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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wild West Domains, Inc. v. Neo Jung

Case No. D2004-0243

 

1. The Parties

The Complainant is Wild West Domains, Inc., of Scottsdale, Arizona, United States of America (the "Complainant"), represented by Ms. Christine Jones.

The Respondent is Neo Jung, of Daegu, South Korea (the "Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <wildwestdomain.com> (the "Domain Name"), registered with Computer Data Networks, D/B/A Shop4domain/ Net One Domains (the "Registrar" or "Computer Data Networks").

 

3. Procedural History

On March 29, 2004, a Complaint dated March 24, 2004, was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). The submission was made in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On March 31, 2004, The Center acknowledged receipt of the Complaint, and issued a notice of allowance to prosecution, provided the satisfaction of formal requirements contained in the Policy and Rules, and assigned case number WIPO Case No. D2004-0243 as well as Case Manager.

On March 31, 2004, The Center notified the registrar on record, Computer Data Networks, that Complainant filed a complaint against Host Master, and that it would concern the domain name <wildwestdomain.com>. A request was made to Registrar to indicate receipt of the Complaint, to confirm that the Domain Name was registered with Registrar and that Host Master was the current registrant, among others. The Center requested Registrar that the Domain Name should be kept locked during the pending administrative proceeding. On April 5, 2004, Registrar responded by informing that the Domain Name registration is indeed registered with Registrar and that the name of registrant is not Host Master but Neo Jung. Registrar did not explain whether Neo Jung obtained the rights on the Domain Name as a transfer or other possibility, and if as a transfer, when was it made and recorded. Registrant agreed to have the Domain Name locked for all the time that the proceeding takes place.

On April 5, 2004, The Center informed Complainant about the response of Registrar and the name of Respondent. As a result, the Center made a Complaint Deficiency Notification to Complainant, requesting the modification of the Complaint within a term of five (5) calendar days starting the date of notification, that is, April 5, 2004.

On April 6, 2004, Complainant filed the Complaint with the modification that the Center had observed. Complainant stated that in its own view, the data provided initially about Respondent were valid at the time that the Complaint was filed, so Complainant believes that the Domain Name registration was changed after receiving the Complaint.

On April 6, 2004, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding, in WIPO Case No. D2004-0243, to the Respondent at the three addresses that Complained had indicated in the amended Complaint, one of which at least was provided by the Register, in accordance with the records of the Whois database. The Center marked April 26, 2004, as the deadline for the submission of response to the WIPO Center and the Complainant.

The Notification of the Complaint included following paragraph:

"6. Default. If your Response is not sent by the above date or we have not received any required payment from you by that date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."

On April 8, 2004, the Center received an e-mail from Mr. Young Hwan Oh, of Korea Network Information Center (KRNIC), suggesting that said entity had received the Notification of Complaint by mistake as it has no interest in the Domain Name. Likewise, Mr. Young Hwan Oh mentioned that Hanaro Telecom, Inc., who received a Notification as well in accordance with the Complainant's request, is an Internet service provider in Korea. The Center replied to the e-mail of Mr. Young Hwan Oh on April 19, 2004, explaining that the Center delivers notification to every possible address where the Respondent could be found or contacted, including the Whois address and any contact details obtained from records. The Center sent communications to KRNIC and the service provider by request of Complainant and under the obligation that the Center has in conformance with the Policy and Rules. However, the Center ceased the continuation of any further contact with KRNIC for this matter, asking that the document be destroyed.

On April 27, 2004, the Center sent a Notification of Respondent Default to the Parties by e-mail.

After having received the undersigned's Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as a Sole Panelist. The decision date was scheduled for May 18, 2004. Thus, the Administrative Panel finds the appointment properly made due to the qualifications of Panelist and his independence to the Parties.

Sharing the assessment of the Center, the Panel independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was made in time. The Panel finds that the Center has duly notified Complaint to the Respondent, pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.

There were no extensions granted or orders issued.

The registration agreement for the domain name at issue has been written and executed in English by Respondent-Registrant and the Registrar. The Complainant has submitted its Complaint without any observation or objection on this regard. By undertaking that there are no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English.

