WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Overture Services, Inc. v. Joshuathan Investments, Inc.
Case No. D2003-0546
1. The Parties
The Complainant is Overture Services, Inc., of United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.
The Respondent is Joshuathan Investments, Inc., Belize City, of Belize.
2. The Domain Name and Registrar
The disputed domain name <oberture.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2003. On July 11, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On July 11, 2003, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. However, the Respondent was identified by the Registrar as (This Domain Is For Sale) Joshuathan Investments, Inc. and the name of the administrative contact is This domain name Is For Sale: usa5551212@Yahoo.com (This Domain Name Is For Sale). The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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), on July 15, 2003, the Center formally notified the Respondent of the Complaint by email with copy of the Notification and of the Complaint attached and attempted to deliver a hard copy at the name and address disclosed by the Registrar. The Respondent refused on at least two occasions to accept delivery of the hard copy sent by Federal Express. The proceedings commenced on July 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 7, 2003.
The Center appointed J. Nelson Landry as the Sole Panelist in this matter on August 14, 2003. 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 facts reported herein emanate primarily from the Complaint with only a few corroborated with documentary evidence. Certain facts, such as the U.S. trademark registration 2664372 mentioned only in the Canadian application listed in Exhibit C, were located by the panel.
The Complainant was founded in 1997, under the name GoTo.com, Inc. It commenced trading on Nasdaq in June 1999. As indicated in the U.S. registration above, a trademark application for Overture was filed in April 17, 2001, on an intent to use basis, and registration issued on December 17, 2002 (hereinafter "the Trademark" or the "OVERTURE Trademark").
In September 2001, GoTo.com, Inc. changed its name to Overture Services, Inc. and is today a corporation with offices in Pasadena, New York, San Francisco, the United Kingdom, Ireland, Germany, France and Japan.
The Complainant provides "Pay For Performance" searches on the Internet. It enables advertisers to bid for placement in its search results on terms that are relevant to their businesses. These search results are distributed to thousands of websites across the Internet, including Lycos, MSN, and Yahoo! Advertisers pay the Complainant the amount of their bid only when a consumer clicks on their listing, providing them with a cost effective way to drive targeted customer leads to their sites. Because the advertiser only pays if consumers click on their listing, this method of payment is known as a "Pay Per Click" or "PPC" system.
On August 27, 2001, the Complainant registered the domain name <overture.com> and in September 2001, announced to the press that it would be using its new name Overture exclusively in connection with providing PPC search results to consumers beginning on October 8, 2001 (see Exhibit X). However, as stated in the Complaint, the Complainant used the OVERTURE Trademark and the GoTo mark during the transition period, and began exclusive use of the OVERTURE Trademark on October 8, 2001.
The Complainant has since October 8, 2001, operated exclusively under the OVERTURE Trademark and it immediately began using the domain name <overture.com>, which it had previously registered on August 27, 2001.
The Complainant has used the OVERTURE Trademark in its Nasdaq listing and all corporate documents since October 8, 2001.
The Complainant has had success and growth as PPC search provider under the OVERTURE Trademark. Currently, Overtureís search results reach approximately 80% of active U.S. Internet users.
The Complainant, based on its adoption in August 2001, and its subsequent worldwide use of the OVERTURE Trademark, filed applications and obtained federal trademark registrations for OVERTURE in connection with Pay Per Click or PPC search engine services in the United States as well as in a number of countries around the world. The Complainant now owns numerous United States and foreign international trademark registrations for the trademark OVERTURE. A list of 19 countries in which the OVERTURE Trademark and OVERTURE design trademark registrations and applications have been filed or obtained have been submitted as evidence (see Exhibit C.)
The Respondent registered the domain name <oberture.com> (hereinafter the "domain name in dispute") on October 7, 2001.
The Respondent automatically re-directed consumers who accessed the domain name in dispute to a website at "www.bidforkeywords.com," which is a commercial search engine site which offers services which compete with Overtureís.
