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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WebTrends Inc. v. Search Engine SEO Software Reviews, Mark Chu
Case No. D2008-1520
1. The Parties
The Complainant is WebTrends Inc., of Portland, Oregon, United States of America (вАЬUnited StatesвАЭ) represented by Stoel Rives, LLP, United States.
The Respondent is Search Engine SEO Software Reviews, Mark Chu, of Tianjin, the PeopleвАЩs Republic of China, self represented.
2. The Domain Name and Registrar
The disputed domain name <1stplacesoft.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on October 4, 2008. On October 7, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 7, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2008. Upon RespondentвАЩs request of October, 31, 2008, the Center granted the Respondent an extension of time to file response until November 12, 2008.
The Response was filed with the Center on November 12, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on November 26, 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
The Complainant is a software company based in Oregon, United States. The Complainant is the owner of a registered mark for WEBPOSITION, registered in the United States. In 2004, the ComplainantвАЩs parent company purchased what it describes as the вАЬWebPosition businessвАЭ from FirstPlace Software, Inc, and then obtained rights in the registered marks relevant to this dispute. The вАЬWebposition businessвАЭ relates to the ComplainantвАЩs вАЬWebposition softwareвАЭ, which allows customers to modify websites and webpages to improve visibility on popular search engines to increase visits to their websites. The Complainant claims that its software is the leading search engine optimization (SEO) software on the market. Among others, the Complainant is also the registrant of the domain name, <firstplacesoftware.com>.
The Respondent gives little information about its own activities in the Response. The Respondent claims that it purchased the disputed domain name for the purpose of using it for a вАЬreview site for search engine optimization software. Its intent is not for commercial gain misleadingly to divert consumers or to tarnish anyone.вАЭ
At the date of this decision, the disputed domain name reverted to a website in English at вАЬwww.bradsoftware.comвАЭ that purports, among other things, to relate to search engine software reviews. The website features the prominent statement вАЬ1st Place Guaranteed!вАЭ What then follows is a series of headings, some with associated links, such as вАЬWebPosition Gold NOT Recommended in 2008 FAQвАЭ, вАЬ2008 Best Search Engine Submission & Optimization softwareвАЭ, вАЬAll-in-One SubmissionвАЭ, and вАЬSEO suite & Dynamic SEMвАЭ. Despite the Response and statements on the website, that website does not itself appear to contain reviews of SEO software other than that of the Complainant (although links are included to other websites, particularly one at вАЬhttp://www.apexpromotion.net/ad/seo_review.htmвАЭ). At the bottom of that webpage are the following statements:
вАЬHere are the reviewed software, companies and trademarks:
All in One Submission is a TradeMark of sharewarist.com.
SEO Suite & Dynamic SEM is a TradeMark of ApexPromotion.com
Web Position/ WebPosition Gold is a TradeMark of FirstPlace Software Inc. / WebTrends Inc. FirstPlace Software Inc. was acquired by WebTrends Inc. in 2004.
The software IBP is TradeMark of Axandra GmbH The website bradsoftware.com are independent of the above companies, and have no relationship, formal or informal.
Copyright 2008 bradsoftware.com. All rights reservedвАЭ
5. PartiesвАЩ Contentions
On June 11, 1998, FirstPlace Software registered the disputed domain name in connection with its business. Since 2004, the Complainant has continued to market WebPosition software, under the relevant trademarks. In addition to its registered mark, the Complainant claims to have common law trademark rights to FIRSTPLACE SOFTWARE.
The Complainant claims that the disputed domain name is confusingly similar, if not identical, to its common law trademark for FIRSTPLACE SOFTWARE.
