Among other uses, both the “GO DADDY” and “GODADDY.COM” marks (the “Trademarks”) are used in connection with the registration, transfer and account management services of domain names for identification of users on a global computer network. The Trademarks are further used in connection with the registration and account management services of hosting websites of others on a computer server for a global computer network. Go Daddy is an ICANN accredited registrar of Internet second-level domain names under various top-level domains such as .com, .net and .org and the number one registrar of new domain names.

Go Daddy registered the domain name <godaddy.com> on March 2, 1999. Respondent registered the Domain Name <updaddy.com> on or about February 12, 2004.

On or about June 27, 2004, Respondent responded to a link on the <godaddy.com> website, that was promoting an “Instant Reseller Opportunity.” Respondent responded to the solicitation and signed up to become a reseller for Go Daddy or one of its subordinate affiliates. Respondent signed up under the corporate name of Hostnut.com, Inc.

On or about July 31, 2004, Respondent further registered the Domain Names <updaddy.net>, <updaddy.biz> and <updaddy.us>.

Respondent launched the website <updaddy.com> and began reselling all of Go Daddy’s services. Respondent paid Go Daddy based upon Respondent’s revenues as a reseller. Respondent bought advertising for the <updaddy.com> website with Google.

5. Parties’ Contentions

A. Complainant’s contentions

(i) Complainant contends that its registrations of the Trademarks are valid and subsisting.

(iii) Complainant contends that the Domain Names are confusingly similar to the Trademarks, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Names merely replace the phrase “go” with a generic prefix “up.” Complainant contends that merely replacing a portion of a mark with a generic prefix does no not change the fact that the domain name is confusingly similar. See, Budget Rent A Car Corporation v. Budget-Rent-A-Phone and Robert Farkas, WIPO Case No. D2001-0772; The Stanley Works and Stanly Logistics, Inc. v. Cam Creek Co., Inc., WIPO Case No. D2000-0113; and Nokia Corporation v. Nokia girls.com, WIPO Case No. D2000-0102.

Complainant also asserts that the Domain Names are confusingly similar to the phrase “Daddy” which has become synonymous with Go Daddy within the domain name registration and website hosting industry and is very valuable to Go Daddy’s business.

(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), that Respondent has not been granted any license or permission from Complainant to use the Trademarks or the phrase “Daddy” and that Respondent cannot demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Complainant contends that Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Trademarks or the phrase “Daddy” in Respondent’s own domain name. Complainant alleges that the Respondent registered the Domains Names for use in a Domain Reseller program offered by a Go Daddy affiliate, Wild West Domains, Inc. Such program allows Respondent to resell the exact services as offered by Go Daddy in direct competition with Go Daddy. The Domain Reseller program allows Respondent to use Go Daddy branding on Respondent’s website, but not to adopt the Trademarks or the phrase “Daddy” as Respondent’s own. Upon discovery of the unauthorized use of the <updaddy.com> Domain Name, Go Daddy attempted quick and efficient resolution of the dispute by exercising its rights to cancel registration as the Registrar of the Domain Names and refunding all registration fees.

Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services. Complainant alleges that the Respondent can make no bona fide or legitimate use of the Domain Names because Respondent misappropriated Go Daddy’s goodwill when it registered the Domain Name <updaddy.com> with GoDaddy.com as Registrar. Complainant notes that the <updaddy.com> Domain Name was registered almost five years after Go Daddy applied for the first of its trademark registrations, and long after the Trademarks and the phrase “Daddy” had become widely recognized in the domain name registration and website hosting market.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(ii) because it is not commonly known under any of the Domain Names.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(iii) because it is 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. Complainant further contends that Respondent has deliberately registered the Domain Names containing the Go Daddy Trademarks or the phrase “Daddy” to attract the attention of internet users searching for Go Daddy and that Respondent is using the Domain Names to misleadingly divert consumers and tarnish the Go Daddy Trademarks. Complainant further contends that Respondent has used and is currently using the Domain Names for directly competing for domain name registration and website hosting services.

