WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
InfoSpace, Inc. v. Domains Secured, LLC
Case No. D2011-1529
1. The Parties
Complainant is InfoSpace, Inc. of Bellevue, Washington, United States of America (“United States”), represented by Stokes Lawrence, P.S., United States.
Respondent is Domains Secured, LLC of Parma, Ohio, United States.
2. The Domain Name and Registrar
The disputed domain name <mydogpile.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 12, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day, the Registrar 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 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 Respondent of the Complaint, and the proceedings commenced on September 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2011.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on October 17, 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.
4. Factual Background
Complainant InfoSpace, Inc. provides search engine services and develops Internet search tools and technologies. It owns numerous United States trademark registrations for DOGPILE, as well as registrations in Europe and Canada, including United States Registration No. 2,456,655 for DOGPILE (Registered June 5, 2001) (“the DOGPILE Mark” or “the Mark”). That registration became incontestable on September 6, 2006. Complainant has continuously used the DOGPILE Mark in the United States and worldwide in connection with its business of providing search engine products and services, and through its wholly owned subsidiary Go2Net, Inc., since 1996. Complainant also owns the domain names <dogpile.com> since 1996 and <dogpile.net> since 1998.
Complainant sent Respondent a cease and desist letter on June 22, 2011 seeking Respondent’s cessation of the Domain Name and Respondent’s transfer of the Domain Name to Complainant. At that time the Domain Name was directing the public to a website featuring various active, and likely sponsored, links to other websites including information on dog and pet health, pet insurance, dog breeds, pet ownership and other pet and dog related topics. After Complainant sent its cease and desist letter, Respondent’s website was inactivated and currently does not resolve to an active webpage. Respondent never responded to Complainant’s cease and desist letter.
In the process of notifying Respondent of the Complaint and the commencement of this proceeding, the Center received correspondence from Patrick Schaefer on September 16, 2011, who identified himself as “the Quality Compliance Agent for Brain Host, the Hosting Company/Reseller” for the Domain Name. In correspondence between the Center and Mr. Schaefer on September 15, 2011, Mr. Schaefer indicated that “[t]he domain in questions, [sic] mydogpile.com, was deactivated and suspended as of 6/23/2011. The domain is no longer visible on the internet and all files/databases related to the domain have been erased.”
On October 7, 2011 (after the Center sent its Notification of Respondent Default on October 6, 2011), correspondence from Mr. Schaefer to the Center indicated that because the Domain Name owner had not contacted him/his company, “we have placed a request for the deletion of the domain <mydogpile.com>, at the registrar level.” On that same day, the Center wrote to Mr. Schaefer and the Registrar to confirm in accordance with ICANN’s Expired Domain Deletion Policy (paragraph 3.75.7) that the Domain Name will be placed in a “Registrar LOCK status” and that the Domain Name will remain in such status until these proceedings are concluded. The Center also inquired whether the parties are required to take any action to keep the Domain Name under “Registrar LOCK status” so that these proceedings can continue as required. On October 7, 2011, the Registrar responded to this inquiry stating:
The domain will remain LOCKED until the UDRP proceedings are concluded or terminated. The domain will also remain locked after expiration should the UDRP process extend beyond the expiration date. However, should the domain go into redemption status after its expiration, the domain may be deleted if the domain is not renewed.
Prior to expiration, no action is necessary to maintain the lock on the domain. Should the domain expire prior to completion of the UDRP process, the complainant has the option to renew the domain to prevent deletion should they wish to do so. eNom will be more than happy to assist with this and provide instructions to the complainant should the UDRP process extend beyond the domain’s expiration date.
5. Parties’ Contentions
The Domain Name wholly incorporates the DOGPILE Mark and it is substantially identical to and/or confusingly similar with it and Complainant’s domain names. The addition of the prefix “my” does not detract from the fact that the dominant feature of the Domain Name is “dogpile.”
