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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Generations Network, Inc. v. 6684874 Canada Inc.

Case No. D2008-0606

 

1. The Parties

1.1 The Complainant is The Generations Network, Inc., of Provo, Utah, United States of America, represented by Fillmore Spencer, LLC, of United States of America.

1.2 The Respondent is 6684874 Canada Inc., of St-Laurent, Quebec, Canada, represented by Saul Ewing LLP of United States of America.

 

2. The Domain Names and Registrar

2.1 The disputed domain names are:

<australian-ancestry.com>

<searchyourgenealogy.com>

(the “Domain Names”) and are registered with Tucows (the “Registrar”).

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2008. On April 18, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. Later the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details it held for the Respondent.

3.2 On April 28, 2008, the Center notified the Complainant that the Complaint was administratively deficient in that it did not identify the remedies sought by the Complainant in the proceedings. On April 29, 2008 the Complainant filed an amendment to the Complaint. The Center verified that the Complaint as amended 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”).

3.3 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 May 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2008. The Response was filed with the Center on May 22, 2008.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 28, 2008. 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

4.1 The Complainant is a Delaware Corporation based in Utah and engaged in the business of offering various genealogical research services and resources. These have been offered on the Internet from a number of domain names including <ancestry.com> and <genelogy.com> since 1996 and 1999 respectively. The website at “www.ancestry.com” provides a resource of over 5 billion names and 23,000 searchable databases.

4.2 The Complainant’s services are not limited to the United States of American (“U.S.”). For example, its products and services have been offered in Canada since 2000 from the domain name <ancestry.ca> and in Australia since 2006 from the domain name <ancestry.com.au>.

4.3 It is the owner of the following trade marks:

(i) U.S. Trademark Registration No. 2521336 for the word mark GENEALOGY.COM in the USPTO Supplemental Register dated December 18, 2001 (the “GENEALOGY.COM US Mark”).

(ii) U.S. Trademark Registration No. 1577711 for the word mark ANCESTRY dated January 16, 1990 (the “ANCESTRY US Mark”).

(iii) Community trade mark registration No.1925486 for the word mark ANCESTRY dated March 5, 2002 (the “ANCESTRY CTM”).

4.4 The Complainant is also the owner of various trade mark applications that incorporate the words “ancestry” and “geneaology”.

4.5 The exact status and nature of the Respondent is unknown. The address it gives for itself is PO Box 178, St Laurent in Quebec H4L 4VS.

4.6 The <australian-ancestry.com> Domain Name was registered on August 20, 2007.

4.7 The <searchyourgenealogy.com> Domain Name was registered on August 30, 2007.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant claims that by reason of its activities GENEALOGY.COM is “one of the most trusted and most-visited family history sites on the Internet” and that ANCESTRY.COM is “the #1 online source for family history information, including the web’s largest collection of historical records”.

5.2 The Complainant contends that the Domain Names are identical and confusingly similar to its service marks. Whilst at first sight it seems that the “marks” relied upon are its various registered trade marks and applications, it may be that the Complainant’s claims are somewhat wider than this. In particular, under the heading “no rights or legitimate interests” there is reference to “registered and common law trademark rights in its GENEALOGY.COM and ANCESTRY.COM trademarks and domain names”.

5.3 Because the “Claimant’s use of its marks” is said to predate the registration of the Domain Names, this is claimed to constitute a “prima facie showing by [the] Complainant of absence of [Respondent’s] rights or legitimate interests” in the Domain Names.

5.4 The Complainant contends that “no actual services” are provided by the Respondent from the Domain Names and that “it appears [the Domain Names] are hosted on a server being used by the Russian Business Network (RBN), a well-known cybercrime enterprise.”

5.5 Registration in bad faith is said to be established in the following ways:

(a) The fact that the Domain Names incorporate the Complainant’s domain names and trade marks

(b) The Domain Names are not being used for a legitimate service and “are apparently being run by a well-known cybercrime enterprise or its affiliates”

(c) The text of the website operating from the <searchyourgenealogy.com> makes reference to what “Ancestry” can do and that it is thereby falsely identifying itself as the Complainant. The exact text relied upon is as follows:

“Ancestry lets you discovery [sic] who you really are by giving you the tools to learn more about your family history. Find out about the people who made us who we are today. With Ancestry you can create your own family trees, search historical records and get advice from Ancestry’s on-line community.”

