WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Movoto LLC v. Domain Name Proxy, LLC and Navigation Catalyst Systems, Inc.

Case No. D2010-1383

1. The Parties

The Complainant is Movoto LLC of San Mateo, California, United States of America, represented by Jackson Walker, LLP, United States of America.

The Respondents are Domain Name Proxy, LLC of Scottsdale, Arizona, United States of America and Navigation Catalyst Systems, Inc. of El Segundo, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <motovo.com> is registered with Basic Fusion, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2010. On August 17, 2010, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the disputed domain name. On August 17, 2010, Basic Fusion, Inc. 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 August 19, 2010 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 August 20, 2010. On August 24, 2010 the Center sent an email communication to the Complainant requesting a confirmation that a copy of the Complaint had been transmitted to the Respondents. The Complainant filed a second amended Complaint and provided the Center with such confirmation on August 26, 2010.

The Center verified that the Complaint and the Amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on August 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 17, 2010.

The Center appointed Angela Fox as the sole panelist in this matter on September 28, 2010. 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

The Complainant is a provider of online real estate services, including real estate listings, real estate management and brokerage services, neighborhood profiles and real estate market statistics. The Complainant is a licensed real estate broker in 31 states and has contractual agreements with more than 2,100 licensed real estate brokers and agents across the United States, and with substantially all of the major United States real estate brokerages.

The Complainant began using the MOVOTO name and trademark on or around January 27, 2006. On that date it registered the domain name <movoto.com>, which it uses to provide its online services. It officially launched the “www.movoto.com” website on March 3, 2006.

The Complainant owns two United States federal trademark registrations for MOVOTO, under Nos. 3,456,205, filed on September 25, 2006 and 3,422,075, filed on August 16, 2007. It also owns a total of 15 domain names including the word “movoto”, which it uses in respect of its business under the MOVOTO trademark.

According to the Complaint, the Complainant’s website at “www.movoto.com” is used by more than 1,600,000 people each month. A copy of a Google search for “movoto” annexed to the Complaint shows the Complainant’s “www.movoto.com” website as the first hit disclosed, with all of the first 68 search results relating to the Complainant. The Complaint states that since January 1, 2010 alone, the Complainant has had at least 459,000 visits from users who searched Google for phrases that include “movoto”, according to the Complainant’s website analytics software.

As indicated above, the Complainant launched its “www.movoto.com” website on March 3, 2006. On March 4, 2006, a front-page article about the Complainant and its Movoto services appeared in the San Jose Mercury News, a copy of which was annexed to the Complaint. Four days later, on March 8, 2006, the disputed domain name was registered in the name of Domain Name Proxy, LLC.

The disputed domain name resolves to a pay-per-click parking page featuring links to third-party websites, primarily to competitors of the Complainant, with titles such as “For Sale by Owner”, “Home for Sale,” “Real Estate Agent,” “Home Owner” and “New Home Owner List”.

During the course of these proceedings the Registrar indicated that the true owner of the disputed domain name is in fact Navigation Catalyst Systems, Inc. Although the Respondents have different addresses, they have been identified in past proceedings as being linked (see Cricket Communications, Inc. v. Domain Name Proxy, LLC aka Navigation Catalyst Systems, Inc., NAF Claim No. FA1324492).

Domain Name Proxy, LLC has been a respondent in one other known set of UDRP proceedings, but Navigation Catalyst Systems, Inc. has been a respondent on at least 15 occasions. These cases have resulted in numerous adverse findings and the transfer of at least 206 disputed domain names. Both Navigation Catalyst Systems, Inc. and the Registrar in this case have, moreover, been enjoined by the United States District Court for the Central District of California for “domaining” and “domain tasting” (see Verizon California, Inc. v. Navigation Catalyst Systems, 2008 WL 2651163, CD Cal June 30, 2008), in a case involving the unauthorised registration of 1,392 domain names incorporating trademarks of the telecommunications company, Verizon.

The Complaint also noted that in another case brought by Weather Underground, Inc. on February 27, 2009 against Navigation Catalyst Systems, Inc., the Registrar, and other related companies before the United States District Court for the Eastern District of Michigan, it was disclosed that Navigation Catalyst Systems, Inc. uses a software program to identify high traffic websites and registers domain names identical to the domain names used for those high-traffic websites apart from the presence of minor, common typographical errors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its registered MOVOTO trademark. The Complainant argues that the disputed domain name differs only in the transposition of the letters “v” and “t” and is, in essence, “typosquatting”, intended to take advantage of and divert Internet users typing the Complainant’s website name into browser bars, in order to profit from pay-per-click (“PPC”) advertising revenue. The Complainant states that it has received queries from Internet users who mistakenly believed that the website linked to the disputed domain name was that of, or was in some way related to, the Complainant.

