WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ThinkGeek, Inc v. Michael Andrew Lubieniecki
Case No. DAU2011-0003
1. The Parties
The Complainant is ThinkGeek, Inc of Fairfax, Virginia, United States of America, represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is Michael Andrew Lubieniecki of Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <thinkgeek.com.au> is registered with Distribute.IT Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2011. On January 24, 2011, the Center transmitted by email to Distribute.IT Pty Ltd a request for registrar verification in connection with the disputed domain name. On January 24, 2011, Distribute.IT Pty Ltd transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on January 28, 2011. The Center verified that the Complaint and the Amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2011. The Response was filed with the Center on February 19, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on February 24, 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 March 11, 2011, under paragraphs 10 and 12 of the Rules, the Panel extended the due date for decision until March 14, 2011.
4. Factual Background
The disputed domain name has a “creation date” of July 23, 2007, as confirmed to the Center by Distribute.IT Pty Ltd (“the Registrar”).
The Complainant is the owner of a mark registered in Australia for THINK GEEK. That mark was registered on April 16, 2010. The Complainant’s mark is registered in Class 35, in relation to retailing, including online retail services, online retail services targeted to the computer community and featuring a variety of items. The Complainant is also the owner of a mark registered in the United States for THINK GEEK. That mark was registered on February 5, 2002. In addition, the Complainant claims common law rights in that mark.
The Complainant is a wholly owned subsidiary of Geeknet, Inc. Geeknet Inc. is the parent company of a number of other companies including the Complainant (“Geeknet Group”). Between 1995 and 2010, Geeknet Inc. acquired and developed an online network of media and e-commerce websites, including “thinkgeek.com”. At present, Geeknet Group services over 45 million users per month. The Complainant’s e-commerce site provides the computer/online community with technology-themed retail products sold at “thinkgeek.com”. The Complainant launched its website at this address in 1999 and has continued to sell products via that website.
At the date of this decision, the disputed domain name reverts to a website advertising various products for sale. At the top of the home page for that site, various links are displayed, including “Announcements”, “Cameras”, “Cellphones”, “Desktops” and “Displays”. The website also includes a series of blog questions and answers. The case file also includes a screen-shot of the Respondent’s website on January 31, 2011. At that date, the homepage for that website included inter alia a simple banner headline with a cartoon graphic of a businesswoman, and the statements “ThinkGeek.com.au The Australian Geek HQ”. Following that banner is a simple alphabetical dot list of links to matters such as “Announcements”, “Cameras”, “Cellphones”, and “Desktops” among others.
5. Parties’ Contentions
The Complainant says that the disputed domain name is substantially identical to its registered mark and is, therefore, also confusingly similar.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that, as the Australian Business Number listed for the Respondent does not relate to any business or company name from which the disputed domain name can be derived, the Respondent was not eligible to register it. In any event, the registration of a business name per se does not indicate that the Respondent has a right or legitimate interest in it. There is no indication of any other basis on which the Respondent could claim a legitimate proprietary interest.
The Complainant says that the Respondent’s website purports to provide essentially the same or very similar services as the Complainant’s website. The Respondent’s website provides technology focused news and offers online retail services targeted to the computer community consisting of a “Store” page links to sub-pages entitled “Smart Phones and accessories” and “Gadgets, Toys and Tech Awesomeness”. The website prominently displays the name Think Geek Australia, which erroneously infers that it is operated by the Australian branch of ThinkGeek. (The Complainant provides evidence of a screenshot taken on November 10, 2010). The Complainant sent a “cease and desist” letter dated June 23, 2010 to the Respondent, however the Respondent did not reply.
In relation to bad faith, the Complainant says that it is inconceivable that the Respondent was unaware of the Complainant’s rights in its THINK GEEK mark. Given that the Respondent’s website provides technology news, including news from the United States where the Complainant is based, the Respondent must have known about the Complainant and its mark. The Complainant says that the Respondent’s registration of the disputed domain name is an infringement of its mark; an attempt to trade off the reputation and goodwill in the Complainant’s mark; and calculated to deceive the public. The Complainant also says that the Respondent’s activity is in breach of certain Australian domestic legislation, including the Fair Trading Act 1987 (NSW).
The Respondent denies that THINKGEEK is a trademark in the United States or Australia. The Respondent refers to a trademark application for ICADE filed by the Complainant on September 11, 2010. The Respondent also denies that the Complainant is registered as an Australian company according to the Australian Government Business name register.
In relation to its rights or legitimate interests, the Respondent claims that the disputed domain name is legitimate and that the fact that it is similar to the Complainant’s mark is of no matter “as there is no similarity in purpose”. The Respondent’s website provides syndicated news and reviews of technology whereas the Complainant’s website is solely an electronic commerce site with the purpose of selling products. The Respondent says that there is no competition between these sites and that the Complainant therefore has no claim.
In relation to bad faith, the Respondent says that he registered the disputed domain name in good faith and is being used in a completely different manner than the Complainant’s. The Respondent says that the definition of “bad faith” implies malice or ill will. The Respondent says that there is no similarity of content or design between his website and the Complainant’s, and that he has not attempted to deceive or act fraudulently.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, 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 in bad faith or was subsequently used in bad faith.