(d) The font colours and layout of the website operating from the <searchyourgenealogy.com> is said to mimic that of the Complainant’s “www.ancestry.com” site.

(e) The Respondent is said to be using the Domain Names so as to attract Internet users to the Respondent’s web site for commercial gain by creating a likelihood of confusion with the Complainant’s mark in the manner falling within paragraph 4(b)(iii) and (iv) of the Policy.

(f) The Respondent failed to respond to the Complainant’s letter of March 12, 2008 in which the Complainants lawyers demanded that the Respondent transfer the Domain Names to the Complainant.

B. Respondent

5.6 The Response can be summarised as follows:

5.7 The Respondent refers to the fact that the U.S. Trademark Registration No. 2521336 is only registered on the Supplemental Register. It claims that it “is a basic tenant of trademark law that, unlike Principal Register registrations, Supplemental Register registrations do not enjoy any prima facie or conclusive presumptions of validity or exclusive right to use the mark”.

5.8 It claims that since “searchyourgenealogy.com” is a descriptive phrase, used to “accurately describe the services offered via Respondent’s website” it cannot be identical or confusingly similar to <genealogy.com>.

5.9 Reference is also made to various third party trade mark registrations that include the word “genealogy”, and the generic definition of the word is provided. Further, reference is made to numerous other domain names that include the term “genealogy” and which are used for the provision of genealogical or ancestry searching services. Such pervasive use of the term is said to be sufficient to render the mark generic under U.S. law.

5.10 U.S. Trademark Registration No. 1577711 for the word mark ANCESTRY is said to have only been allowed “after an adequate showing under 35 USC 1052(f)”. The Respondent also claims that ANCESTRY is not a famous mark, and again reference is made to third party use of the term in other trade marks and domain names. It also claims that “Australian” is the dominant part of the <australian-ancestry.com> Domain Name and that therefore this Domain Name is not confusingly similar to the Complainant’s mark.

5.11 So far as rights and legitimate interests are concerned the Respondent disagrees with the Complainant’s contention that the fact that its marks predate the Respondent’s registrations means that there is an absence of rights or legitimate interests.

5.12 It claims that so far as the Domain Names are concerned, it is conducting a bona fide offering of services on its web sites, namely, “providing functionality permitting subscribers access to databases of information that allow the subscriber to perform” in the case of <searchyourgenealogy.com>, “genealogy services” and in the case of <australian-ancestry.com>, “Australian ancestry searches”. It provides two sample “Report/Search result[s]” said to be generated by performing searches at those sites. That evidence takes the form of two printouts as follows:

(a) A single page document which looks like it is a printout of the first page of a search under taken on the “Family History” search database of the “www.recordsarea.com” website by a person operating under the account name “cohenoshri@hotmail.com”.

(b) A single page document which looks like it is a printout of the first page of a search against the name “Brown” and with the words “Australian Geneology [sic] Records” in the top left hand corner.

5.13 Further, the Respondent contends that in each case it is seeking “to profit legitimately from the generic/descriptive value of a phrase”. Any confusion is said to be “a result of [the] complainant’s selection of a term so weak that it is not entitled to trademark protection”.

5.14 So far as bad faith registration is concerned, the Respondent refers to various cases under the Policy in which registration of a “generic” term was held not to constitute bad faith. It claims that it had “no knowledge of Complainant’s business or Complainant’s use of GENEALOGY.COM” or the Complainant’s “use of [<]ancestry.com[>]” prior to registering the Domain Names.

 

6. Discussion and Findings

6.1 Paragraph 15(a) of the Rules directs the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and the principles of law that the Panel deems applicable.

6.2 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

6.3 The Panel deals with each of these elements in turn. Before it does so there is a point that the Panel believes that is useful to make at the outset. The form of the Response in this case is in a format that in this Panel’s experience has become quite common in those cases where a respondent is legally advised and claims to have registered a domain name with a “generic” or “descriptive” meaning. In particular, the Respondent provides extensive evidence as to the alleged generic nature of the words used in the domain name, and cites a large number of previous cases under the Policy where such complaints in respect of descriptive terms were rejected.

6.4 In some cases such material can indeed be useful, but it is usually of secondary importance to a respondent explaining frankly and with clarity, what exactly it is, where it is located, what business is it engaged in, the exact circumstances surrounding the choice of the domain name in issue and what it is using the domain name for and providing evidence in relation to these issues.

