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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Seek America Networks Inc. v. Creative Services
Case No. D2000-1082
1. The Parties
1.1. The Complainant is Seek America Networks Inc., c/o Suite 206 – 347 Leon Avenue Kelowna, B.C., V1Y 8C7, Canada. The Complainant's representative in this proceeding is Antony C. Edwards, Bishop & Company, Suite 206, 347 Leon Avenue, Kelowna, B.C., V1Y 8C7, Canada.
1.2. The Respondent is Creative Services c/o Russell Easter, 6439 Marshall Avenue SW, Seattle, Washington 98136, USA
2. The Domain Name and Registrar
2.1. The Domain Name subject to this Complaint is "iseekamerica.com". The Registrar of the Domain Name is Dotster, Inc., 1338 Commerce Ave, Suite 202, Longview, WA 98632, USA.
3. Procedural History
3.1. The Complaint was received in hardcopy at the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) on August 17, 2000. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center on August 28, 2000. An electronic copy of the Complaint was transmitted via email by the Complainant's representative to WIPO Center on August 29, 2000.
3.2. A copy of the Complaint together with the cover sheet as prescribed by the Supplemental Rules was sent by the Complainant to the Respondent on August 16, 2000, by courier. A copy of the Complaint was sent by the Complainant to the Registrar on August 16, 2000, by courier. A copy of the Complaint was sent by WIPO Center to the Respondent by email on September 1, 2000.
3.3. On August 28, 2000, the Registrar, Dotster Inc., was notified of the Complaint by WIPO Center. On September 6, 2000, verification was received from the Registrar of Dotster Inc., to the effect that the Domain Name "iseekamerica.com" is registered by that Registry in the name of Creative Services, administrative and technical contact Russell Easter, 6439 Marshall Ave SW, Seattle, Washington 98136, USA. Communications or actions attributable to Russell Easter in this Case are taken as representing the Respondent. The Registrar confirmed that the Domain Name is in Active status and that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name.
3.4. On September 6, 2000, a printout was made of the website reached by the disputed Domain Name.
3.5. On September 6, 2000, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Uniform Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Uniform Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
3.6. Formal Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent on September 6, 2000, by WIPO Center by courier. The deadline for the receipt of a response was set as September 27, 2000. The Formal Notification was copied by email to the Respondent, the Registrar, the Complainant and ICANN on September 6, 2000.
3.7. No formal Response was received by the due date and on October 8, 2000, a Notification of Response Default was sent by WIPO Center to the Respondent by email and on October 9, 2000, by courier; copied to the Complainant's representative by email.
3.8. On October 26, 2000, Dr Clive Trotman, having provided the WIPO Center by fax with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and the Respondent, the Complainant and the Administrative Panel were so informed via email.
4. Factual Background
4.1. The Domain Name "iseekamerica.com", which is the subject of the Complaint, was registered with Dotster Inc., by the Respondent on June 1, 2000.
4.2. The Complainant has a Domain Name "seekamerica.com" that has been in use and available to the public since at least as early as August 10, 1999.
4.3. The Complainant operates an Internet search engine which it describes as offering "Computer services, namely, providing multiple user access to computer networks and bulletin boards for the transfer and dissemination of a wide range of information; providing a wide range of general interest information via computer networks; advertising the wares and services of other vendors; providing an on-line chat room; access on-line to news, sports, financial and entertainment information and news; providing access to real estate information; providing access for retail purchase of wares and services of other vendors; providing electronic mail services; providing access to stock information and stock trading".
4.4. The Complainant filed its trademark applications in the Canadian Trademarks Office on February 4, 2000, and in the United States TradeMarks Office on March 2, 2000. The trademark applications claim use of the SEEKAMERICA trademark by a predecessor-in-title to the Complainant since at least as early as August 10, 1999. An ambiguous document dated February 22, 2000, seems to transfer the trademarks then existing from Marc Wyss to SeekAmerica Networks Inc. References in this Decision to the Complainant refer to either the Complainant or its representative or its predecessor as appropriate.
4.5. On or about July 18, 2000, the Complainant and the Respondent corresponded on the subject of the Complainant possibly buying the Domain Name "iseekamerica.com" from the Respondent. The Respondent pointed the Complainant to the website of an appraisal service by which the Domain Name was given an "inventory value" of $US22,016 and an "appraised value" of $14,310. The Domain Name was available for sale through another website at $50,000 as at August 18, 2000. The Complainant did not buy it.
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The contentions of the Complainant include (paragraphs 5.2-5.9 below) that:
5.2. The Respondent's Domain Name "iseekamerica.com" merely includes an "i" in front of the Complainant's Domain Name "seekamerica.com". The Respondent's Domain Name is confusingly similar to the Complainant's trademark.
