WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
InfoSpace, Inc. v. Double Down Magazine
Case No. D2000-1474
1. The Parties
The Complainant is InfoSpace, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Redmond, Washington, USA.
The Respondent is Double Down Magazine, with address in Chicago, Illinois, USA.
2. The Domain Names and Registrars
The disputed domain names are "iinfospace.com" and "infospacee.com".
The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on October 28, 2000, and by courier mail, received by WIPO on October 30, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On November 7, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrarís Response received by WIPO on November 9, 2000).
(b) On November 15, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) On December 7, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail, telefax and courier mail.
(d) On December 29, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On December 29, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On January 5, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by January 19, 2000. On, January 5, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of service mark registrations for the term "INFOSPACE" on the Principal Register at the U.S. Patent and Trademark Office (USPTO), Reg. No. 2,206, 397, dated December 1, 1998, in International Class 42, covering "computer services, namely providing search engines for obtaining data on a global computer network" and Reg. No. 2,121,439, dated December 16, 1997, in International Classes 9 and 42, covering computer software (as further specified) and consulting, design and software development services (as further specified). Complainant is also the holder of a service mark registration for the stylized term "INFOSPACE" on the Principal Register at the USPTO, Reg. No. 2,384,606, dated September 12, 2000, in International Class 35, covering computer services, namely providing on-line directory services (as further specified). (Complaint, paragraph 12 and Annexes D-F). These registrations are valid and subsisting.
Complainant has used the "INFOSPACE" mark in commerce since at least December 16, 1997, based on the earliest of the dates of registration of that mark, and without prejudice to whether Complainant may hold earlier-arising rights in the mark.
Complainant has additionally applied for registration for the "INFOSPACE" mark, both standing alone and in combination with other terms, in the United States and the European Union (Complaint, Annexes H-K).
Complainant has registered the domain name "infospace.com" and operates a website with the Internet address "www.infospace.com". The record of such registration was created on May 28, 1996, (id., paragraph 12 and Annex L).
Complainantís service mark and domain name are well known among Internet users, with Complainantís website receiving a high volume of Internet traffic (id., paragraph 12).
According to the registrarís verification response to WIPO, dated November 9, 2000, "Double Down Magazine" is the listed registrant of the domain names "iinfospace.com" and "infospacee.com". According to Network Solutionsí WHOIS database records furnished by Complainant, the records for the disputed domain names each were created on February 25, 2000, and were last updated on February 25, 2000, (Complaint, Annex A).
According to printouts of web pages furnished by Complainant, as of October 24, 2000, each of the disputed domain names resolved to an identical website identified on the home page as "Winhourly.com". This website offers information concerning on-line gambling and, inter alia, solicits registration for a one million-dollar prize drawing.
On July 12, 2000, and August 7, 2000, Complainant (through its counsel) sent via Federal Express to Respondent a cease and desist and transfer demand with respect to the disputed domain names (Complaint, Annexes P & Q).
By letter of August 14, 2000, Respondent replied to Complainantís demand, indicating that it would either sell the rights to use the disputed domain names to Complainant, or continue to use them (id., Annex R).
In a telephone conversation on October 25, 2000, initiated by Complainant in response to Respondentís letter, Respondent offered to sell the disputed domain names to Complainant for $5,000 each. Complainant rejected the offer and countered with an offer to pay Respondentís cost of registration, transfer and hosting to date. Respondent rejected Complainantís counter-offer. (id., Annex S, Affidavit of Daiva K. Tautvydas, counsel for Complainant, dated October 27, 2000).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).
5. Partiesí Contentions
Complainant states that it is the holder of valid service mark registrations for the term "INFOSPACE" and has used that mark in commerce since at least May 28, 1996, (see Factual Background, supra).
Complainant states that its mark and services are famous among users of the Internet as evidenced, inter alia, by the high volume of traffic at its website.
Complainant alleges that the disputed domain names are confusingly similar to its service mark, incorporating common typographical errors that would be made by Internet users when attempting to enter its web address in an Internet browser. Complainant alleges that Internet users who inadvertently reach Respondentís website are likely to mistakenly assume that it is affiliated with Complainant because Complainant provides a broad range of consumer information services, and Respondentís website provides consumer information services.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names since Respondent is not affiliated with Complainant and has not been authorized to use its service mark. Complainant alleges that Respondent has not been commonly known by the disputed domain names.