6.5 The present case is one where, whilst the Respondent has produced a 20 page Response and several hundred pages of supporting material, there is very little description or explanation of the Respondent’s activities and a paucity of evidence to support the explanation given. It seems to amount to an assertion that it is engaged in the provision of genealogical services on the web, the Domain Names were registered for use with these services and that it was unaware of the Complainant at the time the Domain Names were registered. The only further evidence offered in support is two printouts which are said to represent the results of the performance of searches undertaken on the Respondent’s websites and which have already been described above. No evidence is offered as to the Respondent’s corporate existence or the size of its business, and no evidence is offered from the person or persons who were responsible in this case for the choice of the Domain Names.

6.6 Whilst it remains incumbent on a complainant to prove its case, where a respondent adopts this approach, it is engaged in a risky strategy. To put so much effort into one aspect of the case, but to avoid addressing in any detail the key issues of fact that are usually far more important, invites scepticism on the part of a panel in relation to a respondent’s factual claims.

A. Identical or Confusingly Similar

6.7 The position so far as the <australian-ancestry.com> Domain Name is concerned can be addressed relatively quickly. The Complainant appears to have at least two registered trade marks that comprise the word “ancestry” i.e., the ANCESTRY U.S. Mark and the ANCESTRY CTM. The Respondent claims that originally the Ancestry US Mark was refused registration as descriptive, but appears not to deny that the mark is now validly recorded on the register. Further, the Respondent makes no submission or challenge in relation to the ANCESTRY CTM.

6.8 In the circumstances, it is clear that the Complainant has trade marks with the word “ancestry”. The Panel also accepts that the <australian-ancestry.com> Domain Name is confusingly similar to these trade marks.

6.9 Whilst not discounting the possibility that in some cases the potential generic nature of the terms embodied in a mark and a domain name may have an impact on the assessment of whether the two are confusingly similar, in this case the Panel is unconvinced. The Domain Name in this case comprises the entirety of the trade mark relied upon, prefixed with the word “Australian”. It forms a prominent part of the Domain Name. The Panel also takes notice of the fact that there have been a large number of decisions under the Policy that have suggested that the confusing similarity test involves a “low threshold” (see for example, Asset Marketing Systems, LLC v. Silver Lining, WIPO Case No. D2005-0560 and Linear Technology Corporation v. Spiral Matrix, WIPO Case No. D2006-0699).

6.10 In the circumstances, so far as <australian-ancestry.com> is concerned the Complainant has made out paragraph 4(a)(i) of the Policy.

6.11 The position so far as <searchyourgenealogy.com> is concerned is more problematic. The main mark relied upon by the Complainant in this respect is the U.S. GENEALOGY Mark. This is registered in the U.S. Supplemental Register. The current Panel, not comprising a trained U.S. trade mark lawyer, is somewhat ill-equipped to form a view as to the status of a mark on the Supplemental Register and in particular whether this can constitute a mark for the purposes of the Policy. Nevertheless, the Panel notes that the Respondent in this respect cites the case of America’s Community Bankers Corporation v. Charles R. Wing and Wing Broadcasting Inc., WIPO Case No. D2000-1780. In that case the panel, comprising a U.S. panelist, held as follows:

“Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS are registered on the Supplemental Register. The Trademark Act provides for the registration of trademarks on either the Principal or Supplemental Registers. “Generic” terms are not registrable on either Register. PTO Trademark Manual of Examining Procedure (“TMEP”) § 1209.01(c). “Descriptive” marks, those that immediately convey information about a quality or characteristic of a product or service, are registrable on the Supplemental Register. TMEP § 202.02(b). The Principal Register is designed for arbitrary and suggestive terms, and for “descriptive” marks that have acquired distinctiveness. Id. The Supplemental Register is reserved for marks “capable of distinguishing applicant’s goods or services not registrable on the principal register . . .” 15 U.S.C. § 1091(a). Unlike Principal Register registrations, Supplemental Register registrations do not enjoy any prima facie or conclusive presumptions of validity or exclusive right[s] to use the mark. 15 U.S.C. § 1115(a). Registration of a mark on the Supplemental Register has been held to constitute an admission that the mark is merely descriptive. E.g., Clairol Inc. v. Gillette Co., 389 F2d 264 (2d Cir. 1968). However, registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness. 15 U.S.C. § 1095.

