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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Popular Enterprises, LLC v. American Consumers First et al.
Case No. D2003-0742
1. The Parties
Complainant is Popular Enterprises, LLC, ("Complainant" or "Popular") a limited liability company organized under the laws of the State of Florida, with a principal place of business at Knoxville, Tennessee, United States of America.
Respondents are American Consumers First and Nick West ("Respondents" or "American"), located in Salt Lake City, Utah, United States of America.
2. The Domain Names and Registrar
The domain names at issue are <nettster.com> and <metster.com> (the "Domain Names"). The registrar is GO DADDY SOFTWARE, INC., doing business in Scottsdale, Arizona, United States of America
3. Procedural History
On September 22, 2003, the WIPO Arbitration and Mediation Center (the "Center") received hardcopy of the Complaint of Complainant. On September 23, 2003, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On September 24, 2003, the Center received a copy of the Complaint via email. The Complainant paid the required fee.
On September 23, 2003, the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondents’ name. The Registrar verified the information sought in the request.
On September 26, 2003, the Center requested amendment of the Complaint. On October 2, 2003, the Center received an Amendment to the Complaint from Complainant via email. On October 8, 2003, the Center received the Amendment in hardcopy.
The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On October 14, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On November 4, 2003, the Center advised Respondents that they were in default for failing to file their Response. No Response has been received.
On November 14, 2003, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
Complainant is a leading provider of Internet services, including but not limited to search engine services, information services, email services and domain name registration services, all of which are offered through the Internet at the website "www.netster.com". Complainant owns and uses the service mark NETSTER, and the United States Patent and Trademark Office ("USPTO") recently approved it for immediate registration.
Complainant also owns, uses and has registered over one hundred domain names that include the NETSTER mark, and more that contain misspellings of NETSTER. Most notably for purposes of these proceedings, Complainant's registrations include <netster.com>, <netster.net>, <netster.org>, <netster.info>, <netstersearch.com>, <netsterweb.com>, <netsternet.com>, <wwwnetster.com>, and <www-netster.com>.
Complainant’s NETSTER mark and name and the goodwill symbolized thereby are exceedingly valuable corporate assets of Complainant. It was reported by Media Metrix that, as of February of 2002, <netster.com> was receiving the 11th highest number of hits of all Internet search engines, ahead of Excite.com, Search.com, HotBot.com and many other well-known search engines. Millions of Internet users access the NETSTER website at the <netster.com> website each month, and Complainant has invested well over one million U.S. Dollars (US$1,000,000) in advertising and promoting its <netster.com> website.
5. Parties’ Contentions
A. Complainant’s contentions
i. Complainant contends that it has pending registrations of the trademark NETSTER, that its service mark registrations are soon to become valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the NETSTER mark. 15 U.S.C. § 1115.
ii. Complainant argues that the Domain Names are confusingly similar to the NETSTER mark, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the service mark NETSTER with the addition of generic terms or intentional typos.
The Domain Names at issue, <nettster.com> and <metster.com> consist
of misspellings of Complainant’s NETSTER mark in combination with .com, the
most common generic top-level domain. Each of the domain names at issue is believed
to be a common typo of Complainant's NETSTER mark. As such, they are likely
to be confused with Complainant and its NETSTER mark and domain names. See,
e.g., Yahoo! Inc. v. Eitan Zviely, et al., WIPO
Case No. D2000-0273 (June 14, 2000) (holding that the fifteen
domain names that were common misspellings of the Complainant's trademark were
confusingly similar to the Complainant's trademark).
iii. Complainant contends that Respondents have no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.
Complainant further contends that Respondents are not commonly known by NETSTER,
NETTSTER or METSTER and thus have no rights in the Domain Names. See Gallup
Inc. v. Amish Country Store, NAF Case No. FA0096209 (January 23, 2001)
(respondent does not have rights in domain name when respondent is not known
by mark). Complainant is informed and believes that, long after Complainant's
adoption, use and application to register its NETSTER mark and domain names,
Respondents registered the disputed Domain Names without any prior rights or
legitimate interests in the names NETSTER, NETTSTER or METSTER. Respondents
did not register the disputed Domain Names until October 9, 2002,
whereas Complainant has done business under the NETSTER name and mark since
at least as early as November 15, 2001. Thus, the disputed Domain
Names are obvious examples of typosquatting, because Respondents have altered
one letter in the domain name, "in the apparent hope that those who seek to
visit the website of [Complainant] might inadvertently make a typographical
error and potentially could be taken to a website constructed by Respondent."
General Electric Co. v. Zvieli, WIPO
Case No. D2000-0377 (July 15, 2000). "[T]he practice of 'typosquatting'
constitutes registration and use in bad faith." Id.
Respondents cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(i) because they have not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.
Respondents cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(ii) because they are not known by the Domain Names. Respondents have no connection or affiliation with Complainant, and have not received any license or consent, express or implied, to use the NETSTER mark in a domain name or in any other manner.
Respondents cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(iii) because they are not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Respondents have deliberately registered domain names containing typos of the NETSTER mark with the intention to attract Internet users searching for NETSTER. Respondents are using the Domain Names to misleadingly divert consumers and tarnish the NETSTER mark.
iv. Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).
Complainant further contends that when the disputed Domain Names are entered
in an Internet browser, the viewer is automatically redirected randomly to one
of over two dozen different websites to which the Domain Names are pointed.
None of those sites contain or ignore use either of the terms NETTSTER or METSTER.
See Yahoo! Inc. v. Eitan Zviely, et al., WIPO
Case No. D2000-0273 (June 14, 2000) (finding that using confusingly
similar domain names to redirect web users away from Complainant's website to
be evidence of bad faith).