 

4. Factual Background

After Complainant's assertions, supported by the documents enclosed as annex, all of them undisputed by Respondent - as having defaulted to the Complaint - and after proper verification conducted at the database of the U.S. Trademark Office by the Panel itself, based on the discretional powers conferred upon this latter, in accordance with article 10 (a) of the Regulation, applicable to the present matter, and supported by precedents such as InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, the Panel finds that the Complainant owns the following service marks (the "Marks") registered in the Principal Register of the U.S. Trademark Office:

Registration Number

Date of Filing and Grant

Mark

Class

78158892

08/28/2002-04/27/2004

WILD WEST DOMAINS and design

42

78285607

08/11/2003-Date not Available.

WILD WEST DOMAINS and design

42

78097284

12/07/2001-01/21/2003

WILD WEST

42

Applications for the two service marks WILD WEST DOMAINS and design were filed on the basis of actual use, under section 1(a) of the U.S. Lanham Act (USC 15, Chapter 22, Subchapter 1, and Section 1051). The date of first use reported to that effect was 0714202, for registration number 78158892 and 08052003, for registration 78285607. On the other hand, registration number 78097284, referring to service mark WILD WEST, was initially filed on the basis of intent to use, under section 1(b) of the Lanham Act, and later changed to section 1(a), by declaration of first use in commerce of 07142002.

In addition to the three service mark registrations that are referred to above, on August 22, 2000, Complainant sought and obtained a registration for the domain name <wildwestdomains.com>.

Complainant, Wild West Domains, Inc., is a company doing business in the field of registration, transfer and account management services of domain names for identification of users on a global computer network, as well as the registration and account management services of hosting web sites of others on a computer server for a global computer network. Services are rendered using marks WILD WEST or WILD WEST DOMAINS and design. Complainant is an ICANN accredited registrar of Internet second-level domain names, under various top-level domains, such as .com, .net and. org. The principal place of business of Complainant is in Scottsdale, Arizona, United States of America.

From consulting the website of Complainant, under <wildwestdomains.com> or <wwdomains.com>, indistinctively, it can be perceived that a business is conducted there, dedicated to the registration and management of domain names and where trademark WILD WEST DOMAINS and design is displayed. While browsing through the "About us" option, it can be obtained information about the company and the services that it renders to the public, as an ICANN-accredited provider. All what it can be read in the website is identical with what Complainant has stated in the Complaint. Likewise, from the analysis of the Whois database, it can be further obtained that the registration was created in August 22, 2000, Special Domain Services, Inc. performing as registrant, and Domain Services, Inc. as administrative and technical contact. Both, registrant and contact are listed under the same address, which is the same of Complainant's, as indicated in the Complaint.

The Domain Name was registered on March 12, 2002, in conformance with the documentation submitted by the Complainant and searches conducted by the Panel at its discretion, at the Whois database of Network Solutions, Inc. In conformance with the search that Complainant made prior to the filing of the Complaint, Host Master is listed as the registrant of the Domain Name. However, the current registrant of the Domain Name is Respondent, which appears to have acquired the corresponding rights in virtue of a transfer occurred after the Complaint was filed. Registrar did not provide information of any sort in that regard, and there is accordingly nothing else but a presumption that supports said version. The presumption would obviously be based upon logic and chronology, in addition to the fact that Respondent did not show up in the proceeding and did not bring a contention as a result. Whether Respondent or Host Master knew about the complaint prior to notification or whether Registrant was permissive to the transfer of the Domain Name, is a conclusion that perhaps could be drawn from evidence filed or inquiries made, in connection with the present matter.

Notwithstanding the above, it is clear from evidence submitted and inquiries made at discretion of this Panel, that Complainant anticipated to Respondent in the petition of service mark WILD WEST as well as the registration of domain name <wildwestdomains.com>. Respondent applied for the registration of the Domain Name approximately three months after Complainant had filed the first service mark application and nearly two years after Complainant having obtained the <wildwestdomains.com> registration.

There is actually a site that can be accessed under Domain Name <wildwestdomain.com>. In fact, the Domain Name forwards traffic to the web page of SnapNames, a well-known business for securing and registering domain names. From inquiries that the Panel made, it could be obtained that the Domain Name actually takes users to the referenced page, without that the corresponding domain name is shown, displayed or otherwise indicated. The Panel deducted that the domain name for that website is <snapnames.com> and was able indeed to enter the site. The Complainant states that the Domain Name was routed to two previous websites. The first one was "www.dotster.com". Respondent -or previous holder- relinquished to that connection, but then went to "www.asadal.com". Apparently both sites represent businesses dedicated to domain name registration, same as Complainant. Complainant did not provide evidence in connection with the routing of the Domain Name to the first site, and shows a print of what it appears to be the home page of the second site, in Korean characters. The print that Complainant has submitted to support the fact appears outdated -the Domain Name has been now connected to the "www.snapnames.com" site- but is nevertheless of value to determine that Respondent and/or the previous holder has used the Domain Name to forward users to different places.