Complainant has neither alleged in its Complaint nor submitted any evidence that its admittedly descriptive marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS have acquired distinctiveness. Relying solely upon Complainant’s registrations on the Supplemental Register, the Panel must conclude that Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS are descriptive terms that have not acquired distinctiveness. Accordingly, the Panel finds that Complainant has not proven the first prong of the UDRP, which provides that the complainant must have rights in the mark upon which the complaint is based. For this reason, the Panel need not examine whether the Domain Names are confusingly similar to Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS. Consequently, the Panel need not examine whether Respondent has any rights or legitimate interests in the domain names <americascommunitybanks.com>, <americascommunitybanks.net>, and <americascommunitybanks.org>, or whether Respondent registered and used those domain names in bad faith. The Panel’s finding under UDRP Section 4(a)(i) does not mean that Complainant’s marks AMERICA’S COMMUNITY BANKER and AMERICA’S COMMUNITY BANKERS have not acquired distinctiveness, but rather simply means that no evidence of acquired distinctiveness has been presented to the Panel.”

6.12 Similarly, but more recently, the Panel notes that in Doheny Plumbing, Inc. v. PAO Industries, Inc., WIPO Case No. D2007-1827 the panel, compromising a U.S. panelist, stated:

“Where a mark is registered on the Supplemental Register, previous decisions under the Policy have found that a “Complainant must show that the mark is used as a trademark or service mark and in such use, the mark has acquired distinctiveness for the Complainant’s goods or services” because “Registration on the Supplemental Register is an indication that the mark has not acquired distinctiveness, at least at the time of the registration.” Kip Cashmore v. URLPro, WIPO Case No. D2004-1023 (internal punctuation and citation omitted); see also The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438. As in Kip Cashmore, “[t]he record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin of services.” In this proceeding, the Complainant has provided no evidence to establish that the mark at issue has acquired distinctiveness.”

6.13 So it would appear that what the Panel must do in a case such as this is to investigate whether there is sufficient evidence before it to justify a conclusion that the GENEALOGY.COM U.S. Mark has acquired distinctiveness.¹ The Panel is unconvinced the Complainant has done so on the provided record this in this case. The Complainant contends that “GENEALOGY.COM is one of the most-trusted and most-visited family history sites on the Internet” but no evidence is brought forward to explain exactly what this means. No description of how the name is perceived is proffered and no explanation of the financial size of the business or even the number of people that use the site is given. It states that it first launched the web site in March 1999 but it would appear that by December 18, 2001 (i.e., the date upon which the mark was registered in the Supplemental Register) it had not acquired distinctiveness. No compelling evidence is brought forward to the effect that things may have changed since that date.

6.14 These are not the only purported rights relied upon by the Complainant in relation to the “genealogy.com” name. There are a series of U.S. trademark applications. However, these applications remain pending. The issue of the extent to which a trade mark application might grant rights for the purposes of the Policy was addressed by this Panel in detail in Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994. For the reasons given in that decision, this Panel concluded that ordinarily a community trade mark application alone would not provide sufficient rights for the Policy. This Panel also held in Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695 that the position is the same in the case of U.S. trade marks.

6.15 In the circumstances, the Panel concludes that the Complainant has been unable to show here that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. Although the GENEALOGY.COM mark’s inclusion on the Supplemental Registrar does not preclude a finding of acquired distinctiveness in the mark (but simply compromises an admission that the mark is merely descriptive), Complainant has been unable to satisfy this Panel that the mark has, on the provided evidence in the present case, acquired the requisite distinctiveness. See, e.g. Doheny Plumbing, Inc. v. PAO Industries, Inc., supra. It is not a conclusion that the Panel finds particularly palatable given its findings on rights or legitimate interests and bad faith below. However, on the evidence brought before it by the Complainant in this case, it is one that the Panel believes is unavoidable.

6.16 Given these findings it is strictly only necessary to go on and consider the issues of the “rights and legitimate interests” and “bad faith” in relation to the <australian-ancestry.com> Domain Name. Nevertheless, the services purported being offered under the Domain Names are very similar, are being operated by the same entity and the Domain Names were registered within a few days of each other. In the circumstances, it is necessary when considering these issues to do so by reference to the Respondent’s activities as a whole in relation to both Domain Names.