These issues are discussed below. The Panel notes that the Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy, as have both the Complainant and the Respondent.
A. Identical or Confusingly Similar
The Complainant has registered rights in the mark THINK GEEK, both in Australia (from 2010) and in the United States of America (from 2000) and the Panel finds that the disputed domain name is relevantly identical to that mark. Being a registered mark, it is entitled to a presumption of distinctiveness. It is well established that, for the purpose of determining whether a domain name is identical or confusingly similar, the ccTLD extension is to be disregarded. Disregarding that extension, there is no material difference between the textual elements of the Complainant’s mark and the disputed domain name.
The Respondent refers to an entirely unrelated trademark application made by the Complainant for the mark ICADE. That application has no relevance to the Complainant’s case under this ground. Under paragraph 4(a)(i) of the Policy, the Complainant need only establish that it has rights in a mark (which it has done in relation to THINK GEEK) and that the disputed domain name is identical or confusingly similar to that mark (which the Complainant has also done). For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second thing which the Complainant must establish is that the Respondent has no rights or legitimate interests in the disputed domain name. Having recognized the difficulty of a requirement to conclusively prove a negative, prior UDRP panels have stated the principle that, once a complainant establishes a prima facie case against the respondent under this ground, the burden shifts to the respondent to rebut it. The overall burden of proof remains with the complainant. See e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
In this case, the Complainant has established a prima facie case against the Respondent. The Complainant has provided evidence that the Respondent is the registrant of an Australian Business Number and that this does not relate to any business or company name from which the disputed domain name can be derived. The Complainant claims that there is no indication of any other basis on which the Respondent could claim a right or legitimate interest in the disputed domain name.
Against this, the Respondent argues that he has rights and legitimate interests because there is no “similarity in purpose” with the Complainant’s existing website. However, even if this were true (and the Panel does not make such a finding), whether the Respondent’s website has a different purpose than a Complainant’s does not help the Respondent establish rights or legitimate interests per se. Fundamentally, paragraph 4(a)(ii) relates to the Respondent’s rights or legitimate interests. In this Panel’s view, this means that there must be some objective connection between the Respondent or his business and the disputed domain name. The relative differences between the Respondent’s website and the Complainant’s do nothing to demonstrate an independent connection between the Respondent and the disputed domain name.
In this case, the Respondent gives no evidence or explanation as to his business. The Respondent only argues that the nature of his website is different to that of the Complainant’s. The Respondent provides no evidence of his own business or other connection with the disputed domain name, from which it might be determined that he has rights or legitimate interests.
It appears that the Respondent’s website has contained a changing miscellany of links (as shown by changes between homepages evidenced by the Complainant, those evidenced in the case file, and the appearance of the website visited by the Panel at the date of this decision). Currently the Respondent’s website appears to the Panel to be a “parking” page. It is now well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests. See e.g. Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404.
There is no other evidence in the case file which would support a finding that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent provided no evidence that he has made a bona fide offering of goods or services; that the Respondent is commonly known by the disputed domain name; or that he is making a legitimate noncommercial or fair use of the disputed domain name.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
The Panel also finds that the Respondent has registered the disputed domain name in bad faith. The Respondent provides little evidence to the contrary, beyond a denial that he is using the disputed domain name in bad faith and a statement that the purpose of his website is different to that of the Complainant’s existing website.
As noted above, the Complainant argues that the Respondent has registered the disputed domain name to deceive the public and trade on the Complainant’s goodwill. Relevantly, this form of bad faith is described in paragraph 4(b)(iv) of the Policy. That paragraph provides that one circumstance of bad faith is where a respondent attempts to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
The Complainant has registered a mark entitled to a presumption of distinctiveness. The Complainant provided evidence that it is reasonably well-known. There is no evidence in the case file that the term “thinkgeek” (when used as a conjoined term) has a legitimate connection other than with the Complainant’s business. Contrary to the suggestion by the Respondent, the Panel also considers that there are some similarities between the nature of the Complainant’s website and that of the Respondent’s. In particular, those websites offer for sale or provide links to a variety of technology-related products. In these circumstances, the Panel considers that there is a reasonable inference that the Respondent was aware of the Complainant and its mark when he registered the disputed domain name. The Respondent’s website makes commercial offerings, and links to commercial products, and because the Respondent otherwise provided no evidence of his own legitimate business relating to the disputed domain name. The Panel therefore concludes that the Respondent registered the disputed domain name because of its association with the Complainant’s mark.
Furthermore, the Respondent has used the disputed domain name to direct traffic to a “parking” website, containing links to websites selling various products, including some which compete with those sole by the Complainant. It is now well-established that the use of a parking page in this manner is strong 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. This does not mean that the operation of a “parking” site is always a sign of bad faith, in circumstances where a respondent uses it to profit from its descriptive, common meaning. (See e.g. the cases cited in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.) But, for the reasons outlined above, the Panel has found that the domain name is likely to have been registered because of its connection with the Complainant’s mark.
The Panel therefore finds that the Complainant has established its case under 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, <thinkgeek.com.au>, be transferred to the Complainant.
James A. Barker
Dated: March 14, 2011