Complainant states that Respondent has registered and is using the disputed domain names in bad faith. Complainant indicates that Respondent is deliberately using the disputed domain names to divert Internet users to its website by creating confusion as to its sponsorship by or affiliation with Complainant, and that Respondent registered the disputed domain names with the primary intention to sell them to Complainant for an in excess amount of its out of pocket expenses incurred in connection with the names.
Complainant requests that the Panel direct the registrar to transfer the disputed domain names to it.
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond
(see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., paragraph 15(a)).
Complainant is the holder of service mark registrations for the term "INFOSPACE" in the United States and is using that mark in commerce (see Factual Background, supra). Complainantís registration of the "INFOSPACE" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 2) The Panel determines that Complainant has rights in the service mark "INFOSPACE". Based on the December 16, 1997, date of the earliest registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the "INFOSPACE" mark arose prior to Respondentís registration, on February 25, 2000, of the disputed domain names.
Complainantís "INFOSPACE" mark is well known to users of the Internet as identifying the source of directory and other services.
Respondent has registered the domain names "iinfopace.com" and "infospacee.com". Each of these domain names (1) incorporates a minimal spelling variation of Complainantís "INFOSPACE" mark, and (2) adds the generic top-level domain (gTLD) ".com".
The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain names to "INFOSPACE" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 3)
The terms "iinfopace.com" and "infospacee.com" are similar to "INFOSPACE" in their visual impression. An Internet user or consumer viewing the disputed domain names is likely to confuse either one of them with the term "INFOSPACE" (or "infospace.com"). Complainantís "INFOSPACE" mark is strong among Internet users, and this factor contributes to the likelihood of confusion. (Footnote 4) Moreover, Respondent appears to have employed minor misspellings of Complainantís mark to take bad faith advantage of typographical errors made by Internet users while attempting to enter Complainantís Internet address on their web browsers. Bad faith in selecting a domain name may contribute to a finding of confusing similarity. (Footnote 5) The Panel determines that the disputed domain names "iinfopace.com" and "infospacee.com" are confusingly similar to "INFOSPACE" in the sense of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
Respondentís only demonstrated use of the disputed domain names has been in connection with redirecting Internet users to websites unrelated to Complainant, and offering them for sale to Complainant. Such use is hereinafter determined to be in bad faith. Bad faith use of domain names does not establish rights or legitimate interests in the names in the sense of paragraph 4(a)(ii) of the Policy.
Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are: (1) that the domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (id., paragraph 4(b)(i)); and (2) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).
Respondent has registered two domain names that Internet users are likely to employ inadvertently as they misspell Complainantís mark and domain name when attempting to address Complainantís website. Respondentís choice of misspelled versions of Complainantís mark and domain name was deliberate. This is evidenced by the well-known nature of Complainantís mark, and by the close relationship between the information services provided by Complainant and those provided by Respondent. Respondent has intentionally sought to use Complainantís mark to confuse consumers as to sponsorship of, or location of a service on, a website that Respondent operates for commercial gain. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent also offered to sell the disputed domain names to Complainant for valuable consideration in excess of its out-of-pocket expenses directly related to the names. In light of the well-known character of Complainantís mark, Respondent should have anticipated that Complainant would approach it to demand that it cease using the disputed domain names. Respondentís registration and use of the disputed domain names was undertaken with an intention to profit from sale of the domain names to Complainant, even though perhaps as an alternative to its misleading use of the names. In light of the non-exclusive character of the list of bad faith factors set out in paragraph 4(b) of the Policy, the Panel finds that Respondent registered and used the domain names in bad faith as evidenced by its offer to sell them to Complainant for a price substantially in excess of its out-of pocket expenses in connection with the names.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain names "iinfopace.com" and "infospacee.com" to the Complainant.
Based on its finding that the Respondent, Double Down Magazine, has engaged in abusive registration of the domain names "iinfopace.com" and "infospacee.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "iinfopace.com" and "infospacee.com" be transferred to the Complainant, InfoSpace, Inc.
Frederick M. Abbott
Dated: January 18, 2001
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
4. See Brookfield, id., 174 F.3d 1036, 1053-61 (9th Cir. 1999), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
5. Brookfield, id. at 1059 (9th Cir. 1999), quoted and discussed in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, decided July 20, 2000.