(iv) Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

Among other violations of the Policy, Complainant contends that the Respondent’s registration of the Domain Names meets the bad faith element of Section 4(b)(iv) of the UDRP, because the Respondent has registered the Domain Names for the specific purpose of using the Domain Names to offer services identical to that of Go Daddy. Furthermore, Complainant alleges that Respondent registered the Domain Names intentionally attempting to attract, for financial gain, Internet users to Respondent’s website by creating the likelihood of confusion with the Go Daddy Trademarks and proprietary phrase “Daddy” as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

B. Respondent’s contentions

As a preliminary matter, Respondent asserts that Complainant lacks standing to request relief under the Policy, because Go Daddy is the Registrar of the Domain Names. Note 3 setout at the beginning of the Policy states that:

3. The Policy is between the registrar (or other registration authority in the case of a county-code top-level domain) and its customer (the domain-name holder or registrant). Thus, the policy uses “we” and “our” to refer to the registrar and it uses “you” and “your” to refer to the domain-name holder.

The Policy further states, in part, at number “1”,

1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the “Policy”) has been adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”), is incorporated by reference into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) (emphasis supplied) over the registration and use of an Internet domain name registered by you.

Respondent concludes that, according to the Policy itself, the Policy only applies to disputes between the domain holder, Hostnut.com, Inc. in this case, and any party other than the registrar. Since Respondent’s opposing party is the registrar, the Policy should not apply to this case and Go Daddy has no standing to bring this dispute under the Policy. Therefore, Go Daddy has sought relief in the wrong forum and Respondent requests that this case should be summarily dismissed.

Respondent further argues that the real parties in interest to this dispute are the individual shareholders of the corporate entities Go Daddy Software, Inc. and Hostnut.com, Inc. Presumably Respondent is asking, as well, that this complaint be dismissed on the grounds that the wrong parties have been named.

If the Sole Panelist accepts this complaint and decides the matter on the merits, Respondent offers the following contentions:

(i) Respondent does not dispute that the Complainant has registrations of the Go Daddy Trademarks.

Respondent disputes Complainant’s assertion that the term “Daddy” has “come to be closely associated with Complainant’s Internet domain name registration and hosting web sites of others…” Respondent asserts that the more logical association of “Daddy” would have something to do with paternity or familial relationships and that Complainant has no evidence to support or clothe the assertion that “Daddy” has acquired secondary association with Complainant. Respondent notes that Complainant has not registered the term “Daddy” as a trademark.

(iii) Respondent asserts that the Domain Names are not identical or confusingly similar to the registered Trademarks because a reasonable person would not assume the Domain Names are actually being used or sponsored by Complainant. The Domain Names all use the phrase “updaddy” which does not incorporate the entirety of the registered Trademarks which use the phrase “godaddy.”

Respondent further argues that the word “up” does not have the same meaning, sound, or spelling as the word “go”. There are no common letters between the word “go” and the word “up”. In the typing of these two words, a person attempting to reach GoDaddy.com is entirely unlikely to reach the <updaddy.com> website instead.

Respondent notes that it has disclosed on its <updaddy.com> website home page that Respondent is a reseller for Go Daddy as required by its Reseller Agreement with Go Daddy, thus eliminating the likelihood that someone would become confused about the “source, sponsorship, affiliation or endorsement” of Respondent’s website.

(iii) Respondent asserts that it has rights to or legitimate interests in the Domain Names because Respondent was given permission to use Complainant’s branding in Respondent’s Reseller Agreement with Complainant. Respondent further asserts that it executed and paid for a valid Reseller Agreement on June 27, 2004.

Respondent asserts that after it entered into the Resell Agreement with GoDaddy, it registered <updaddy.com> in the Go Daddy reseller program and began reselling domain names and related services for GoDaddy. Respondent further asserts that it then began advertising the <updaddy.com> reseller website on Google.

Respondent asserts that Go Daddy knew or should have known that Respondent was relying on its Reseller Agreement and the <updaddy.com> Domain Name. Respondent further asserts that its records show the first complaint from Go Daddy was received in late September 2004, even though the Complainant cites an August 2004 date. Respondent notes that Go Daddy’s own records indicate that Respondent sold its first domain name to an outside party, through Go Daddy, on June 29, 2004.