 

5. Parties' Contentions

5.1 Complainant

The Complainant asserts that:

· The Domain Name at issue is identical to the trademark on which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the Domain Name; and that it was registered and is being used in bad faith.

· The trademarks WILD WEST and WILD WEST DOMAINS and design of its property, identify domain name registration and maintenance services rendered over the Internet. The Complainant has registered its intellectual property rights in the United States of America, with complete success. The same is true concerning the domain name <wildwestdomains.com>. There is thus no other individual or corporation than the Complainant holding trademark rights on WILD WEST and WILD WEST DOMAINS in the United States, at least in connection with Internet services, and certainly the Respondent holds no rights whatsoever on the Mark.

· The Domain Name is identical or confusingly similar to the WILD WEST DOMAIN mark and the domain name <wildwestdomains.com>, inasmuch as they contain the same exact words and letters, the only distinction being the missing of the letter "s" at the end of the name.

· There is lack of any legitimate intellectual property right of the Respondent to the Marks, because Complainant is the owner of record of the same.

· Respondent registered the Domain Name for the specific purpose to forward users to a web site. Respondent or previous holder did that on a first occasion and then again, after the responsible persons to the first site protested the linking. Respondent has acted in bad faith as it made a connection first and insisted by directing the Domain Name to yet another site. Both sites offer competing services to Complainant's at apparently a low cost.

· Respondent registered an identical or substantially similar domain name for the purpose of gaining a business advanced from the familiarity of the WILD WEST DOMAINS marks and domain name. Respondent had knowledge that the Domain Name was confusingly similar to the Marks and name of Complainant.

· The bad faith that Respondent has shown gets worse from the perspective that the Domain Name differs from the Marks and name in just a letter "s". The foregoing would represent that Respondent knew about the similarities among Marks and the Domain Name. Respondent did so merely by not including one letter at the end of the <wildwestdomains.com> domain name, thus intentionally attempting to attract, for financial gain, internet users to Respondent's website or other on-line location, by creating the likelihood of confusion with the WILD WEST DOMAINS mark as to the source, sponsorship, affiliation or endorsement of Respondent's website.

· The Complainant requests the Administrative Panel to issue a decision that the contested Domain Name must be transferred to the Complainant.

· The Complainant agrees, with respect to any action that Respondent may bring against decisions of the Administrative Panel, that it would stick to the jurisdiction of the courts where the principal office of the concerned registrar is located.

5.2 Respondent

The Respondent has not submitted a response, and therefore is in default. After the Notification of Respondent Default, it has not made any submissions whatsoever.

 

6. Discussion and Findings

6.1 Effects of Respondent Default

Respondent was required to give an answer to the Complaint as filed by the Complainant. According with Rules, paragraph, 5(b)(i) "(t) he response shall (...) (r) espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)".

Under the Rules, and in particular paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under paragraph 14(b), the Panel "shall draw such inferences therefrom as it considers appropriate".

In line with the foregoing, any defaulting response would indicate that the assertions that the Complainant raised would give sufficient grounds to a default decision in the favor of this latter. However, under the Policy the defaulting response still needs to be qualified, because "the complainant must prove that each of these three elements are present". Policy, paragraph 4(a) in fine.

6.2 Independent Connection with the Web Site of Respondent

As concluded in InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, the Panel considers that under Paragraph 10(a) of the Rules, the Panel has the power to independently search over the Internet, in order to obtain as much information as required to render a decision.

The Panel visited the "www.wildwestdomain.com" web site of the Respondent. The address routed the user to an active web site where a business is conducted by the title or heading "Snapnames".

6.3 Identity or Confusing Similarity of Domain Name with a Mark in which Complainant has Rights.

The Panel has carefully considered the allegation that the Complainant has made that the Domain Name is identical or confusingly similar to the registered trademarks WILD WEST and WILD WEST DOMAINS and design. Likewise, the Panel reviewed the allegation and evidence claiming that Complainant has rights upon the Marks. On the other hand, the Panel could not analyze any arguments from Respondent contesting to the foregoing, due to the fact that it failed to give an answer to the Complaint.