The Complainant also claims that the Respondent has no rights or legitimate interests in the disputed domain name. As late as August 2008, the Complainant claims, the website to which the disputed domain name refers, appeared to be the bona fide website of the ComplainantвАЩs WebPosition business. However, that website disparaged the ComplainantвАЩs software, claiming e.g. that it was вАЬbanned by GoogleвАЭ, contained a nonfunctioning link to the ComplainantвАЩs website, and then contained active links to sites competing with the ComplainantвАЩs software. The Complainant provided evidence of actual confusion: being an email from a potential customer who had visited the RespondentвАЩs website and stating that вАЬI was quite confused if I was in the right place.вАЭ
At the time the disputed domain name was registered in 2003, it was operated by the Respondent as a dealer of WebPosition software. The Complainant notes that authorized dealers of its software were obligated to comply with terms and conditions that forbade dealers from using trademarks in any manner that would misrepresent FirstPlace Software. The Complainant claims that the Respondent set up its website to misrepresent that it was the trademark owner of FIRSTPLACE SOFTWARE and, as such, lacked any rights or legitimate interests. In the alternative, the Complainant says that it had given the Respondent notice that any such rights had been revoked under the terms of its dealer arrangement.
Some time on or before September 2, 2008, the RespondentвАЩs website was changed to appear as a website that reviews SEO software, however none of the functioning links to providers of that software have any relationship to the mark FIRSTPLACE SOFTWARE.
Finally, the Complainant claims that the disputed domain name was registered and has been used in bad faith. The Complainant claims that the disputed domain name was fraudulently registered, because inaccurate contact information was supplied in the WhoIs details. The Complainant points out that the disputed domain name was first registered in the name of вАЬehostsourceвАЭ, then to вАЬFirstPlace SoftwareвАЭ (with contact information nearly identical to that of the Complainant), then to вАЬMark ChuвАЭ with address details in California, then to вАЬMark ChuвАЭ with address details in Tianjin Province, the PeopleвАЩs Republic of China. The Complainant claims that the Respondent has provided these variously different contact details in an effort to shield its identity and confuse consumers. The Complainant claims that the Respondent had notice of the ComplainantвАЩs prior trademark rights.
The Complainant claims that the Respondent has misled consumers looking for the ComplainantвАЩs software and redirected those users to websites selling competing software. The Complainant also points to email correspondence between its representative and the Respondent, in which the Respondent invites the Complainant to вАЬinvestвАЭ in the RespondentвАЩs website. This, says the Complainant, is evidence of the Respondent making a financial demand which is evidence of bad faith (referring to Giampaolo Matteucci v. Webmaster AWG,
WIPO Case No. D2001-1135.)
The Respondent denies that the Complainant has common law rights in the mark FIRSTPLACE SOFTWARE. The Respondent claims that that term is generic, especially in the search engine optimization area, since the goal of any such software would be to promote a website as the first place in a search result. The Respondent also denies the ComplainantвАЩs contention that FIRSTPLACE SOFTWARE is famous and points to the results of a Google search.
In the alternative, the Respondent claims that the Complainant has lost any rights to such a mark through abandonment, as the Complainant has stopped using that mark since 2004. The Respondent claims that the mark FIRSTPLACE SOFTWARE is not displayed nor used as a keyword on the ComplainantвАЩs website. In support, the Respondent provides a screenshot of the main webpage of the ComplainantвАЩs website, and two вАЬtestimonialsвАЭ in the form of emails from third parties. Those testimonials were essentially statements that the third parties had checked archived sites of the Complainant for certain keywords, including вАЬfirstplaceвАЭ. (The Respondent provided no evidence of doing those searches himself.)
The Respondent also refers to US trademark law and USPTO practice statements, to the effect that a domain name is only registrable as a mark where it functions as a source identifier, and in relation to abandonment of a mark.
The Respondent claims that he has rights or legitimate interests in relation to the disputed domain name. The Respondent states that he purchased the disputed domain name on September 28, 2007 from вАЬa previous dealer of WebPositionвАЭ. The Respondent also claims that the Complainant has presented a selective picture of the correspondence between them. The Respondent claims that the majority of the ComplainantвАЩs concerns relate to вАЬWebPositionвАЩs former dealerвАЭ (which the Panel has inferred to be a reference to the former registrant of the disputed domain name).
