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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Quikbook, Inc. v Peloton-Mark Nichols

Case No. D2007-1370

1. The Parties

The Complainant is Quikbook, Inc, of New York, United States of America.

The Respondent is Peloton-Mark Nichols, The Internet Content Evangelist, of Belize City, Belize.

2. The Domain Name and Registrar

The disputed domain <quikbook.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2007. On September 19, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On September 20, 2007, eNom 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, the Complainant filed two amendments to the Complaint on September 24, 2007 and September 28, 2007. The Center verified that the Complaint and the amendments 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 October 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2007. No formal response was filed. However, the Respondent sent an email to the Center on October 22, 2007, only stating that “A single panelist is fine with me”, that four sets of “this response” would be sent in hard copy, and providing further contact details. The Center acknowledged its receipt of that email on October 22, 2007.

The Center appointed James A. Barker as the sole panelist in this matter on October 31, 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 Respondent provided no substantive Response and, as such, the following facts are not contested.

The Complainant is a privately held Delaware company. The Complainant has a number of service marks, registered on the principal register of the USPTO, that incorporate the term “quikbook”. These include the marks QUIKBOOK.COM, QUIKBOOK GREAT HOTELS GREAT PRICES, QUIKBOOK Q RATING, and QUIKBOOK INSIDER. The first of those marks was filed in 2001. The earliest filed mark was in 1994.

The Complainant uses its marks in connection with hotel reservation services. The Complainant states that it has been in continuous operation since it was founded in 1988.

The Complainant maintains a website at “www.quikbook.com”.

The Respondent registered the disputed domain name on October 16, 2006. On June 7, 2007, the Complainant’s representative sent a cease and desist letter to the Respondent, and resent it on July 6, 2007. The Complainant received no response.

The Complainant provided evidence that on September 7, 2007, the disputed domain name did not resolve to an active website. Rather, it resolved to a webpage that stated only that “This domain is currently pending development.” At the date of this decision, the disputed domain name resolved to a webpage containing only simple text. The webpage included the following statements:

“QuikBook.mobi(tm)- Audio Books and Short Stories Accessible via Your Mobile Device.

1.Childrens Books Ages 4-6

[…]

6.Teens Books Ages 16-19

[…]

15.Books by Author

16.Books by Title

Click here to test broadcasting of the BOOK Charlotte’s Web to your MOBILE device.

This website is currently pending additional construction.”

5. Parties’ Contentions

A. Complainant

The following is summarized from the Complaint.

The Complainant’s QUIKBOOK brand is well-known and famous in the travel industry, particularly in connection with hotel reservation services. The disputed domain name is identical to the Complainant’s mark. Internet users are likely to believe that the disputed domain name is related to or authorized by the Complainant.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant provided evidence that, at one point, the Respondent’s website was blacklisted for sending spam email. Such a use of the domain name is not a bona fide offering of goods or services, nor does it constitute a legitimate use.

The Respondent intends to mislead consumers by creating the impression that the spam email they are receiving is affiliated with the Complainant. Such a use tarnishes the Complainant’s mark and, as such, constitutes a bad faith use. The Respondent has no authorization from the Complainant to use its marks. Even if the Respondent changes his website he would still have acted in bad faith because bad faith is established at any time following the registration of the domain name in bad faith. The Respondent has also ignored the Complainant’s request to transfer the disputed domain name. In addition to actual knowledge of the Complainant’s mark, the Respondent has constructive knowledge under the law of the United States of America.

B. Respondent

The Respondent did not formally respond to the Complainant’s contentions. However, from the Respondent’s email to the Center (noted above) it appears that the Respondent is aware of these proceedings, and has received communications in connection with this case.

6. Discussion and Findings

The Complainant has the burden of proving all of the following, if it is to succeed, under paragraph 4(a) of the Policy:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered in bad faith and used in bad faith.

These three elements are discussed in turn as follows.

A. Identical or Confusingly Similar

The Complainant provided evidence of a number of its registered service marks that all variously incorporate the term “quikbook”. In all of those marks, the term “quikbook” is presented as the dominant textual element. It is the element that is consistently used in the Complainant’s marks.

The disputed domain name is not identical to those marks. It does however incorporate, without variation, the dominant textual element of those marks. As such, the disputed domain name is likely to create confusion with the Complainant’s mark, at the very least in the minds of those Internet users who recognize the Complainant’s marks.

It is well-established that, in determining confusing similarity under paragraph 4(a) of the Policy, the domain name extension is to be disregarded. As such, the “.mobi” extension is not relevant to, and so does not affect, the likely confusing similarity of the disputed domain name with the Complainant’s marks.

For these reasons, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out an illustrative list of circumstances which, if found by a Panel to be proved, demonstrate a respondent’s rights or legitimate interests. However the Respondent in this case has not provided evidence of any such circumstances, nor any other circumstances.