5.3. The Complainant has rights in the trademark SEEKAMERICA. Although the Complainant’s trademark applications have yet to issue as registrations, because trademark rights accrue through use, the Complainant has rights in the trademark SEEKAMERICA and registration merely makes of record the bona fide trademark rights of the Complainant. The Complainant has expended considerable energy and resources in establishing its Internet presence and generating goodwill in its search engine services offered under the trademark SEEKAMERICA. The Complainant’s search engine is part of the Complainant’s functioning website at "www.seekamerica.com".
5.4. The Respondent is not authorized by the Complainant to use its trademark SEEKAMERICA in any form. The Respondent does not have any rights or legitimate interests in "iseekamerica.com".
5.5. The Respondent has not started using "iseekamerica.com" either as a website or in connection with a bona fide offering of goods and services. The "iseekamerica.com" URL merely takes one to a holding page of the Respondent's Registrar.
5.6. The Respondent registered and is using the Domain Name in bad faith. The Respondent has implied that the Domain Name has an independent appraisal valuation of $14,310 and it is for sale through an agent at $50,000, being far in excess of registration costs, and through other agents without a quoted price. The non-operation of the Domain Name as a bona fide website amounts to use in bad faith. Internet users may be misled away from the Complainant's site.
5.7. The Respondent by merely inserting an "i" on to the Complainant’s trademark SEEKAMERICA knowingly violated the Complainant’s trademark rights by creating a confusingly similar Domain Name which it must have known would have the effect of misleading users to the Respondent’s website. There can be little doubt that the Respondent found the Complainant had already registered "seekamerica.com" when searching to find if "iseekamerica.com" was available for registration.
5.8. The Respondent is evidently in the business of selling domain names and has listed over a thousand domain names for sale.
5.9. Remedies Requested. The Complainant requests that the Domain Name "iseekamerica.com" be transferred to the Complainant or be cancelled.
B. Contentions of Respondent
5.10. The Respondent has not submitted any formal Response.
6. Discussion and Findings
6.1. Paragraph 4 (a) of the Uniform Policy requires the Complainant to prove all three of the following elements:
(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;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Whether the Domain Name is Confusingly Similar to Complainant's Trademark
6.2. The Domain Name that is the subject of the Complaint is "iseekamerica.com". The Complainant has submitted that "iseekamerica.com" is confusingly similar to its own trademark SEEKAMERICA and Domain Name "seekamerica.com".
6.3. Introduction of a small variation such as a hyphen into an existing trademark has been held to make no substantial difference and to amount to confusing similarity (Chernow Communications Inc. v. Kimball, WIPO Case No. D2000-0119; Columbia Sportswear Company v. Mahlon Keeler, Case No. D2000-0206; Teradyne, Inc. v. 4Tel Technology, Case No. D2000-0026; Draw-Tite, Inc., v. Plattsburgh Spring Inc., Case No. D2000-0017; Gateway, Inc. v. Pixelera.com, Inc., Case No. D2000-0109; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, Case No. D2000-0131).
6.4. The addition of a letter "i" in front of a domain name, as in the present case, has been held to represent confusing similarity (Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, Case No. D2000-0599). More major changes to a trademark or domain name have been held to constitute confusing similarity, including the addition of the prefix "my" (InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafe, Case No. D2000-0068); the addition of the prefix "micro" (Infospace.com Inc. v. Infospace Technology Co. Ltd., Case No. D2000-0074); the addition of the prefix "india" (InfoSpace.com, Inc. v. Hari Prakash, Case No. D2000-0076); and the combined addition of the prefix "www" and the suffix "s" (InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, Case No. D2000-0069).
6.5. The Administrative Panel finds that "iseekamerica.com" incorporates the trademark SEEKAMERICA in which the Complainant has rights and is confusingly similar to "seekamerica.com". The Complainant therefore succeeds under Paragraph 4 (a) (i) of the Uniform Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of Domain Name
6.6. The Complainant has submitted that the Respondent cannot have any rights in respect of the Domain Name because the Domain Name essentially incorporates the Complainant's SEEKAMERICA trademark, which the Complainant has not authorized the Respondent to use.
6.7. The onus is on the Respondent to demonstrate in accordance with (but not limited to) Paragraph 4 (c) (i) or (ii) or (iii) of the Uniform Policy that it has rights to or legitimate interests in the Domain Name. The Respondent has not attempted so to demonstrate and the Administrative Panel must decide the Complaint on the basis of the statements and documents submitted (Uniform Rules 15 (a)) and must ensure that the Parties are treated with equality (Uniform Rules 10 (b)). The Respondent's position has been considered in terms of a possible response under Paragraph 4 (c) of the Uniform Policy.