Respondent admits the authority of The Stanley Works and Stanly Logistics, Inc. v. Cam Creek Co., Inc., WIPO Case No. D2000-0113:

Moreover, even if Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, (emphasis supplied) does not give the retail sellers rights of domain name magnitude over the manufacture’s trademarks.

Respondent argues that the branding provisions in the two potentially applicable Reseller Agreements with Complainant allow Respondent to use Complainant’s intellectual property.

Contract 1 Branding Provision

¶6. Branding – Registrar authorizes Reseller to co-brand the services by using Registrar’s name and logo along with Reseller’s name and logo. However, Reseller may not use the ICANN Accredited logo on Reseller’s marketing materials or web site.

Contract 2 Branding Provision

¶18. Wild West authorizes Reseller to brand the services by using [S]ellers name and logo along with Reseller’s name and logo. However, Reseller may not use the ICANN Accredited logo on Reseller’s marketing materials or website.

Respondent alleges that it added its logo or name to Go Daddy’s website so that it appears to the public that they are purchasing domain names and websites from Respondent instead of Go Daddy. Respondent further alleges that this is the way Go Daddy designed its system to operate. Respondent says it was simply following Go Daddy’s instructions. Thus, Go Daddy was fully aware, or should have been fully aware, of Respondent’s <updaddy.com> Domain Name from the start. Respondent argues that its domain reselling activities are not “directly competing domain registration and support services” to those offered by Complainant.

iv) Respondent denies that it registered or used the Domain Names in bad faith and that Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies:

After refuting the allegations that it breached Paragraphs 4(b)(i)-(iii), Respondent asserts that there is no evidence of bad faith based on Paragraph 4(b)(iv). Respondent alleges that it is offering “services identical to that of Go Daddy,” but that is doing so only because it has legitimately executed a Reseller Agreement with Go Daddy.

Respondent refutes that it has attempted to “create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of our web site.” Respondent alleges that it has added a footer to its website that informs the public that, “UpDaddy is an authorized reseller for GoDaddy Software Inc. or its subordinate affiliates”.

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 Respondent 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), n. 3.

Preliminary Issue of Standing

The Respondent has agreed to be bound by the terms of the Policy regarding disputes concerning the Domain Names. By electing to file its Complaint under the Policy, Complainant has consented to be bound by the Policy. The Complaint is filed to protect rights of a trademark owner, not rights as a registrar of domain names. Therefore, Complainant has standing to bring this action under the Policy.

The Respondent argues that the individual shareholders of the corporate entities named as the parties in this action are the real parties-in-interest. The Sole Panelist finds, from the record in this proceeding, that the relevant agreements are between the corporate entities and that the proper parties have been named.

Therefore, the Sole Panelist accepts this dispute for resolution under the Policy and will proceed to an analysis on the merits.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the Trademarks Go Daddy and GoDaddy.com. Respondent has not contested the existence or validity of these registrations. Therefore, the Sole Panelist finds that the registrations are valid and subsisting and serve as prima facie evidence of the Trademarks’ ownership and validity. 15 U.S.C. § 1115.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not attempted to rebut this presumption.

Complainant makes an additional argument that the phrase “Daddy” within the line of commerce including the domain name registration and website hosting has taken on a common meaning or secondary association with the Complainant. The Sole Panelist construes this as an argument that the term “Daddy” within the relevant line of commerce of domain name registration and web hosting is entitled to common law protection.

The evidence of Complainant is thin on this point. Complainant alleges without contradiction that it has provided Internet registration services since at least 1999. Complaint further alleges without contradiction that it is an ICANN accredited registrar of Internet second-level domain names under various top-level domains such as .com, .net and .org and the number one registrar of new domain names. Respondent, however, has adduced no evidence to refute these allegations. Respondent opines that a survey of users within the industry would associate “Daddy” with parentage or familial relationships. These musings are not evidence. Therefore on the basis of the record before me, the Sole Panelist draws the inference that Complainant has for many years done substantial business in the domain name registration and website hosting market and has achieved secondary association with the phrase “Daddy.” The Sole Panelist finds from the preponderance of the evidence in this proceeding that Complainant has common law rights in the phrase “Daddy.”