The Complainant has made out a prima facie case against the Respondent. In these circumstances, it is up to the Respondent to come forward and make a case to the contrary if it is to succeed on this ground (See item 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.). The Respondent has not done so.

There is otherwise no evidence in this case that the Respondent has a right or legitimate interest in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name; made demonstrable preparations to use the disputed domain name before notice of this dispute; or is making a legitimate noncommercial or fair use. Further, the Complainant provided evidence from the website “whois.domaintools.com” that the Respondent’s website was at one point “blacklisted” for sending out spam email.

As noted above (under ‘Factual Background’) the disputed domain name reverted to a rudimentary website at the date of this decision. That website purported to be in development to provide “books and short stories” via mobile devices.

However, this limited information does not of itself establish the Respondent’s rights or legitimate interests in the disputed domain name. This is because, firstly, the Respondent provided no supporting evidence that it has, in fact, developed the website for this purpose. Secondly, there is no evidence of the Respondent making demonstrable preparations in this respect prior to being notified of this dispute. Paragraph 4(c)(i) of the Policy provides that such demonstrable preparations would be evidence of a respondent’s rights or legitimate interests. Thirdly, the information on the Respondent’s website is minimal. It appears to the Panel to have taken very little effort to create. As such, this most recent content of the Respondent’s website is not persuasive evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering. Taking into account the other circumstances of this case, the statements on the Respondent’s website might easily have been included to create only the appearance of legitimacy. The Respondent has not provided any evidence to the contrary.

For these reasons, the Panel finds that the Complainant has made its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. As such, the Policy allows for the possibility that a respondent might register a domain name in bad faith, but not necessarily use it in bad faith, and vice versa.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, if found by the Panel to be proved, are evidence of both registration and use in bad faith. There is no evidence that the circumstances set out in that paragraph 4(b) are present in this case. The issue therefore is whether there is other evidence of bad faith registration and use.

The Panel finds that, in this case, there is evidence that the Respondent registered the disputed domain name in bad faith. That is, the evidence suggests that the Respondent knew of the Complainant’s mark, and intended (at least at the time of registration) to take an unfair advantage of it. As noted above, the Respondent has registered a domain name that is confusingly similar to the Complainant’s mark, and has provided no evidence of a right or legitimate interest in it. The Complainant provided evidence of having extensively advertised its marks, including on the Internet, such that its mark is well-known. While the QUIKBOOK element of the Complainant’s marks is arguably a phonetic description of the Complainant’s services, it also appears to have an element of invention in its spelling (“QUIK”) and in its combination of the terms “quik” and “book”. This suggests that it is less likely that a respondent would accidentally choose to register those terms without seeking to create an association with the Complainant’s mark. Further, even a simple Google search for that combination gives its top results as relating to the Complainant’s websites. This evidence suggests that the Respondent had the Complainant in mind when it registered the disputed domain name.

There is also evidence that the Respondent has used the disputed domain name in bad faith. In this case, there is evidence of three types of various ‘use’ of the disputed domain name by the Respondent, as follows:

- evidence that the IP address assigned to the disputed domain name was used, at least for a time, in connection with the sending of ‘spam’ emails (noted above);

- ‘inactive’ use for a period, where the disputed domain name reverted only to a website stating that “This domain is currently pending development”;

- use of the disputed domain name to revert to a website purportedly concerning “Audio Books and Short Stories Accessible via Your Mobile Device”.

The first type of use has been held to be support a finding of bad faith in previous decisions under the Policy. (See, for example, Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395 cited among others by the Complainant; as well as others including previous decisions of this Panelist: e.g. Nokia Corporation v. Durmus Dalda, WIPO Case No. D2006-0931). The second and third types of use necessarily indicate that the first has not continued. Anticipating this, the Complainant cites the decision in Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021, in which the Panel stated that “If at any time following the registration the name is used in bad faith, the fact of bad faith use is established.” The evidence of the Respondent’s IP addressed being used in connection with spam email, the Complainant argues, is suggestive of such bad faith, at one point in time.

But even if a more restrictive approach were taken, requiring continuous bad faith following registration, the evidence would not favor the Respondent in this case. The first type of use noted above is, by itself, suggestive of bad faith. In relation to the second type (inactive use), it is well-established that a lack of positive action may, in appropriate circumstances, be evidence of bad faith: See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In relation to the third type of use (the website purporting to relate to “Audio Books and Short Stories”), the Respondent provided no evidence to support a finding that this is a genuine purpose of its website, rather than content intended to create only the appearance of legitimacy. As noted above, the Panel believes the content of the Respondent’s website is, in itself, too insubstantial to displace the other evidence of bad faith use in this case.

For these reasons, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

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, <quikbook.mobi>, be transferred to the Complainant.


James A. Barker
Sole Panelist

Dated: November 14, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1370.html

 

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