6.8. As reiterated recently in Gateway, Inc. v. Pixelera.com, Inc. (Case No. D2000-0109, Alan J. Limbury Panelist), "Where a trader uses a descriptive name as a trademark, only slight differences will suffice to distinguish another trader and its business from the first trader and its business." However, the point in Gateway referred narrowly to business names based on ordinary descriptive words being distinguished by slight differences, which might then legitimize slightly different domain names, rather than slightly different domain names in the first place being legitimate. In the present case there is no evidence of the Respondent having a business name "iseekamerica".
6.9. The Complainant annexed to its Complaint a printout dated August 16, 2000, of an attempt to contact the URL "http://www.iseekamerica.com" showing the site to be a "future home" and not in bona fide operation. The Respondent has not demonstrated a bona fide use of the Domain Name as it would need to do in terms of Paragraph 4 (c) (i) of the Uniform Policy. The Respondent does not claim to be commonly known as "iseekamerica" as it would need to do under Paragraph 4 (c) (ii) of the Uniform Policy. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name in order to qualify under Paragraph 4 (c) (iii) of the Uniform Policy since on the facts presented by the Complainant the Domain Name is in use only in so far as it is available for sale.
6.10. The Administrative Panel finds that the Respondent does not have any rights to or legitimate interest in the Domain Name. The Complainant therefore succeeds under Paragraph 4 (a) (ii) of the Uniform Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.11. Paragraph 4 (a) (iii) of the Uniform Policy requires the Complainant to demonstrate that the Domain Name has been registered and is being used in bad faith; and then lists four circumstances, Paragraphs 4 (b) (i), (ii), (iii) and (iv), any one of which in the alternative (but without limitation) "shall be evidence of registration and use of a domain name in bad faith".
6.12. The evidence is clear that the Respondent registered or acquired the disputed Domain Name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a price in excess of registration costs, and on the evidence provided by the Complainant and not denied by the Respondent, that activity is a business of the Respondent. Russell Easter's replies to the Complainant can have no other reasonable interpretation than as inviting offers of a high price for the Domain Name (whether or not other domain names were to be included in the deal). The Domain Name is being used as stock for sale alongside numerous other names. These findings are, in accordance with the preamble of Paragraph 4 (b) of the Uniform Policy, "For the purposes of Paragraph 4 (a) (iii) ... evidence of the registration and use of a domain name in bad faith". The Administrative Panel therefore finds the requirements of Paragraph 4 (a) (iii) to be satisfied in full and that the Domain Name was registered and is being used in bad faith.
6.13. The Administrative Panel in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), Andrew F. Christie Presiding Panelist, developed a persuasive argument (Paragraphs 7.8 – 7.11 therein) to the effect that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith". In the present Case the Administrative Panel finds clear evidence of bad faith on the part of the Respondent in, among other things: its registration of a Domain Name confusingly similar to the Complainant's which was already in use; its indication of a valuation in the range between about $14,310 and $50,000 for the Domain Name; its pattern of conduct as a trader in domain names (in which there may be nothing wrong where a name is not in dispute); and the Respondent's retention of the disputed Domain Name for no other apparent purpose than to be available for sale. The Administrative Panel finds that the totality of this conduct is evidence that the Domain Name was registered and is being used in bad faith under Paragraph 4 (a) (iii) of the Uniform Policy independently of the finding in 6.12 above.
6.14. To summarize, as stated in 6.5 above the Respondent's Domain Name "iseekamerica.com" is confusingly similar to a trademark in which the Complainant has rights and the Complainant succeeds under element 4 (a) (i) of the Uniform Policy. As stated in 6.10 above the Respondent does not have any rights to or legitimate interest in respect of the Domain Name and the Complainant succeeds under Paragraph 4 (a) (ii) of the Uniform Policy. As concluded in either 6.12 or 6.13 above the Domain Name was registered and is being used in bad faith and the Complainant succeeds under element 4 (a) (iii) of the Uniform Policy. The Complainant therefore has proven its case in full and the final Decision is made in favor of the Complainant and against the Respondent.
7.1. The Decision of the Administrative Panel is that the disputed Domain Name "iseekamerica.com" is confusingly similar to the trademark SEEKAMERICA in which the Complainant has legitimate interests; that the Respondent has no rights or legitimate interests in the Domain Name "iseekamerica.com"; and that the Respondent has registered and is using the Domain Name "iseekamerica.com" in bad faith. The Decision of the Administrative Panel is that the Domain Name "iseekamerica.com" shall be transferred to the Complainant.
Dr Clive N. A. Trotman
Dated: November 6th, 2000