B. Rights or Legitimate Interests

6.17 The Panel accepts the Respondent’s contention that the Domain Names consists of words which have a potential descriptive or generic usage in the area of genealogy. However, it is well established that a respondent may lack a legitimate interest in a domain name, even if it is a domain name comprised of descriptive words. The key is whether a respondent registered and is using such a domain name to describe his product/business or to profit from the generic value of the word without intending to take advantage of a complainant’s rights in that word. If that is the case, then the respondent may have a legitimate interest (see the WIPO Overview at paragraph 2.2 in this respect). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has rights and in order to capitalize or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest.

6.18 Essentially, therefore, in a case such as this the assessment boils down to the question: did the Respondent register the Domain Names with the Complainant’s use of the names “Ancestry” and “Geneogy.com” in mind and in an attempt to gain advantage of that association? This is also precisely the question that has to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little in this case.

6.19 For the reasons that are explained later on in this decision the Panel concludes that it was with these marks and such an advantage in mind that the Respondent registered the Domain Names in this case. The Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

6.20 The Respondent is quite correct when it states that the use of a mark predating the Respondent’s registration is not, by itself, sufficient to constitute an abuse of rights or legitimate interests. The Complainant’s assertions to the contrary are simply wrong. However, in this case, for the reasons that are described in greater detail later on in this decision, there are more substantive reasons for a finding of no rights or legitimate interests.

C. Registered and Used in Bad Faith

6.21 The Respondent’s contentions that it registered the Domain Names have not been registered or used in bad faith are predicated on the two assertions (i) that the Domain Names were not registered with the Complainant in mind and (ii) that the Respondent has been operating a legitimate business from those Domains. The Panel does not believe the first of these assertions to be true and is very doubtful as to the truthfulness of the second. The reasons for this are as follows:

6.22 There is almost no evidence of the claimed legitimate business before the Panel. There is an assertion of its existence but the only concrete material provided takes the form of two purported “reports”. These reports are extremely odd in form. In particular:

(i) One takes the form of a single page document which looks like it is a printout of the first page of a search under taken on the “Family History” search database of the “www.recordsarea.com” website. This is merely one of many search databases that seem to be offered by “www.recordsarea.com”. It seems inherently improbable that someone offering genealogy services would then provide a report under a brand quite different from the brand that it’s using for its business.

(ii) The other takes the form of a report, that appears to bear the brand name “Australian Geneology[sic] Records”. The Respondent does not even claim (let alone provide evidence) that it trades under that name. Also the fact the word “genealogy” is misspelled as “Geneology”, is highly telling. It seems improbable that someone who was engaged in the provision of genuine genealogy services would make such a basic error.

6.23 Further, the Complainant refers to a specific complaint in respect of the “www.australian-ancestry.com” website made on a Google thread at “soc.genealogy.autralia+nz”. On that thread a particular customer of the Respondent appears to be complaining about the fact that having bought membership with the Respondent that provides “unlimited database access”, he is then required to make more payments before conducting any search. Presumably this is why the Complainant contends that the Respondent is not offering any real service at all.

6.24 Customers sometimes get things wrong and misunderstand what they are signing up for. Therefore, the Panel is wary of reading too much into a single thread complaint of this sort. But the point is that this claim cries out for a response and none is forthcoming. To simply assert, as the Respondent does, that it does provide a substantive service but to then fail to explain how this service operates or to address this specific complaint, is a wholly inadequate response to the Complainant’s claim.

6.25 Then there is the unusual name of the Respondent i.e., 6686874 Canada Inc. Whether this truly represents an incorporated entity is unclear.² Of course many companies, particularly those starting off life as shelf companies, may have had names of this sort, but it not what one might expect of a genuine company engaged in genuine trading activity. No address is given for this company other than a post office box in Quebec and not a single real person who is an employee or officer is named in the Response³.

6.26 Then there is the fact that the Complainant essentially contends that the Respondent is part of or associated with a criminal organisation operating out of Russia. The evidence of this is sparse (i.e., simple a reference to a shared ISP addressed) and yet the seriousness of this allegation is such that it is surprising that the Respondent has not substantively addressed this point. The Panel is certainly not saying that it accepts the Complainant’s allegations in this respect, but the fact that the Respondent does not attempt to address this claim further adds to the Panel’s overall impression that there is reluctance on the part of the Respondent to disclose who and what it is and what it is actually doing.

6.27 The Respondent contends that insofar as it chose the Domain Names in order to derive business and traffic “from the descriptive value” of the phrases in the Domain Names then it has “a legitimate interest, analogous to the business interest in sale of generic or descriptive domain names”. The Panel agrees. But why if the Respondent is engaged in such a legitimate activity is the Respondent so coy about who it is and what it is up to?