The Panel has made a comparison of the Domain Name at issue vis-à-vis the Complainant's mark WILD WEST and WILD WEST DOMAINS and design, and finds that that the second level domain name <wildwestdomain>, is identical letter-by-letter to the service mark WILD WEST DOMAINS, and that the addition of a letter "s" and the reference ". com" -a generic top-level domain intended for commercial organizations- makes it rather difficult not to find confusingly similarity with said service mark. Pursuant the mark WILD WEST, confusing similarity is manifest also, notwithstanding that it does not include the word DOMAINS, which is ultimately a generic term not having the capacity to perform as a distinctive sign. From the foregoing, it can be inferred that Respondent employed misspelled or reduced versions of the marks belonging to Complainant, taking advantage of the goodwill of the same, and with a purpose that cannot be lawful at all. The Marks are strong due to their inherit capability to distinguish computer and related services. The copying or imitation of a strong mark leads to presumption of confusion. This is a universal principle of Trademark law resulting from international treaties and doctrines. Panelists have analyzed similar facts finding confusion, as it happened in VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.

Concerning the timing issue, it was Complainant the party that adopted the name "Wild West" and later "Wild West Domains", by securing protection thereof under the trademark law as well as the domain name system. Respondent showed up after Complainant had registered the domain name and had lodged an application before the Patent and Trademark Office of the United States of America. From the foregoing, it would be possible to conclude that the Domain Name is confusingly similar to the marks and to the domain name pertaining to Complainant, and that Respondent made the registration of the Domain Name only after Complainant had started taking the steps to seek protection and to do business under the Marks and domain name on which he had established rights.

6.4 Rights or Legitimate Interests in the Domain Name

The Panel has carefully considered the allegation of the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name. In particular, the Panel has noted the argument that the Respondent lacks of any legitimate trademark or other right in the Domain Name. The Panel would again state that Respondent did not bring any defensive statement or arguments against the Complaint.

In the present default proceeding there is no contention on record, made by the Respondent, or that anyhow the Panel could rely on, to conclude that it might have trademark or other intellectual property rights, or in general, legitimate interests in the Domain Name. Nothing can be evidenced reasonably leading to infer to the foregoing fact, pursuant to the Policy, paragraph 4(c). Complainant has argued that there is no legitimate interest "because Wild West Domains, Inc. is the owner of record of the aforementioned marks". That assertion could be inaccurate in terms of paragraph 4(c) of the Policy, which would admit a broader range of possibilities. Accordingly, respondent might not have a legitimate interest over the Domain Name as a trademark right only. An interest could have accrued somehow still, motivated by the preparations that Respondent made in connection with a bona fidae use of the Domain Name, by the fact that Respondent is known by the Domain Name, in virtue of a legitimate non-commercial use made thereof.

Notwithstanding the foregoing, from the inquiries that the Panel made, it was possible to infer that Respondent or the previous owner of the Domain Name, did not do anything that could have triggered a legitimate interest on the same as required by paragraph 4 (c). As it has been discussed above, there is nothing on record giving the slightest clue that the Domain Name is in use or that there have been preparations for being used, in connection with a good faith business or any activity in general. On the contrary, far from having made a lawful use of the Domain Name, Respondent redirecting it to the web pages of third parties, doing similar activities to those of Complainant, but that is unrelated to Respondent. Cases as Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071, would support the foregoing assertion. Respondent has used the Domain Name, and that such use is non-commercial. However, that would definitively not represent a legitimate interest. Totally the opposite, evidence shows that Respondent has used the Domain Name with the intent to misleadingly divert the public looking for an on-line connection with Complainant.

This Panel gives particular weight to the fact that Respondent defaulted. It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the Domain Name. And in the absence of a response, it is truly hard to conclude about the legitimate interest of the Respondent, on at least some sort of plan or intention to start using the Domain Name, especially when instead of that, Respondent forwarded the Domain Name to other websites. The Panel is not moved by the simplistic statement of Complainant but understands the difficulty that it has faced to show what is actually in the mind of Respondent. Proving negative facts is not particularly an easy task. For that reason, Rule 4(a)(ii) binds the Complainant making a prima facie case. The foregoing represents that the burden of proving rests initially on this party. However, the burden cannot go as far as to overwhelm. It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.

Therefore, the Panel finds that the Respondent has no rights to or legitimate interests on the Domain Name at issue.

