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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DigiPoll Ltd. v. Domain Administrator

Case No. D2007-0999

1. The Parties

The Complainant is DigiPoll Ltd of New Zealand, represented by Stephen Mascarenhas of New Zealand.

The Respondent is Domain Administrator of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <epollster.com> is registered with Name2Host.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2007. On July 12, 2007, the Center transmitted by email to Name2Host a request for registrar verification in connection with the domain name at issue. On July 11, 2007, Name2Host transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, dated September 4, 2007, the Complainant filed an amendment to the Complaint on September 5, 2007. The Center verified that the Complaint together with the amendment to the Complaint 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2007.

The Center appointed Dennis A. Foster as the sole panelist in this matter on October 16, 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 a New Zealand company that has been in the business of conducting polls since 1997. For at least the last eight years, those polls – for market research, political proceedings and to test public opinion on various issues – have been rendered by the Complainant under its service mark EPOLLSTER.

The Respondent registered the disputed domain name on June 2, 2007. Previously, the Complainant had licensed use of the name from its director, who owned the name for eight years prior to registration by the Respondent. The disputed domain name now hosts a website that offers links to various other websites that advertise various goods and/or services.

5. Parties’ Contentions

A. Complainant

- The Complainant has been in business since 1997 as a New Zealand registered private limited company that provides field work for market research and public opinion polls. Starting as a “survey research unit” at the University of Waikato, the Complainant has developed a reputation in New Zealand and in some other countries, including the United States of America, the United Kingdom, Australia, South Africa and India.

- The Complainant takes particular pride in its precision polling on topical and controversial issues of worldwide importance. It also conducts pre-election and other political polls, and its polls have been widely quoted and reported as accurate and reliable.

- When conducting polls over the telephone, the Complainant uses either the name DIGIPOLL or EPOLLSTER. The Complainant has used the latter name with the full consent of the original owner of the disputed domain name <epollster.com>, who is also the Complainant’s principal shareholder and director. The Complainant also owns the domain names <epollster.co.nz>, <epollster.net>, <epollster.org>, <epollster.co.in> and <epollster.in>, all of which direct Internet users to its website.

- The Complainant has developed much goodwill and common law rights in its service mark, EPOLLSTER, through consistent use of the mark over at least the last eight years. The Complainant has even registered a company under that name in India.

- Due to a clerical error, the Complainant did not re-register the disputed domain name. When it became available again, on June 2, 2007, the Complainant attempted to obtain the name, but was preceded by the Respondent.

- The Complainant attempted to contact the Respondent concerning a transfer. When there was no response, the Complainant sent the Respondent a cease and desist letter asserting its rights to the disputed domain name on June 15, 2007.

- The Respondent finally responded to the Complainant, indicating confusion as to the Complainant’s claims in the absence of a registered service mark. Subsequently, the Complainant offered to reimburse the Respondent for registration costs, which the Complainant generously estimated to be $500 USD. The Respondent did not respond to the offer.

- The Respondent is currently using the disputed domain name for a website that lists links to random third party website advertisers, apparently on a revenue-per-click basis. Such use will result in significant damage to the Complainant’s reputation as an independent pollster if Internet users confuse the name with the Complainant’s operations.

- The disputed domain name is identical to the Complainant’s mark.

- The Respondent, unknown to the Complainant, has no rights or legitimate interests in the disputed domain name. The Respondent has used the domain name neither in a bona fide offering of goods or services nor for noncommercial or fair use purposes.

- The Respondent registered and is using the disputed domain name in bad faith. The Respondent undoubtedly registered the name with the intent to sell it to the Complainant for a sum far in excess of the Respondent’s actual registration costs. Certainly, the Respondent is attempting to profit from the likely confusion with respect to the source, sponsorship, affiliation, or endorsement of the Respondent’s website resulting from its use of the Complainant’s mark in the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraphs 4(a)(i) through (iii) of the Policy, the Complainant may succeed and obtain transfer of the disputed domain name <epollster.com> through this administrative proceeding provided that the Complainant can prove the following:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant does not contend that it possesses a valid registration for its service mark EPOLLSTER in any country in the world. However, that does not necessarily preclude a finding by the Panel that the Complainant has the requisite rights in that mark for purposes of paragraph 4(a)(i) of the Policy, as has been long noted by prior UDRP panels. See, for example, Great Plains Metromall, LLC v. Gene Creach, NAF Case No. FA97044 (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); and The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050.