The Respondent posted its own commercial search engine site at "www.oberture.com." Through such actions, the Respondent has gained consumers who in attempting to go to the "www.overture.com" site, misprint same and obtain the domain name in dispute, causing them to be directed to a competitor search engine.
On May 31, 2002, Counsel for Complainant sent Respondent a letter detailing the Complainantís rights in the OVERTURE Trademark and requesting the transfer of the domain name in dispute to Overture. Respondent did not respond nor provide any evidence or claim of legitimate rights to use the OVERTURE Trademark.
On August 1, 2002, Counsel for Complainant sent Respondent a second letter detailing Overtureís rights in the OVERTURE Trademark. Respondent did not respond.
On October 30, 2002, Counsel for Complainant sent Respondent another letter reiterating Overtureís rights in the OVERTURE Trademark. Respondent again failed to respond.
On October 31, 2002, Counsel for Complainant received an email transmission from Escrow.com explaining that Respondent had arranged a secure online transaction (#199228) in the amount of $3,500 for the sale of the domain name in dispute to Counsel for Complainant. Counsel for Complainant sent an email transmission to Respondent to confirm that Respondent had initiated this transaction, and requested that Respondent explain the Escrow.com transaction in more detail. Copies of these email transmissions were attached to the Complaint as Exhibit I.
On November 8, 2002, Counsel for Complainant received an email transmission from Respondent informing him that the domain name in dispute was in escrow with other buyers. Respondent directed counsel for Complainant to "login to Escrow.com and close the transaction" if Overture wanted the domain name in dispute.
Counsel for Complainant sent an email transmission to Respondent informing it that Respondentís action of putting the domain name in dispute in escrow further evidenced its bad faith conduct, and once again demanded that Respondent transfer the domain name in dispute to the Complainant (see Exhibit J).
On December 10, 2002, Counsel for Complainant received an email transmission from Respondent, who claimed that it would remove the domain name in dispute from Escrow.com. Respondent then stated that working with Counsel for Complainant would "be a big waste of time" and wished Overture good luck in trying to retrieve the infringing domain name (see Exhibit K).
5. Partiesí Contentions
The Complainant alleges that the domain name in dispute is confusingly similar to Complainantís statutory and/or common law rights in the OVERTURE Trademark.
The Complainant contends that through its use of the OVERTURE Trademark relating to its PPC search engine services, Overture has acquired strong trademark rights in its OVERTURE Trademark, evidenced through its United States federal and foreign trademark registrations for the OVERTURE Trademark and that as a result of its unprecedented success, the enormous publicity and commercial exploitation of the OVERTURE Trademark it has developed and demonstrated valuable goodwill in and strong common law rights to the OVERTURE Trademark.
The Complainant represents that the OVERTURE Trademark became established in the minds of advertisers, investors and consumers of search engine services worldwide and that as a result, the OVERTURE Trademark has obtained secondary meaning.
The Complainant relies on earlier decisions of UDRP panels who have held that Complainant need not possess a registered trademark to ask for relief under the Policy. See The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050, (March 23, 2000), Southern Bank and Trust Company v. Pogrebetsky, Case No. A0002000093673 (NAF March 15, 2000), Cedar Trade Associates, Inc. v. Ricks, Case No. FA0002000093633 (NAF February 24, 2000), Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000), Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000), and MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000).
The Complainant represents that in the present case, Overtureís announcement of name change and immediate use of the OVERTURE Trademark conferred strong rights immediately upon the Complainant, which have been confirmed through its U.S. federal and foreign international registrations.
