the website distinguishable from the Complainant’s website and as such not confusing to the users;
- The Respondent’s use of the disputed domain name is respectful of public morals and the image of the sponsors and its contents are not outrageous and do not criticize other operators;
- The Respondent did not have any intention to sell or rent to the Complainant or to the competitors thereof or to others the disputed domain name;
- The Respondent developed his own project and he did not and does not consider himself as a competitor of the Complainant’s; and
- While the Respondent realizes the concerns of the Complainant and has a cooperative attitude if it is necessary to transfer the disputed domain name thereto, the Respondent believes that there should be confidence in the usability of a free domain name.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name <mywebcrawler.org> transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights in the Trademark WEBCRAWLER, which is in the view of the Panel is a rather distinctive trademark. The disputed domain name <mywebcrawler.org> incorporates the Complainant’s Trademark in its entirety and adds to it the possessive pronoun “my” and attaches to it the top level domain “.org”. The mere addition of the prefix “my” is not sufficient to distinguish it from the Complainant’s Trademark; a view which was widely adopted by numerous WIPO UDRP panels. The Panel recognizes the argument of the Complainant that the addition of the possessive pronoun to the Trademark may indeed suggest an enhanced personalized service and does not eliminate the confusing similarity. Similarly, attaching the top level domain “.org” does not make the disputed domain name distinctive. See Ferrero S.p.A. v. Mr. Jean-François Legendre, WIPO Case No. D2000-1534 and La Quinta Worldwide L.L.C. v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-1442.
The Panel is not convinced that the Respondent selected the disputed domain name due to its generic meaning as a term used in connection with the searching function on the Internet. The Respondent’s argument that the rather distinctive content of the website to which the disputed domain name resolves eliminates a finding of confusing similarity may not be considered by the Panel in evaluating the first element, considering that the test of confusing similarity concerns the initial interest confusion at the level of the disputed domain name itself, through the comparison between the alpha-numeric components of the disputed domain name, and the dominant textual components of the relevant trademark, and as such the content of the website is irrelevant for such determination. This has been the consensus view among the various WIPO UDRP panels. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
Based on the above, the Panel finds that paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark 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 complainant’s marks.
Based on the facts of this case, the Respondent failed to provide convincing evidence of his rights or legitimate interests in the disputed domain name; the Respondent arguments that the disputed domain name was born in connection with a project that he has been working on, which translated into the content of the website to which the disputed domain name resolves does not stand. The Respondent’s website provides a search function through a number of search engines and a listing of what is categorized as “Popular Internet Sites”; such use of a domain name, where the Respondent is likely to receive some monetary compensation for linking to other websites, is not a noncommercial or fair use of the disputed domain name and does not amount to a bona fide offering of goods or services.
Finally, the Respondent failed to show that he was commonly known by the disputed domain name; in fact, the Respondent has only used the disputed domain name in connection with the Respondent’s website, which, in spite of the Respondent’s contention that it is distinguishable from the Complainant’s website, the Panel is of the view that an average Internet user may easily confuse it with the latter’s website.
Accordingly, the second element under paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(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 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 your website or location or of a product or service on your website or location.”
The fact that the Respondent posted a disclaimer on the homepage of the website to which the disputed domain name resolves, declaring that it is not affiliated with the Complainant indicates that the Respondent was aware of the Complainant’s Trademark, which supports a finding of bad faith registration. The Respondent’s argument that including this statement / disclaimer negates bad faith use is not a valid argument, particularly that the Respondent used a domain name that is confusingly similar to the Complainant’s Trademark WEBCRAWLER and did not use it as a separate search engine as it did with Google, Yahoo, Bing and others. Moreover, the disclaimer states that the website is not affiliated with InfoSpace, and does not mention the Trademark WEBCRAWLER; the average user of the Internet would not necessarily be aware of the fact that InfoSpace is the owner of the Trademark WEBCRAWLER and subsequently of the website “www.webcrawler.com”. Also, it may be inferred from the circumstances of this dispute that the Respondent did register the disputed domain name to divert traffic from the website of the Complainant to his website, disrupting the latter’s business and making commercial gains out of this diversion.
Finally, concerning the Respondent’s argument that there should be confidence in the usability of a free domain name, while the Panel acknowledges the importance of someone’s right to enjoy the benefits of its possessions, in this Panel’s view, such possessions should not infringe on the rights and entitlements of others in the first place. Due to the nature of the Internet, and the practical impossibility of verifying third parties rights in each and every domain name being registered, this UDRP proceeding has been created and domain name registrants have become aware of the risks they are taking upon acquiring domain names that infringe on third parties rights, by accepting the terms of the respective registration agreements, which incorporate the Policy and through which the registrants submit to the UDRP Proceedings.
Therefore, and in light of the above mentioned facts, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and as such paragraph 4(a)(iii) is therefore satisfied.
For all 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 <mywebcrawler.org> be transferred to the Complainant.
Habash, Lana I
Dated: September 11, 2011