In determining if a complainant has defendable rights in an unregistered mark, previous panels have analyzed whether that complainant has established common law rights in the mark by creating a secondary meaning in that mark directly associated with the complainant. Factors typically considered in such an analysis are longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

The Complainant contends that it has used its service mark, EPOLLSTER, for at least eight years in conducting many different polls in and outside of New Zealand. Moreover, the Panel notes that the Complainant’s use of several domain names to promote its services has undoubtedly fostered considerable recognition of its mark. While the Complainant has not furnished the Panel with sales figures or advertising budgets relating to its services under the mark, the Complainant does contend that its polls have been widely quoted and reported as accurate by various media sources. These contentions and inferences are not contested by the Respondent, who has not troubled itself with filing a Response. Therefore, the Panel accepts the Complainant’s reasonable contentions in this regard. For prior UDRP cases supporting this general principal in assessing the veracity of contentions, see Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095 (“The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.”); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

Certainly, eight years of consistent use is sufficient time for the Complainant to have achieved a secondary meaning in its service mark. See Kahn Development Company v. RealtyPROshop.com c/o Carl Krause, NAF Case No. FA568350(where the trademark at issue, VILLAGE AT SANDHILL, was in use for only about three years before the corresponding Policy proceeding); and CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc., WIPO Case No. D2004-1072 (where the trademark in question, CAVINKARE, was in use for approximately seven years before the corresponding Policy proceeding). Such length of use, combined with the Complainant’s on-line promotions and the media reviews of its polling services, persuades the Panel that the Complainant has acquired common law rights in its service mark. The Panel reaches this conclusion despite the descriptive nature of the mark, which is discussed in greater detail below.

The Panel also finds the disputed domain name <epollster.com> to be identical to the Complainant’s mark, EPOLLSTER.

As a result, the Panel determines that the Complainant has succeeded in demonstrating that the disputed domain name is identical or confusingly similar to a service mark in which it has rights.

B. Rights or Legitimate Interests

Although the Policy places upon the Complainant the burden of proving the elements required by paragraph 4(a)(ii), the consensus approach applied by prior Policy panels calls for the Complainant to bring forth merely a prima facie case before the burden shifts to the Respondent to produce evidence sufficient to establish its rights or legitimate interests in the disputed domain name. See, Clerical Medical Investment. Group Limited v. Clericalmedical.com, (Clerical & Medical Services Agency), WIPO Case No. D2000-1228; and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

Given that the Complainant, through the issuance of a “cease and desist” letter, has implied that the Respondent lacks authorization to use the Complainant’s mark EPOLLSTER in a domain name, the Panel accepts that the Complainant has satisfied its obligation to come forward with its prima facie case.

In the absence of a Response, the Panel is left on its own to decide, based on other portions of the record, whether the Respondent can meet the shifted burden. The Panel will begin by determining if the Respondent can comply with any of the criteria listed in paragraph 4(c) of the Policy, as follows:

(i) before any notice to the Respondent of the dispute, did the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

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

(iii) is the Respondent making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue?

Since the record discloses no apparent name for the Respondent (other than “Domain Administrator”, the Panel can swiftly eliminate criterion (ii) above as inapplicable. Moreover, based upon the Complainant’s representations that the Respondent is using the disputed domain name simply to serve as a click-through link to third party websites (which representations the Panel considers to be true, as explained above), the Panel discerns no evidence that the Respondent is making noncommercial or fair use of that name (and indeed may be tarnishing it), canceling the applicability of criterion (iii) above. Finally, the Respondent cannot rely on compliance with criterion (i) above, as many prior decisions have held – and the Panel agrees – that using a disputed domain in the manner described in the preceding sentence is not a bona fide offering of goods or services. See Seiko Kabushiki Kaisha d/b/a Seiko Corporation v. CS into Tech, NAF Case No. FA198795; and WeddingChannel.com Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking, NAF Case No. FA156716 (“Respondent has always used the disputed domain name to redirect Internet users to websites unrelated to the WEDDING CHANNEL mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user. This diversionary and commercial use of Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i)...”).