The Complainant contends that based on its clear rights to the OVERTURE Trademark and the publicís strong association of the OVERTURE Trademark with the Complainant, Respondentís registration and use of the domain name in dispute is likely to cause consumer confusion. In support of its position Complainant relies on doctrine to that effect; Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, ß23:44 at 23-121 (4th ed. 2000) and again earlier decisions where UDRP panels have recognized, the misspelling of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainantís registered mark. See OfficeMax, Inc. and OMX, Inc. v. Yong Li, WIPO Case No. D2003-0060 (March 19, 2003); Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (July 21, 2000); Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489 (June 19, 2001); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2001-0302 (May 18, 2001); Time Warner Entertainment Company LP and Hanna-Barbera Productions, Inc. v. John Zuccarini and the Cupcake Patrol, WIPO Case No. D2001-0184 (April 11, 2001).
The Complainant alleges that in fact, the domain name in dispute is not merely similar, but is virtually identical to Complainantís OVERTURE Trademark resulting from an intentional misspelling of the OVERTURE Trademark. The Complainant cites another UDRP panel decision in support of its position. Upon a finding of confusing similarity between the domain names <officemax.com> and <ifficemax.com>, the panel in OfficeMax, Inc. stated that since "the ĎOí and the ĎIí keys are located next to each other on the standard QWERTY computer keyboardÖthe typing error, which would divert the users to the Respondentís website, is likely to occur frequently." OfficeMax, Inc. and OMX, Inc. v. Yong Li, supra.
In the present case, the Complainant observes that the "B" and the "V" keys are located next to each other on the standard QWERTY computer keyboard, causing the likelihood of typing errors as users attempt to locate Complainantís "www.overture.com" website, in addition, the focus of the website content at the domain name in dispute being almost identical to the services offered by Complainant on its own website.
The Complainant alleges that in fact, it is clear that Respondentís acts of registering the infringing domain name and directing users to a competing PPC search engine website were based on Respondentís knowledge of the confusing similarity between the infringing domain name and Complainantís OVERTURE Trademark.
Finally the Complainant contends that Respondentís registration and use of a domain name that is visually similar to Complainantís OVERTURE Trademark, and which is an easy misspelling of that mark, constitutes "typo-piracy" and relies on Briefing.com, Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970 (September 12, 2001). By altering a single letter of Complainantís OVERTURE Trademark, Respondentís choice of domain name was deliberate. Respondent intentionally misspelled Complainantís OVERTURE Trademark in the hope of luring unsuspecting users from <overture.com> to <oberture.com>, and then intentionally re-directed those consumers to the competitor website at "www.bidforkeywords.com," which is the exact kind of bad faith typo-piracy which panels consistently hold to be impermissible. Microsoft Corporation v. Microsof.com aka Tarek Ahmed, supra; Disney Enterprises, Inc. v. John Zuccarini, supra; Dow Jones & Company, Inc. v. John Zuccarini, supra; Time Warner Entertainment Company LP v. John Zuccarini, supra.
Respondent has no rights or legitimate interests in respect of the domain name in dispute.
The Complainant represents that Respondent has no rights in the OVERTURE Trademark, is not authorized or licensed by Overture to use the OVERTURE Trademark, and has no other claims of legitimate use of the infringing domain name and that the Respondent has never been known by the name <oberture.com>, nor has Respondent ever used the domain name in dispute in connection with a bona fide offering of goods and/or services.
According to the Complainant, Respondentís only use of <oberture.com> has been to register the domain name in dispute and attempt to extort money from Overture for the sale of the domain name. In that regard, the Complainant contends that Respondent attempted to sell the infringing domain name to Overture for as much as $3,500, and threatened to sell the infringing domain name to third party buyers. In order to increase Overtureís desire to purchase the infringing domain name, Respondent redirected traffic to a commercial website offering PPC search engine services identical to those marketed and provided by Overture under its OVERTURE Trademark.
As such, pursuant to paragraph 4(c) of the Policy, the Complainant represents that Respondent has no right or legitimate interest in the infringing domain name and relies on WIPO decisions; Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218 (June 14, 2000) OfficeMax, Inc., supra where it was determined that deliberate use of a confusingly similar domain name to redirect users to a competitorís website cannot grant respondent legitimate rights or interests in the disputed domain name.