6.5 Registration and Use in Bad Faith

6.5.1 Preliminary Remarks

There are a number of general considerations, basically of factual nature, requiring analysis before actually addressing the particular factors of paragraphs 4(a)(iii) and 4(b) of the Policy. They are as follows:

Respondent or the previous registrant of the Domain Name, most likely knew that Complainant was the holder of the domain name <wildwestdomains.com> as well as the service mark registrations, or at least the first application for WILD WEST. It would have been difficult to believe that the previous registrant would have registered the Domain Name without to know the foregoing. First of all, it adopted the slightest variations possible for circumventing the domain name as registered. For that end, he necessarily had to investigate the registries and perhaps Complainant itself.

Respondent has used the Domain Name for routing it to sites that are unrelated to Complainant. The former registrant could have done the same thing as per declaration of Complainant and evidence produced in regard to that. Both entities have perpetrated activities that in combination produce a unitary result. This has been actually discussed in length above.

Host Master, the previous registrant, transferred to Respondent any interest that it could have held in the Domain Name. As a result of that Host Master cannot be called or referenced as a Respondent to this proceeding. The facts that the Complainant narrates, in combination with the response of Registrant, illustrate about the wrongs that Host Master committed by transferring to Respondent any interest that it could have held on the Domain Name. The Panel is surprised and disturbed that the transfer has necessarily occurred within the period of time comprising the filing of the Complaint and the response given by Registrant to the notification received from the Center. Registrant had two days to respond and used more than four. Host Master could have become informed of the Complaint and proceed with a transfer. On the other hand, Registrant could have made the holding of the Domain Name until the date that it sent out the response to the Center. In that event, Registrant would have incurred into permissive behavior. The finding of facts is obscure as to these points, but whatever the truth is, it cannot speak in favor of Registrant.

The Panel is troubled that Host Master did not attend the current proceeding as a defendant or in any other capacity, but in any event, anything that Respondent did has a value here, although indirectly referential to the present analysis and discussion. The Panel notes that the original registrant could have breached paragraph 8(a) of the Policy, by having transferred the Domain Name when there was a pending administrative proceeding. Paragraph 3(a) of the Rules could be interpreted as in support of the idea that the proceeding starts or "initiates" when the complaint has been filed. There is however, a specific provision of the Rules indicating that the proceeding shall initiate until the Center has notified the Respondent, and that appears to dictate the norm. The former holder was clever enough to escape from being called to the proceeding, by taking advantage of loopholes and thus, putting the Domain Name apparently safe, under the name of a "good faith" assignee. As a result of that, the course of the proceeding shifted to a new route.

Now then, turning to the provisions and standards applicable in connection with the current administrative proceeding, there are two that bear particular attention: Paragraph 4(a)(iii), addresses bath faith as a factor in the dispute resolution proceedings regarding the registration of domain names. The general requirement is that, in order for a registered domain name to be transferred to someone showing trademark rights, the domain name would have to be "registered" and "used" in bad faith. Paragraph 4(b) of the Policy refers to certain factors which, if found to be present, shall constitute evidence of registration and use of a Domain Name in bad faith.

Paragraph 4(b)(i) concerns acquisition of the domain name in order to sell it, but there is no evidence that the Respondent intends to sell it. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant, provided that the Respondent has engaged in a pattern of such conduct, but there is no evidence of any such pattern of conduct. Paragraph 4(b)(iii) involves disruption of the business of a competitor, but there is no evidence that the Respondent is a competitor of the Complainant. Paragraph 4(b)(iv) involves use of the domain name for the purpose of attracting visitors to the online location of Respondent or a third party, in the mistaken belief that they are visiting a location associated with the Complainant. This latter provision deserves a more in-depth review, not only because Complainant has cited it in the Complaint, but in addition, under the discretion of this Panel.

Notwithstanding the above, paragraph (b) serves the purpose to indicate, on a non-exhaustive basis, when there is "registration" and "use" in bad faith of domain names. Paragraph 4(b) would thus allow other possible forms of demonstrating "registration" and "use" -by employing an inclusive, copulative solution- or "registration" or "use" -as an alternate, disjunctive solution- of domain names in bad faith.

6.5.2 Bad Faith as Recognized in Paragraph 4(b) of the Policy

Complainant has argued that the pattern of conduct that Respondent has undertaken squarely meets paragraph 4(b)(iv) of the Policy. In keeping with this, it has stated that Respondent registered the Domain Name having knowledge of the source, and used the same for redirecting traffic to an unrelated website. In the view of Complainant it is evident the purpose by Respondent to intentionally attract, for financial gain, internet users to his website or other online location, by creating confusion with the WILD WEST DOMAINS marks, as to the source, sponsorship, affiliation, or endorsement of said website.