The Respondent claims that he legitimately purchased the disputed domain name to use it to review search engine optimization software. The Respondent claims that the initial similarity between its website and the ComplainantвАЩs resulted from his having purchased the disputed domain name from its previous registrant who dealt in the ComplainantвАЩs software. The Respondent claims that he took time to redesign the website because of his limited English and web design skills.
In relation to the ComplainantвАЩs claims that the Respondent made false statements to tarnish the ComplainantвАЩs reputation, the Respondent contends that those statements were true. In particular, the Respondent says that GoogleвАЩs webmaster guidelines mention that Google does not recommend products such as those of the ComplainantвАЩs. The Respondent also denies that he provided links on its website to competing SEO software, and has not вАЬoptimizedвАЭ its website for terms such as вАЬFirstPlace SoftwareвАЭ.
The Respondent denies that he acted in bad faith. The Respondent claims that the contact details were not changed when he purchased the disputed domain name because this was the responsibility of the previous registrant, Apex Promotion LLC. The Respondent claims that he used the previous registrantвАЩs contact details for a period while he was on vacation, and then changed the details to his own when he returned.
The Respondent claims never to have been in a dealership arrangement with the Complainant.
The Respondent claims that he never had an intention to sell his website to the Complainant and that, in that context, the Complainant took his offer to invest in the website out of context.
6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 and is being used in bad faith.
These issues are discussed in turn below, immediately after a discussion of the parties supplemental filings.
A. Supplemental Filings
On November 26, 2008, the Complainant made a supplemental filing in connection with this case. That filing invited the Panel to consider further evidence and argument in response to the RespondentвАЩs claims that the Complainant had abandoned use of its FIRSTPLACE SOFTWARE mark. That filing also sought to provide further evidence and argument to support its argument of bad faith against the Respondent. This included evidence that the Respondent has more recently referred the disputed domain name to a website at вАЬwww.bradsoftware.comвАЭ.
On November 29, 2008, the Respondent made a supplemental filing in reply to that of the Complainant. Principally, the Respondent provided further argument, by reference to US trademark law, that the Complainant had abandoned its mark. The Respondent also responded to the ComplainantвАЩs allegations that his more recent alterations to his website were not evidence of bad faith.
Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by either party. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules. The Panel considers that such filings should not be admitted as a general rule, and there was no sufficient cause for accepting the supplemental submissions in this case. The Panel considered that the Complaint and Response contained sufficient argument and evidence for the Panel to proceed to an informed decision. The supplemental filings do not materially add to that. Accordingly, the Panel did not consider the further filings in the consideration of the elements which follow.
B. Identical or Confusingly Similar
Common law rights
Under paragraph 4(a) of the Policy, the first thing which the Complainant must establish is that it вАЬhas rightsвАЭ in a trademark. While the Complainant provided evidence of having a registered trademark for WEBPOSITION, it made no claim that the disputed domain name was confusingly similar to that mark. (Although, despite this claim and for reasons not fully explained in the Complaint, the record indicates that that mark is registered to вАЬFirstPlace SoftwareвАЭ, with the Complainant being listed as the вАЬLast Listed OwnerвАЭ). As such, the Panel has disregarded the ComplainantвАЩs rights in this registered mark in relation to this ground of the Policy.
The Complainant additionally claimed that it had common law rights in the mark FIRSTPLACE SOFTWARE. There is no doubt that having rights in a mark, for the purpose of paragraph 4(a) of the Policy, may be established by common law rights. It is also well-established that to successfully demonstrate common law or unregistered trademark rights, a complainant must show that the claimed mark has become a distinctive identifier associated with the complainant or its goods or services. (For a statement generally to this effect, see e.g. Skype Limited v. Benjamin Decraene,
WIPO Case No. D2005-1112; and paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. This sometimes requires (where the mark comprises an otherwise common or generic term) a complainant to demonstrate that the mark has acquired вАЬsecondary meaningвАЭ. As noted in the WIPO Overview, вАЬrelevant evidence of such вАЬsecondary meaningвАЭ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.вАЭ
The evidence which the Complainant presented to support having common law trademark rights comprised:
- A declaration of the Vice President and General Counsel for the Complainant, attesting (among other things) that the Complainant acquired rights in вАЬthe FirstPlace Software trademarkвАЭ when it acquired the вАЬWebPosition businessвАЭ in 2004 from FirstPlace Software, Inc.