The infringing domain name has been registered by Respondent in bad faith, and is being used in bad faith.
The Complainant represents that the Respondent registered and began use of the <oberture.com> domain name with knowledge of Complainantís rights in the OVERTURE Trademark and PPC search engine services, and with knowledge of Respondentís lack of rights to that mark and property. The fact that Respondent refers consumers to a website offering competing PPC search engine services at "www.bidforkeywords.com," to which users are automatically re-directed from "www.oberture.com," demonstrates Respondentís singular intent to trade off of Overtureís well-known use of its OVERTURE Trademark.
The Complainant relies on UDRP panels who have held that registration and use of a domain name confusingly similar to a well-known mark is necessarily in bad faith where a respondent knew at the time of the registration that he could not make any actual use of the registered domain name without infringing on the trademark ownerís rights. See, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) and Sanrio Company, Ltd. And Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172 (April 20, 2000).
The Complainant alleges that Respondentís attempts to sell the domain name in dispute for amounts in excess of its registration costs provides further evidence of its bad faith intent. Specifically, Respondent offered the domain name in dispute for sale through its listing of the said domain name for sale on Escrow.com for $3,500.
Again the Complainant relies on decisions of numerous panels having held that attempts to sell an infringing domain name to the trademark owner for a price greater than the registration fee constitutes bad faith. See Astro-Med, Inc. v. Merry Christmas Everyone! And B. Evans, WIPO Case No. D2000-0072 (March 27, 2000), AOL v. Avrasya Yayincilik Danismanlik Ltd., FA0002000093679 (NAF March 16, 2000). See also, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000).
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the 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 with respect to the domain name; and
(iii.) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Before considering the alleged confusing similarity between the domain name in dispute and the OVERTURE Trademark, the panel considers that in the present instance a review of the evidence pertaining to the rights of Complainant in the OVERTURE Trademark is in order.
Trademark rights in many jurisdictions, such as in the United States, Canada, are created by use in commerce. Considering that the Respondent registered the domain name in dispute on October 7, 2003, the panel has to determine whether the Complainant has commenced use of the OVERTURE Trademark before that date. The evidence in this respect is in the Complaint, certified to be complete and accurate.
As stated in the facts herein, the Complainant has used both the earlier Go To and the new OVERTURE marks in the transition period, from the announcement of the change in September 2001 to October 8, 2001, in association with its services. While there is no documentary evidence of such use, the panel finds that this is plausible and credible in the light of other circumstantial and concurrent evidence, namely that 1) the OVERTURE Trademark application in the United States was filed on April 17, 2001, 2) the domain name <overture.com> was registered on August 27, 2001, and 3) the Complainant has in September 2001, announced to the trade that it would on October 8, 2001, use exclusively the OVERTURE Trademark.
The Respondent has received the Complaint, benefited of an opportunity to present its own evidence and challenge that of the Complainant and has not presented any reply nor evidence.
The panel is satisfied that the Complainant has used the OVERTURE Trademark and the Overture domain name first and has thus created common law rights in the OVERTURE Trademark which were subsequently acknowledged by many registrations. The panel does not consider necessary to assess the representations of the Complainant to the effect that the rights in the OVERTURE Trademark are strong.
There is no doubt that the domain name <oberture.com> is confusingly similar to the OVERTURE Trademark for purposes of the Policy.
In the opinion of the panel, the substitution of the letter b for the letter v which can be a frequent mistyping does not deter the reader from the fact the OVERTURE Trademark has been taken, modified and associated with the suffix ".com" and this does not diminish in any way the fact that the domain name in dispute is confusingly similar to the OVERTURE Trademark. The panel does accept the representation of the Complainant based on uncontradicted evidence and supported by earlier decisions of UDRP panels.