6.28 In short, whilst perhaps each and every one of these issues described above might in isolation be explained away, when added together the evidence becomes overwhelming and the inference is obvious i.e. the Complainant is correct when it alleges that no legitimate or real business is being operated from either of the Domain Names.⁴

6.29 However, the Policy is not intended to provide a general mechanism for policing wrongdoing or sharp practice on the Internet. The Complainant still needs to show that the Respondent sought to gain some advantage from adopting domain names that are similar to those used in connection with the Complainant’s business.

6.30 In this respect there are two things that are particularly telling. First, there is the Complainant’s assertion that some of the text to be found on the website at the <searchyourgenealogy.com> Domain Name refers to “ancestry” as if it were the name of the Respondent’s business. The Panel agrees that this is correct. This text cannot sensibly be interpreted as using the word “ancestry” in a mere descriptive sense. The Respondent does not deny that this text appeared on its website and its use of the “ancestry” name in this text cries out for an explanation. None is forthcoming. In the circumstances, the Panel accepts the Complainant contention that the Respondent is impersonating the Complainant’s ANCESTRY business. The Panel also notes as at the date of this Decision that this text no longer appears on the website operating from that Domain Name. In absence of any explanation of what prompted the removal of this text, the inference is obvious i.e. the Respondent realises how damaging this text is to its case and has sought late in the day to remove this material in an ineffectual attempt to cover its tracks.

6.31 Second, there are the Complainant’s allegations regarding the stylistic similarities between the colour scheme, fonts and buttons used by the Respondent for web site operating from the “www.searchyourgenealogy.com” and the Complainant’s own “www.genealogy.com” website. The Panel is not saying that the Respondent has in the use of this material in any way infringed some intellectual property right of the Complainant. That is something that it is not the Panel’s place to comment upon. But the point is that these similarities call out for an explanation and yet the Respondent has chosen not to even address this issue. In the absence of such an explanation, the Panel accepts that the Respondent’s intention was imitation, and such imitation obviously presupposes prior knowledge of the Complainant. Given this, the Respondent’s unsubstantiated assertion that the Domain Names were registered without any knowledge of the Complainant, and without the intention to seek advantage of any similarity with the names used by the Complainant, rings hollow.

6.32 Further, there is the Respondent’s own evidence in the form of a page report from Quantcas that “Ancestry.com is a top 500 site that reaches over 3.6 million U.S. monthly uniques.” In other words, it seems clear that the Complainant services (and particularly those offered under the <ancestry.com> Domain name) are well known in the genealogical services sector. In the circumstances, it is not improbable that a person setting up a genealogy related web site (even one that offers no substantive additional service to its “members”), would be aware of the Complainant’s business.

6.33 In short, the evidence strongly suggests that the Respondent has adopted Domain Names similar to the names and domain names used as marks by the Complainant in the hope that those looking for one or other of the Complainant’s services will instead visit the Respondent’s web sites. Such activity falls within the scope of paragraph 4(b)(iv) of the Policy.

6.34 The Panel also notes the statement made by one of the contributors in the Google thread already described above in relation to the “www.australian-ancestry.com” website:

“They don’t seem to be connected with Ancestry.com - it’s a wonder that Ancestry haven’t been on to them to alter their name”

This is not exactly the most compelling evidence of confusion on the part of the public, but it does suggest that certain people engaged in genealogical research has associated the name <australian-ancestry.com> with the Complainant’s ANCESTRY mark.

6.35 The Respondent claims that if there is any confusion here it is because of the generic nature of the terms embodied in both the Complainant’s marks and the Respondent’s Domain Names. Even if this were true, it would not matter. As the wording of paragraph 4(b)(iv) of the Policy makes clear, what is important is not so much whether there actually is any confusion as a result of the Respondent’s choice, but whether it was the Respondent’s intention by means of the choice to create and benefit from such a likelihood of such confusion. It is the intent to mislead that is important (regardless of the degree to which it is successful). Gives the facts described above, the Panel has little doubt that it was with this intent that the Respondent registered and used the Domain Name, <australian-ancestry.com>, in this case.

6.36 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

7.1 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, <australian-ancestry.com> be transferred to the Complainant.

7.2 For all the foregoing reasons so far as the domain name <searchyourgenealogy> is concerned, the Complaint is denied.

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Matthew S. Harris
Sole Panelist

Dated: June 9, 2008