The Complainant moreover contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant avers that the Respondents have no registered trademark rights in the word “motovo”, are not commonly known by the disputed domain name, and have never used, nor made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services, nor have they made any legitimate noncommercial or fair use of the disputed domain name. The Complainant has not authorized the Respondents to use or register domain names incorporating “motovo”, nor indeed “movoto”.

Finally, the Complainant asserts that the disputed domain name was registered and has been used in bad faith. The Complainant notes Navigation Catalyst Systems Inc.’s record as a repeat cybersquatter who has been judicially censured for involvement in domain name tasting and in the unauthorized registration of 1,392 domain names incorporating trademarks of the telecommunications corporation, Verizon. The Complainant further points to the evidence in the other proceedings referred to above that Navigation Catalyst Systems, Inc. engages in “typosquatting” activities.

The Complainant contends that the Respondents have used the disputed domain name intentionally to attract Internet users, for commercial gain, to the Respondents’ PPC landing site by creating a likelihood of confusion with the Complainant’s MOVOTO trademark. Moreover, the Complainant avers that the Respondents have intentionally disrupted the Complainant’s business by diverting Internet users to competitors of the Complainant.

B. Respondents

The Respondents did not reply to the Complainant’s contentions and are in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondents’ default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved that it owns registered trademark rights in MOVOTO in the United States. The earliest of the two registrations documented was filed about six months after the disputed domain name was registered. However, paragraph 4(a)(i) of the Policy does not require a complainant to prove that its trademark rights pre-date registration of the disputed domain name (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 and AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527). That issue is relevant instead to the assessment of whether a respondent registered a domain name in bad faith under paragraph 4(a)(iii), which is considered below.

The disputed domain name is clearly similar to MOVOTO, differing only in the transposition of the letters “v” and “t” and the addition of the non-distinctive domain name suffix “.com”. Moreover, “Movoto” is an invented word which has no meaning in English, and “motovo” is a predictable misspelling by those remembering the Complainant’s trademark only imperfectly or by those typing it quickly into a browser bar. The disputed domain name is therefore inherently likely to attract Internet users looking for the Complainant’s site. Many Internet users encountering the disputed domain name may not notice the minor differences between the disputed domain name and the Complainant’s MOVOTO trademark, and may well assume that the linked website is that of, or is in some way related to, the Complainant, particularly given the presence of real estate-related links.

The Panel notes that the Complainant claims to have received queries from Internet users who mistakenly believed that the website linked to the disputed domain name was that of, or was in some way related to, the Complainant. No details of these alleged instances of confusion were provided with the Complaint. However, the Respondents have made no effort to deny that the disputed domain name is confusingly similar to the Complainant’s trademark nor that actual confusion has taken place, and given the clear similarities as outlined above the Panel agrees that there is indeed scope for such confusion.

The Respondents’ registration of the disputed domain name appears to constitute “typosquatting,” namely the registration of domain names that consist of common or predictable misspellings of third-party trademarks in order to attract Internet traffic intended for a complainant (see inter alia Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; and Telstra Corporation. Ltd v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2000-1293).

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered MOVOTO trademark.

B. Rights or Legitimate Interests

The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognised that the information needed to prove such a right or legitimate interest is normally in the possession of the respondent.

In order to avoid requiring the complainant to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the respondent carries the burden of showing that it does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Complainant has put forward a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name. There is nothing on the record to indicate that the Respondents might enjoy such a right or legitimate interest, and they have not attempted to refute the Complainant’s assertions.

The Respondents’ use of the disputed domain name in order to attract Internet users to a PPC landing page offering links to third-party websites in the real estate field, including to websites of the Complainant’s competitors, does not give rise to a right or legitimate interest in the disputed domain name. The word “motovo” has no descriptive meaning and the value of the disputed domain name for the Respondents’ PPC landing page is based entirely on its near-identity with the Complainant’s MOVOTO trademark and the inherent likelihood that it will attract Internet users seeking the Complainant and its site. Other panels have regarded such circumstances as evidence of cybersquatting behaviour; the Panel notes in particular the observations of the panel in a case involving one of the Respondents, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141: “If the links on a given landing page are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally… constitute abusive cybersquatting” (see, similarly, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; and Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353).