The panel finds that the domain name in dispute is confusingly similar with the registered trademark OVERTURE of the Complainant.
The criteria of paragraph 4(a)(ii) has therefore been met.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights to or legitimate interests in the domain name in dispute by alleging that the Respondent has never been known by the domain name in dispute, is not making a legitimate non-commercial or fair use of the domain name in dispute and is not using the domain name in dispute in connection with the bona fide offering of goods and services.
The panel finds that it is no coincidence that the Respondent registered the domain name in dispute on October 7, 2001, after the Complainant had registered its domain name <overture.com> in August 27, 2001, and had adopted and largely announced to the trade in September 2001, that it was replacing "Go To" by "Overture" on October 8, 2001. As contended by the Complainant, which representations the panel adopts, the Respondent, having been informed, as the rest of the trade, of the forthcoming change of name to Overture, registered the domain name in dispute to hitchhike on the Complainantís announced name change, the publicity of that name, which had resulted from the announcement, thus capitalizing on Complainant newly adopted and use of the OVERTURE Trademark and transfer of goodwill by its largely communicated announcement for Respondentís commercial gain. The goal of Respondent was to redirect to a competitive service provider any customer who misspelled the Complainantís domain name <overture.com>. The Complainant's position is adequately supported by earlier WIPO decisions as cited by Complainant and reiterated herein.
The panel concludes that the Respondent has not made any use of the domain name in dispute in connection with the bona fide offering of goods and services.
Accordingly, there is no evidence that the Respondent has any rights or legitimate interests in the domain name in dispute and the conditions for the second criteria have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the 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 user to your website or other on-line location, by creating a likelihood or confusion with the Complainantís mark as to the source, sponsorship, affiliating, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contents that the domain name in dispute was registered and is used in bad faith. In the present instance, the panel does not have difficulty to come to this conclusion. The Complainant has used the trademark OVERTURE first, prior to the registration of the domain name in dispute by the Respondent.
Considering the sequence of events, the evidence stating the wide spread communication of the new mark OVERTURE adopted, that absence of legitimate interest in the domain name in dispute the panel sees herein an act of bad faith by the Respondent in registering the domain name in dispute.
Furthermore, the evidence is supportive of a finding by the panel that the trademark is being used in bad faith. The primary ground for such finding is found in the acts of the Respondent which correspond to paragraph 4(b)(i) of the policy in that the Respondent had registered the domain name for the purpose of selling or otherwise transferring the domain name registrant to the Complainant for valuable consideration in excess of the out-of-pocket cost directly related to the registration of the domain name in dispute.
The evidence is compelling that the Respondent through the use of an escrow third party has offered to sell the domain name in dispute to the Complainant for a sum of $3,500. As evidenced by a printout of the "oberture.com" website printed on July 9, 2003, and produced as exhibit E to the complaint. Furthermore the Registrar in response to the WIPO Center has identified the Respondent under the name: (This Domain Is For Sale) Joshuathan Investments, Inc and the name of the administrative contact as: This Domain Name Is For Sale: usa5551212@Yahoo.com (This Domain Name Is For Sale).
Further evidence of bad faith use is in the confusion created by the Respondent vis-à-vis the Internet users who were attempting to reach the <overture.com> domain name of Complainant and who by misspelling reach the domain name in dispute and then were automatically redirected at the website "www.bidforkeywords.com" which is a commercial search engine site which offers services which compete with Overture. The whole as evidence by a copy of the printout of bid for "keywords.com" website printed on May 25, 2002, and produced as exhibit D to the Complaint.
These facts provide sufficient evidence for a finding of bad faith under the Policy, which defines bad faith in Paragraph 4(b)(i).
Therefore the panel finds that the domain name in dispute was registered and is being used in bad faith and the conditions for the third criteria have been fulfilled.
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, <oberture.com>, be transferred to the Complainant.
J. Nelson Landry
Dated: August 20, 2003