Identity or Confusing Similarity

Complainant further contends that the Domain Names are identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i). Respondent contests this contention by responding that the phrase “updaddy” does not use the entirety of the Trademarks which are for “Go Daddy.” The Sole Panelist agrees with Respondent that the Domain Names are not identical with or confusingly similar to the registered Trademarks.

However, the Complaint does have enforceable common law rights in the phrase “Daddy.” As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s protectable trademark.

The Domain Names incorporate the phrase “Daddy” in its entirety with the addition of the generic or descriptive prefix “up.” Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the common law mark “Daddy” pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights to or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Respondent asserts that it has rights to or legitimate interests in the Domain Names because Respondent was given permission to use Go Daddy and “Daddy” in its Reseller Agreement with Complainant.

The Sole Panelist must first determine whether the Reseller Agreement grants permission to the Respondent to use Complainant’s Trademarks as part of the <updaddy.com> Domain Name. The Sole Panelist interprets the contractual provisions regarding branding differently than Respondent. Nothing in these provisions gives Respondent the right to adopt “Go Daddy” or “Daddy” as part of Respondent’s own domain name. Therefore, the Sole Panelist concludes that Respondent does not have Complainant’s permission to use Go Daddy or “Daddy” except to co-brand a website using Respondent’s own name or logo. Respondent cannot use the purported permission of Complainant under the Reseller Agreement to establish rights to or legitimate interest in the Domain Names.

Respondent argues that Complainant knew or should have known about the use of <updaddy.com> as Respondent’s domain name for at least three months after the <updaddy.com> website was launched. Apparently, Respondent is arguing that Complainant has waived or should be estopped from challenging the Domain Names. The Sole Panelist further finds that, under the present circumstances, three months is not a sufficient period of time to apply the defenses of waiver or estoppel.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has 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 Respondent 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).

Without the permission of the Claimant to use Go Daddy or “Daddy,” the Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Domain Names. Respondent has vigorously contested each of these assertions by Complainant.

Complainant alleges that Respondent has not used the Domain Names in connection with a bona fide offering of goods and services. The sale of goods or provision of services under the Domain Names cannot be bona fide or legitimate because the use of the Domain Names was without Complainant’s permission and the Domain Names are confusingly similar to the common law rights of Complainant. The Sole Panelist agrees with the arguments of Complainant and finds that Respondent cannot establish rights to and interests in the Domain Names under Paragraph 4(c)(i).

Other than the launching and use of the <updaddy.com> website, Respondent does not present any evidence that it has been commonly know by the Domain Names or any derivation of the Domain Names. The Sole Panelist agrees with the arguments of Complainant and finds that Respondent cannot establish rights to and interests in the Domain Names under Paragraph 4(c)(ii).

Respondent does not allege that it is making a noncommercial or fair use of the Domain Names. The Sole Panelist agrees with the arguments of Complainant and finds that Respondent cannot establish rights to and interests in the Domain Names under Paragraph 4(c)(iii).

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is 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 web site 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 web site or location or of a product

Complainant alleges that the Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion. The record is clear that Respondent is exploiting the <updaddy.com> website for commercial gain. The Sole Panelist found above that the Domain Names are confusingly similar to the common law rights of Complainant pursuant to the Policy paragraph 4(a)(i).

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

Respondent argues that it has adequately disclosed its status as a reseller of Complainant on the <updaddy.com> website, thus disclaiming itself as the source of the <updaddy.com> website.

The use of a disclaimer or disclosure by Respondent is not sufficient to create a defense to bad faith under Paragraph 4(b)(iv) of the Policy. Even though a misdirected user may become aware that the <updaddy.com> website is not affiliated with the Complainant, the fact remains that the Respondent’s improper and unauthorized use of the “Daddy” name diverts persons seeking Complainant’s official website.

Based upon this evidence, the Sole Panelist finds that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Sole Panelist concludes (a) that the Domain Names are confusingly similar to Complainant’s common law rights in “Daddy” in the line of commerce of domain name registration and website hosting, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent 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
Sole Panelist

Dated: January 3, 2005

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0981.html

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