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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sidestep, Inc. v. Anna Valdieri/Marco Ferro
Case No. D2007-0212
1. The Parties
The Complainant is SideStep, Inc., of California, United States of America, represented by Morrison & Foerster, LLP.
The Respondents are Marco Ferro/Anna Valdieri, of Fribourg, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <sidestep.org> is registered with Bizcn.com,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2007, and originally designated Marco Ferro as the sole Respondent. On February 16, 2007, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 26, 2007, Bizcn.com, Inc. transmitted by email to the Center its verification response providing the contact details for the administrative and technical contact. Bizcn.com, Inc. advised that the registrant of the disputed domain name was not Marco Ferro but Anna Valdieri, although the name Marco Ferro appeared in the administrative contact information, and in the email address of the registrant. Noting that the InterNIC whois database showed that the registrant of the disputed domain name was in fact Marco Ferro, the Center requested further clarification from Bizcn.com, Inc., but did not receive adequate clarification. The Center notified the Complainant of the conflicting information on March 8, 2007, and requested that the Complaint be amended. On March 9, 2007, the Complainant filed with the Center an amendment to the Complaint adding Anna Valdieri as a Respondent. The Center verified that the Complaint, and the amendment to the Complainant, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint and the amendment to the Complaint, and the proceedings commenced on March 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2007. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 3, 2007.
The Center appointed David J.A. Cairns as the Sole
Panelist in this matter on April 17, 2007. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
The Complainant is SideStep Inc. a Delaware corporation based in Santa Clara, California, providing internet travel related information and comparative pricing to consumers through its toolbar and various websites.
The Complainant is the registered owner of the following trademark registrations for the word mark SIDESTEP: (i) United States Patent and Trademark Office registration No. 2646759 in connection with “electronic commerce services, namely providing a web site to enable users to make reservations and bookings for transportation and vacation services”, registered on November 5, 2002 and based on a first use in commerce of November 2000; (ii) Canadian Intellectual Property Office registration Nє TMA 646,695 registered on August 25, 2005; and (iii) EU Register of Community Trade Marks, registration Nє 003850252, registered on November 12, 2005.
In addition, the Complainant owns the domain name <sidestep.com>, through which it runs the website which serves as its internet travel search engine for consumers.
The Respondents are Marco Ferro and Anna Valdieri with address in Fribourg, Switzerland.
The Respondents registered the disputed domain name
<sidestep.org> on October 12, 2005. The disputed domain name hosts a landing
page called travelreservation.org, offering travel reservations and related
services. This landing page has a series of headings such as ‘Airline
Tickets’, Cheap Car Rental’, Discount Air Tickets’, ‘Last
Minute Airfare’, Air Travel Discount’. These headings lead to various
sponsored links and ‘top sites’.
5. Parties’ Contentions
The Complainant SideStep Inc. is a Californian corporation providing well known and widely used internet services to search, compare and facilitate the booking of air travel, cruises, hotels, and other travel related services. The Complainant provides these service to its consumers through a SIDESTEP toolbar and its “www.sidestep.com” website. The Complainant launched its website in October 2000, and it is presently visited by more than 5 million users per month in order to search for travel related offers.
The Complainant alleges that the disputed domain name incorporates its well known SIDESTEP mark in its entirety and therefore is identical and confusingly similar to its mark. It contends that the use of the suffix ‘.org’ is inconsequential when determining whether or not a domain name is confusingly similar to the Complainant’s mark.
The Complainant states that it has been using the SIDESTEP mark for nearly seven years and has built up a significant amount of consumer awareness for this mark. It states that it has never licensed or authorized the Respondents to own or use the disputed domain name and that there is no evidence to show that the Respondents have or are commonly known by the disputed domain name or have otherwise acquired trademark rights in the SIDESTEP mark. The Complainant contends that the Respondents are not using the disputed domain name in connection with a bona fide offering of goods and services or with a legitimate non-commercial or fair use. Instead, they are intending to confuse consumers and appropriate the goodwill associated with the Complainant’s mark by using the disputed domain name as a link to another website offering travel-related services.
The Complainant contends that the fact that the disputed domain name incorporates Complainant’s well known SIDESTEP trademark in its entirety is by itself strong evidence of the Respondents’ bad faith. Moreover, the Complainant states that the Respondents’ use of a domain name that is virtually identical to Complainant’s SIDESTEP trademark in connection with goods and services that are competitive or closely related to Complainant’s goods and services is clearly calculated to attract for commercial gain Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation and endorsement of the Respondents’ website and good and services. Finally, the Complainant points out that a review of other domain names registered by the Respondents reveals that they have registered several domain names containing registered trademarks from other trademark holders such as <microsoftoffice.org>, <unitedairline.org> or <firstcommercialbank.org>.
The Respondents did not reply to the Complainant’s
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the Respondents’ domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondents have rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns the registrations referred to above for the SIDESTEP trademark.
In determining whether a disputed domain name is identical or confusingly similar
to the Complainant’s trademark the relevant comparison involves
the second-level portion of the domain name only (here, ‘sidestep’).
Clearly a trademark does not usually include a URL prefix (here, “www”),
or a top-level domain name suffix (here, ‘.org’) that are functional
elements of a domain name, and the comparison required for the first element
of the Policy must exclude these elements. These elements are incapable of performing
any distinctive function, and it is well-established that they should not be
considered in making this determination (see Patricia Ann Romance Peterson,
Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods,
WIPO Case No. D2006-1431 (February 25,
2005), D. Ronaldo de Assis Moreira v. Eladio Garcнa Quintas, WIPO
Case No. D2006-0524 (July 14, 2006) and LDLC.COM v. LaPorte Holdings,
WIPO Case No. D2005-0687 (August 8,
On this basis, the Panel finds that the disputed domain name is identical with the Complainant’s SIDESTEP trademark. Accordingly, the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondents in the disputed domain name: (i) there is no evidence before the Panel that the Respondents have any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondents are not authorized or licensed by the Complainant to use the SIDESTEP trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondents have been commonly known by the disputed domain name; (iv) there is no evidence of legitimate non-commercial or fair use of the disputed domain name.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondents have rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondents’ use of the disputed domain name is for commercial gain through sponsored links, and also that the use of the disputed domain name to attract Internet traffic to a competing website by deception (that is, by suggesting the website relates in some manner to the SIDESTEP trademark) is not a use in connection with a bona fide offering of goods or services.
Accordingly, and in the absence of any response from the Respondents providing any evidence to support a possible basis on which the Respondents may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondents have no rights or legitimate interests in respect of the disputed domain name.
Thus, the second element of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, Paragraph 4(b)(iv) states that if the Panel finds that the Respondents have used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
The Panel finds that the evidence submitted by the Complainant is sufficient to support a finding of bad faith under Paragraph 4(b)(iv). The Respondents’ use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the fact that the disputed domain name hosts a website containing sponsored links. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is identical to the SIDESTEP trademark, and the evidence of the substantial public recognition and goodwill associated with the SIDESTEP trademark.
The fact that the disputed domain name hosts a website called ‘travelreservations.org’ providing a series of links for travel-related services aggravates the likelihood of confusion with the Complainant’s trademark, and is corroborative evidence of bad faith. The word ‘sidestep’ has no natural travel-related connotation as an ordinary English word, and so the Panel concludes that the Respondents’ choice of this name to offer the same type of services as those for which the Complainant is so well known was deliberate, and with knowledge of and intention to benefit from the Complainant’s goodwill.
Accordingly, the third element of the Policy is also satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sidestep.org> be transferred to the Complainant.
David J.A. Cairns
Dated: May 1, 2007