At least fifteen (15) of the sites to which the Domain Names are pointed – such as <soupcrackers.com>, <greenlightsearch.com> and <5639.com> – are Internet search and/or information sites that are similar to and compete directly with Complainant's <netster.com> website. At least one of the sites to which Respondents have pointed the disputed Domain Names <SearchSexFind.com> is a self-described "XXX Porn Store." "[T]his type of use does not create rights or legitimate interests because it [is] not a bona fide offering of goods or services pursuant to policy ¶ 4(c)(i)." National Cable Satellite Corp. v. Telmex Management Services, NAF Case No. FA001020820 (February 4, 2002). See also Mattel, Inc. v. Zuccarini, NAF Case No. FA00109048 (May 22, 2002) (holding that use of a domain name to direct traffic to a pornographic website is not a bona fide offering of goods or services pursuant to the Policy). Redirecting traffic to a pornographic website is evidence of bad faith registration and use. See Transamerica Corp. v. Dreamnet Inc., NAF Case No. FA00103036 (February 8, 2002) (holding that use of a domain name to direct traffic to a pornographic site is evidence of bad faith registration and use).
The various sites to which Internet users are redirected upon typing the Domain Names often cause a new browser screen to open automatically, with a pop-under advertisement that remains once the initial browser screen is closed. Respondents’ mouse-trapping of visitors via pop-up advertisements, and presumable commercial gain from such conduct, is further evidence of bad faith use and registration. See Musicmatch, Inc. v. Cupcake Patrol, NAF Case No. FA0097115 (June 13, 2001) (holding that "Respondents demonstrated bad faith use and registration by using a domain name confusingly similar to Complainant's mark as a portal to pop-up advertisements"); Gemstar-TV Guide Int'l, Inc. v. Zuccarini, NAF Case No. FA00115076 (September 3, 2002) (same).
B. Respondents’ contentions
Respondent did not file a Response in this case, therefore:
i. Respondents do not dispute that the Complainant has a pending registration of the service mark NETSTER.
ii Respondents do not dispute that the Domain Names are confusingly similar to the NETSTER mark.
iii Respondents do not assert that they have rights to or legitimate interests in the Domain Names.
iv Respondents do not deny that they registered or used the Domain Names in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Because both the Complainant and Respondents are domiciled in the United States
and United States courts have recent experience with similar disputes, to the
extent that it would assist the Panel in determining whether the Complainant
has met its burden as established by Paragraph 4(a) of the Policy, the Panel
shall look to rules and principles of law set out in decisions of the courts
of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie,
WIPO Case No. D2000-1772 (April 10, 2001),
Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding,
but if it were to fail to do so, asserted facts that are not unreasonable
would be taken as true and the respondent would be subject to the inferences
that flow naturally from the information provided by the complainant: Reuters
Limited v. Global Net 2000, Inc., WIPO
Case No. D2000-0441 (July 13, 2000). See also Hewlett-Packard Company
v. Full System, NAF Case No. FA 0094637 (May 22, 2000); David G. Cook
v. This Domain is For Sale, NAF Case No. FA0094957 (July 12, 2000) and Gorstew
Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925
(July 13, 2000).
Even though Respondents have failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondents have no legitimate interests in respect of the domain names; and,
iii) that the domain names have been registered and are being used in bad faith.
Enforceable Trademark Rights
Complainant contends that its pending application before the USPTO makes its rights in the NETSTER mark valid and subsisting and serves as prima facie evidence of its ownership and the validity of the NETSTER mark. 15 U.S.C. § 1115.
The Sole Panelist does not make a finding that such pending application is sufficient or insufficient to make Complainant’s service mark rights valid and subsisting or to serve as prima facie evidence of Complainant’s ownership and the validity of the Mark. Instead, the Sole Panelist considers the pending application, together with the extent of prior use and amount of investment by Complainant in the Mark and corresponding website, as sufficient for purposes of this proceeding to establish enforceable common law service mark rights.
Respondents have not contested the assertions by Complainant that it has valid registrations of the trademark. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the service mark.
Identity or Confusing Similarity
Complainant further contends that the Domain Names are identical with and confusingly similar to the Mark pursuant to the Policy paragraph 4(a)(i).
Respondents have not contested the assertions by Complaint that the Domain Names are confusingly similar to the trademark.
The Sole Panelist agrees with the assertions of Complainant that the Domain Names are common misspellings of the Mark and as such constitute typosquatting. Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the NETSTER mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interests.
Complainant contends that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondents have
no rights to or legitimate interests in the Domain Names. Once a Complainant
establishes a prima facie showing that none of the three circumstances
establishing legitimate interests or rights applies, the burden of production
on this factor shifts to the Respondents to rebut the showing. The burden of
proof, however, remains with Complainant to prove each of the three elements
of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic
Communications, Inc., WIPO Case No. D2000-0270
(June 6, 2000).
In its contentions above, the Complainant has adequately established a prima facie showing that none of the three circumstances establishing Respondents' rights or legitimate interests or rights apply. Respondents have failed to come forward with any contrary evidence. Therefore, the Sole Panelist finds that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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 that 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 users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant contends that Respondents have engaged in typosquatting with the intent to re-direct traffic intended for Complainant’s website to other locations, including pornographic sites. Respondents have not come forward with any proof to the contrary.
Therefore, the Sole Panelist finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
The Sole Panelist concludes (a) that the Domain Names are confusingly similar to Complainant’s common law service mark NETSTER, (b) that Respondents have no rights or legitimate interests in the Domain Names and (c) that Respondents registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Complainant.
Richard W. Page
November 30, 2003