For this Panel, it can be drawn from records that Respondent has registered and used the Domain Name with the sole purpose to divert Internet users to other locations, in particular sites of third parties promoting similar if not competitive services. It can be regarded as an inference that Respondent knows what is doing and that is not precisely acting in good faith. Actual and potential customers of Complainant could be mislead to a different location, driven by confusion, and when in that erroneous location, they could likely believe that Respondent -or even SnapNames, the third party operating the site- has been granted a sponsorship, has become affiliated to Complainant, or his activities have been endorsed by this latter. In Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504, the Panel found that would constitute, "not only a legitimate use of the disputed domain name, but also bad faith use". Holding otherwise "would be to undermine Complainant's brand by misleadingly identifying its brand with the respondent". The bad faith of Respondent has "arises, too from a deliberate intention to create a false sense of origin or sponsorship for the Respondent's products, goods and services". That would necessarily result in what that Panel called "initial interest confusion" and was sustained on a number of resolutions including Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens WIPO Case No. D2000-1319, Xerox Corp. v. Stonybrook Investments, Ltd WIPO Case No. D2001-0380, Harrods Ltd. v. Dijitaldjs WIPO Case No. D2001-1163, Harrods Limited v. AB Kohler & Co. WIPO Case No. D2001-0544, Harrods Limited v. Vineet Singh WIPO Case No. D2001-1162, Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic WIPO Case No. D2000-1698, Wachovia Corporation v. Peter Carrington WIPO Case No. D2002-0775, e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies WIPO Case No. D2000-1369, The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc. WIPO Case No. D2002-1125, and Pig Improvement Company, Inc. v. Platinum Net, Inc. WIPO Case No. D2000-1594.

The question is if the conduct that Respondent carried has been performed for commercial profit or financial gain. The Panel in Harrods Limited did not discuss that issue, as it also did not happen in Dow Jones & Company, Inc. v. Down Jones Update, WIPO Case No. D2000-0495. On the other hand, other Panels have addressed those points. In Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071, it was found that when a domain name has been routed to the site of a third party, it is possible that the Respondent may obtain a commercial benefit. Something similar was said in Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Panel in Club de Regatas Vasco da Gama v. Building Centre International, WIPO Case No. D2000-0739, found that the respondent was profiting "by offering an e-mail service for addresses to be formed with the domain name of the user's favorite team, against the annual fee of U$ (sic) 14,95". The respondent in the Vasco da Gama case was apparently routing the domain name to a site managed by its own. On similar grounds, ViriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.

In the instant case, there is nothing on records serving as evidence that Respondent is using the Domain Name for the purpose of making a profit. The fact that Respondent has redirected the Domain Name to SnapNames or other page pertaining to a third party cannot be necessarily conclusive of the foregoing. Under that rationale, it would in the end be impossible to determine about the transgression to paragraph 4(b)(iv) of the Policy.

6.5.3 Bad Faith Considerations Outside Paragraph 4(b) of the Policy

As mentioned earlier, the Panel is not limited to the application of the four circumstances of paragraph 4(b) of the Policy, to determine whether the Domain Name was registered and used in bad faith. Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing bad faith, but allows for the development of further factors. The majority of Panels have sustained that reiteratively. One landmark case for the foregoing is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The following lines are intended to examine possible causes, outside that scope, that could be invoked in addition to what discussed in the preceding section of this resolution. The foregoing, in the understanding that paragraph 3(a)(iii) of the Policy requires the showing of both, registration and use of the Domain Name in bad faith.

6.5.3.1 Registration in Bad Faith

Following the rationale of the Panels in Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074, and Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638, there is no obvious possible justification for the selection that Respondent made of the Domain Name. The foregoing driven from the fact that Respondents could not ignore the existence of the Marks and domain name of Complainant, as well as the activity of this latter. Likewise, said marks and domain name convey distinctive terms that Respondent or original registrant, would have hardly obtained or adopted, should they have not known about the existence of Complainant.