Complainant used the Domain Name fifteen years (since 1996) before Respondent registered it on May 6, 2011. Respondent has no relationship to Complainant and is not authorized to use the DOGPILE Mark or any variation of it. To the best of Complainant’s knowledge, Respondent does not own any registered or common law marks containing the DOGPILE Mark, nor has Respondent made any legitimate use of, or entered into any preparations to use, the Domain Name in connection with a bona fide (non-infringing) offering of goods or services. It appears that Respondent was using the Domain Name to divert Internet users to its website to obtain click through revenue from the sponsored links on its website. Furthermore, Respondent has never been known by or operated a business under the DOGPILE Mark. Inactivating the website is further support that Respondent is not engaged in a bona fide offering of goods or services.
Respondent registered and was using the Domain Name for the purpose of benefiting commercially from the confusion between the Domain Name and the DOGPILE Mark. Further, Respondent’s use of a privacy service here is additional evidence of bad faith registration. And, under the circumstances here, Respondent’s bad faith registration followed by inaction (after the cease and desist letter) in using the Domain Name constitutes bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondent has defaulted. Paragraph 14 of the Rules provides that the Panel may draw such inferences from a default as it considers appropriate. Accordingly, the Panel infers from Respondent’s silence that Complainant’s allegations are, in fact, correct. Nonetheless, paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds Complainant has rights in the DOGPILE Mark. It is undisputed that Complainant has been using the Mark since 1996 and it has registered the Mark with the United States Patent and Trademark Office. Thus, the Mark is entitled to a presumption of validity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Decision Overview 2.0”), at paragraph 1.1 (“If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.”).
The Panel also finds that the Domain Name is confusingly similar to the DOGPILE Mark. The Domain Name <mydogpile.com> incorporates in its entirety Complainant’s DOGPILE Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (“[W]hen a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.”). Adding the generic term “my” to Complainant’s DOGPILE Mark does not alleviate the confusion. See La Quinta Worldwide L.L.C. v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-1442 (finding that Respondent’s domain name, which incorporates Complainant’s registered mark with the addition of the generic term “my” as prefix and the “.com” designation, is confusingly similar to the Complainant’s registered trademarks); Farouk Systems, Inc. v. a cheng, 0594 waimaoluntan, WIPO Case No. 2010-0026 (finding addition of “generic, dictionary term ‘all’ in the disputed domain name does not prevent confusing similarity” to the Complainant’s mark). In Ferrero S.p.A. v. Mr. Jean-François Legendre, WIPO Case No. D2000-1534, the panel found that:
The combination of an existing name (i.e. a trademark) with a possessive pronoun (such as “my” or “your”) does not basically change the significance of the existing name as such in the combined expression. The added prefix “my” has, both grammatically and phonetically, an inferior distinctive importance compared to the principal component of the word, and the term “my’s-Nutella” is clearly dominated by its principal component “Nutella.”
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that it has no relationship with Respondent and that it did not authorize Respondent to use the DOGPILE Mark. Complainant also asserts that Respondent cannot have any legitimate interests or rights in the Domain Name because Respondent adopted and began using the Domain Name fifteen years after Complainant had established rights in the DOGPILE Mark and because Respondent is using the Mark to generate click-through revenue. Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has established element (ii) above.
C. Registered and Used in Bad Faith
By not submitting a Response, Respondent has failed to invoke any circumstances that could demonstrate Respondent did not register and use the Domain Name in bad faith. Furthermore, as Complainant has shown, it is unlikely that Respondent was unaware of the DOGPILE Mark when it registered the Domain Name considering Complainant’s longstanding use of the Mark before Respondent registered the Domain Name.
The Panel concludes that by using a confusingly similar Domain Name, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s DOGPILE Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893. Further, the Panel finds bad faith use based on the facts and circumstances here. Respondent ignored Complainant’s cease and desist letter, yet after receiving notice from the Center announcing the commencement of this proceeding, the Center was informed by the “Quality Compliance Agent” for the website hosting/reseller that the Domain Name was deactivated and suspended as of June 23, 2011, that the domain is no longer visible on the Internet, and that all files/databases related to the Domain Name have been erased. Respondent, however, still has not transferred the Domain Name to Complainant. And, according to the Quality Compliance Agent, Respondent has not even responded to the Registrar in response to some communications between them.
In all events, the Panel therefore holds that Complainant has established element (iii) above.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mydogpile.com> be transferred to Complainant.
Harrie R. Samaras
Dated: October 31, 2011