The Respondents’ use of the disputed domain name in order to link to a PPC landing site offering links to third-party commercial websites, from which the Respondents appear to derive click-through revenue, is manifestly not a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

At the time the disputed domain name was registered on March 8, 2006, the Complainant had only been trading under its MOVOTO trademark for a little over a month, and had only just launched its “www.movoto.com” website five days earlier, on March 3, 2006. However, the launch was accompanied by front-page newspaper coverage in California, where Navigation Catalyst Systems, Inc. is based, on March 4, 2006.

The publicity afforded by the newspaper coverage may well have come to the notice of at least Navigation Catalyst Systems, Inc. Being in default, the Respondents are silent on that point. Common experience suggests, however, that the publicity is likely to have encouraged the flow of traffic to the Complainant’s “www.movoto.com” website, whose real estate and neighborhood profiling services appeal to a large cross-section of consumers interested in buying new homes. The widespread appeal of the Complainant’s “www.movoto.com” website as a source of information on new homes and neighborhoods is apparent from the fact that the Complainant’s website is now used by 1.6 million people every month, and from the high number of Google searches made for “movoto”, as evidenced by the materials annexed to the Complaint.

The Complainant avers, and the Respondents do not deny, that part of Navigation Catalyst Systems, Inc.’s business model is to identify high-traffic websites and to capitalize on their popularity by registering confusingly similar domain names, often of a “typosquatting” nature, with a view to attracting Internet users and generating pay-per-click income from links to third-party commercial websites operating in the same field as the original website owners, or in related areas. The Respondents’ conduct in registering the disputed domain name just five days after the Complainant’s well-publicized launch, and their use of the disputed domain name to host real estate-related links, gives rise to the inference that their actions were deliberately calculated to attract Internet users seeking the Complainant but remembering, or typing, the Complainant’s MOVOTO trademark incorrectly, with a view to gaining commercially from click-through income. Neither Respondent has made any effort to deny this.

Under paragraph 4(b)(iv) of the Policy, the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with a 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 it.

In this case, there is evidence that the Respondents deliberately set out to derive PPC revenue by creating a likelihood of confusion with the Complainant's MOVOTO trademark. They adopted a confusingly similar domain name which is a common and predictable misspelling of the Complainant’s trademark and have used it to host PPC links to third-party websites offering services in the real estate sector, the Complainant's own field of activity. Such conduct is inherently misleading, and the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is prima facie evidence of bad faith (see inter alia American Automobile Association, Inc. v. Texas International Property Associates, supra; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., supra: “Because Respondent's many domain names resolve to landing pages at which competitive services are offered, Complainant has established that Respondent's use of these domain names is in bad faith. The domain names appear designed to attract Internet users who are looking for Complainant's MYXER TONES services, appear to cause confusion with Complainant's marks and websites, appear to disrupt Complainant's business by diverting consumers away from Complainant's websites, and do all of these things for commercial gain because Respondent profits from the PPC revenue generated by these websites”; see also inter alia Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).

In addition, the Panel notes that both Respondents have been involved in other UDRP cases resulting in findings of bad faith (one prior case in respect of Domain Name Proxy, LLC and at least 15 prior cases involving Navigation Catalyst Systems, Inc.). The prior cases involving Navigation Catalyst Systems, Inc. show that this company has regularly registered large numbers of domain names including third-party trademarks or misspellings and other variants of them (see inter alia The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483 involving 18 domain names; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., supra involving 35 domain names). In total the UDRP cases involving the Respondents have resulted in the transfer of at least 206 disputed domain names.

The Complainant has shown in evidence that Navigation Catalyst Systems, Inc. has been enjoined by the United States District Court for the Central District of California for “domaining” and “domain tasting” in a case involving the unauthorised registration of 1,392 domain names incorporating third-party trademarks. The Complainant has shown evidence, moreover, that as part of its business Navigation Catalyst Systems, Inc. routinely identifies high-traffic websites and registers domain names that are closely similar misspellings or variants of the domain names used for such sites. The prior UDRP decisions involving Navigation Catalyst Systems, Inc. appear to reflect such conduct.

In the Panel’s view, all these factors lead to the irresistible inference that the Respondents registered and have used the disputed domain name in bad faith. The Respondents have done nothing to counter that inference.

The Panel finds that the Respondents registered and have used the disputed domain name in bad faith.

7. Decision

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, <motovo.com>, be transferred to the Complainant.

Angela Fox
Sole Panelist
Dated: October 12, 2010