While the Panel has determined that the Respondent cannot meet any of the criteria so set in paragraph 4(c) of the Policy, the Panel will consider one more rationale supporting the Respondent’s claim to rights and legitimate interests in the disputed domain name, to wit: the Respondent has registered a simple dictionary term. Some prior UDRP panels have found that a respondent may have rights or legitimate interests in disputed domain names consisting of so-called dictionary or descriptive words or phrases even if those names are confusingly similar to a valid trademark or service mark. See, for example, InCorp Services, Inc. v RareNames, WebReg, NAF Case No. 559911; and Front Range Internet, Inc. v. David Murphy a/k/a This Domain For Sale, NAF Case No. FA145231.

The Panel has consulted an English language dictionary that defines “pollster” as “one that conducts a poll or compiles data obtained by a poll.” The addition of a preceding “e” to make “epollster” hardly reduces the descriptive nature of the term, since the Panel notes the current common practice of using the letter “e” as short for “electronic” and then applying that letter to connote electronic or Internet transmission of the service or item defined by the word or term to which it is attached (e.g., “e” to “mail” to make “email”). Thus, the Panel recognizes “epollster” to be a descriptive term meaning “one that conducts a poll, or compiles data obtained by a poll, through use of electronic or Internet devices.”

However, the Panel’s finding that the disputed domain name is composed entirely of a descriptive term does not in and of itself confer to the Respondent rights and legitimate interests in the same. Instead, the Panel recognizes the validity of and adopts the test articulated in the prior Policy case, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, in which circumstances similar to those in the instant case were considered. In that earlier case, concerning the respondent’s rights and legitimate interests in the disputed domain name <wcmh.com>, the panel set forth the conditions necessary to sustain the respondent’s position, as follows:

(1) the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;

(2) the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;

(3) the domain name in question is a “dictionary word” or a generic or descriptive phrase;

(4) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and

(5) there is no evidence that the respondent had actual knowledge of the complainant’s mark.

When applying the preceding five conditions to the record in this case, the Panel quickly determines that, in the absence of any response from the Respondent, it cannot possibly succeed with respect to condition (2) above and thus does not satisfy all of the conditions. Therefore, the Respondent has failed to rebut the Complainant’s prima facie case as accepted by the Panel above.

As so reasoned, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant has convinced the Panel that the Complainant has built significant brand recognition for its service mark in New Zealand and other English-speaking countries. The Panel also accepts the reasonable assertion that the Respondent is using the disputed domain name, which is identical to the Complainant’s mark, to divert Internet users to other websites for click-through fees. As a result, the Panel concludes that the Respondent’s conduct fits squarely within the circumstance – a circumstance which allows for a finding of bad faith registration and use of a disputed domain name – set forth in paragraph 4(b)(iv) of the Policy, to wit: by using the disputed domain name, the Respondent has intentionally attempted 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 the Respondent’s website or location or of a product or service on its website or location. For supporting prior Policy decisions see, for example, Securities Investor Protection Corporation v. Kevin Daste, NAF Case No. FA1065829 (“…Respondent has used this confusion to commercially gain by generating click-through revenue with third-party website hyperlinks displayed on the website located at the disputed domain name. The Panel finds this activity constitutes bad faith registration and use under Policy ¶ 4 (b)(iv)”); and also Bank of American Fork v. Jinyang Shen, NAF Case No. FA699645 (“Respondent’s…use of the Domain Name to attract consumers…to a commercial web directory featuring links to content unrelated to Complainant is evidence of bad faith because Respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third party websites.”).

Accordingly, the Panel rules that the Complainant has shown that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

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 <epollster.com> be transferred to the Complainant.

Dennis A. Foster
Sole Panelist

Dated: October 30, 2007