Following the rationale of the Panel in Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504, domain names that are chosen for the purpose of misleadingly identifying the brands of a trademark owner shall be regarded as a registration made in bad faith. Under the facts and evidence submitted in connection with the present case, it can be drawn that, by having registered the Domain Name for the purpose of inexplicably redirecting users to other locations, Respondent did not act otherwise but in contradiction to the text and spirit of the Policy and in bad faith.

Following the rationale of the Panel in Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638, a domain name shall be registered in bad faith when the corresponding holder has no legitimate rights in the same and is likely to be aware of the trademark or other rights. As discussed earlier in connection with this matter, Respondent did not prove rights or interests of any sort and on the contrary, this Panel has found a number of convincing factors to presume that. From the foregoing, the criterion of lack of interest can be applied mutates mutandis to the present issue, in order to determine that the Domain Name was registered in bad faith.

The circumstances above described satisfy the Panel to conclude that, for the purposes of Paragraph 4(a)(iii) of the Policy, the Domain Name was registered in bad faith.

6.5.3.2 Use in Bad Faith

In the present proceeding, the Respondent, did not itself register the Domain Name and is rather a transferee. That is the reason why the doctrine of "extension" can be invoked here. That argument is supported on paragraph 4(b)(i) of the Rules and of various precedents such as BWR Resources Ltd v. Waitomo Adventures Ltd WIPO Case No. D2000-0861, Motorola, Inc. vs NewGate Internet, Inc. WIPO Case No. D2000-0079 and Dixons Group Plc v Mr. Abu Abdullaah WIPO Case No. D2000-1406. For "extension" of a registration it can be understood that the corresponding term "extends beyond the original act of registration and covers subsequent acquisitions of the domain name". Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406. The bad faith of Respondent consists on a number of factors, triggering from what the original registrant made to put the Domain Name save from possible attacks. In a scenario as the afore-mentioned, the former registrant could have certainly created or used Respondent to complete the circle. From the findings made and the information contained in the records of the case, this Panel believes that it is plausible inferring the existence of a relation between Respondent and its predecessor in title Host Master.

Following the rationale of the Panel in Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071, at the same time inspired by the Telstra v. Nuclear Marshmallows resolution, the registrant of a domain name could only use it for legitimate and good faith purposes if it was unaware of the existence marks of third parties that eventually could enter into conflict. On the contrary, the legitimate factor would obviously be absent in such cases where the registrant knew or should have known about the rights of the third party. In the instant matter, Respondent did not act in good faith as it clearly knew, or at least should have known about the trademark rights of Complainant over the WILD WEST DOMAINS and WILD WEST marks, but also of the domain name registration. It can not be regarded a casual circumstance that Respondent -or the original registrant- registered the Domain Name, shortly after Complainant had registered a domain name for virtually the same thing, and had deposited an application for the first of the Mark. In addition, it can not be regarded a coincidence that Respondent used the Domain Name intending to redirect the traffic to websites that offer similar services to those of the Complainant

Following the rationale of the Panels in Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504 and Jorge Antonio Labanda Blanco v. Xavier Mañé, WIPO Case No. D2002-1111, bad faith use of a domain name "is an unavoidable inference, indeed consequence, of the act of registration itself". In this regard, the Harrods decision has stated "the Respondent has exercised bad faith by the very act of not being reasonably able to use that name without having the effect of violating the Complainant's name and trademarks". That is clearly authority applicable in the present case, where the Domain Name was registered and further used in bad faith.

Following again the rationale of the Panel in Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638, a domain name shall be used in bad faith when the corresponding holder has no legitimate rights in the same, and is likely to be aware of the trademark or other rights. As discussed earlier in connection with this matter, Respondent did not prove rights or interests of any sort and on the contrary, this Panel has found a number of convincing factors to presume that. From the foregoing, the criterion of lack of interest can be applied mutates mutandis to the present issue, in order to determine that the Domain Name was registered in bad faith.

The circumstances above described satisfy the Panel to conclude that, for the purposes of Paragraph 4(a)(iii) of the Policy, the Domain Name was used in bad faith.

 

7. Decision

The Panel has found that the domain name <wildwestdomain.com> is identical or confusingly similar to the trademarks and domain name of the Complainant, and that the Respondent has no rights or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.

Therefore, pursuant to Paragraphs 4(a) (i), (ii) and (iii) of the Policy and 15 of the Rules, the Administrative Panel decides to request that the domain name <wildwestdomain.com> be transferred to the Complainant, Wild West Domains, Inc.

 


 

Luis C. Schmidt
Sole Panelist

Date: May 18, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0243.html

 

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