- WhoIs details indicating that FirstPlace Software registered the domain name <firstplacesoftware.com> in 1998.
- A 1998 press article about an announcement from FirstPlace Software that its WebPosition software would be sold to the public.
- A copy of the website as at May 1999 at вАЬwww.firstplacesoftware.comвАЭ advertising its WebPosition Software under the FIRSTPLACE SOFTWARE mark. (That mark appeared prominently on the website, with the common law trademark вДҐ symbol appended).
- The articles of incorporation of FirstPlace Software, Inc.
- Statements that the term вАЬFirstPlace SoftwareвАЭ is used as a keyword so that customers searching for that term will be directed to the WebPosition website.
Not all this evidence, taken separately, strongly indicates that the Complainant has the claimed common law rights. Some of this evidence relates to the ComplainantвАЩs predecessor in interestвАЩs corporate name, rather than evidence of using a mark as such. While the Complainant indicated that it had purchased the вАЬWebPosition businessвАЭ from FirstPlace Software, Inc., the Complaint is not clear as to whether the Complainant acquired FirstPlace Software, Inc. itself. The only explicit evidence that the Complainant acquired the claimed common law mark from FirstPlace Software, was the declaration of the ComplainantвАЩs Vice President that it did so.
It could also be argued, and indeed the Respondent does argue, that the ComplainantвАЩs trademark comprises a combination of generic or descriptive terms. The ComplainantвАЩs claimed trademark consists of the terms вАЬfirst placeвАЭ combined with the ordinary term вАЬsoftwareвАЭ. As noted by a previous panel (citing case law from the same jurisdiction of the Complainant in this case) вАЬSubstantial evidence would be required to demonstrate consumer or Internet user association between ComplainantвАЩs asserted mark and Complainant as a source of products or services so as to establish secondary meaning and trademark rights in favor of ComplainantвАЭ. Chromalloy MenвАЩs Apparel Group, Inc. v. Burch & Hatfield Formal Shops, Inc.,
WIPO Case No. D2000-1046.
The Respondent further argues that, even if there were rights in вАЬFirstPlace SoftwareвАЭ owned by the ComplainantвАЩs predecessor in interest, the Complainant has вАЬabandoned those rightsвАЭ. The Respondent points to information on the USPTO website. The Respondent quotes that source, to the effect that under US trademark law a mark is deemed to be abandoned when its use has been discontinued with intent not to resume such use. Quoting from that same source, the Respondent notes that вАЬNonuse for 3 consecutive years shall be prima facie evidence of abandonment.вАЭ The Respondent says that the Complainant has not used the FIRSTPLACE SOFTWARE mark since it is said to have acquired it in 2004 and has, therefore, abandoned it.
The Panel considers that whether the Complainant has a common law trademark is finely balanced in this case. On the balance of probabilities, the Panel has however concluded that the Complainant has sufficiently established rights in an unregistered trademark. This is for the following reasons.
Firstly, the Panel accepts that there is sufficient evidence that ComplainantвАЩs predecessor in interest had unregistered rights in the FIRSTPLACE SOFTWARE trademark. What is required in this respect is that the mark was a distinctive identifier associated with FirstPlace Software or its products and services. (See paragraph 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)
Although the Complainant could have presented more, the evidence sufficiently establishes to the Panel that the mark was associated with the business of the ComplainantвАЩs predecessor in interest вАУ FirstPlace Software, Inc. The Complainant provided evidence of FirstPlace Software using a corresponding mark on its website as far back as 1999. The evidence of FirstPlace SoftwareвАЩs dealer agreement also makes it clear that FirstPlace Software placed restrictions on the use of the вАЬWebPosition or FirstPlace Software related logo, image or trademark.вАЭ The evidence suggests that FirstPlace Software marketed its WebPosition Software in conjunction with FirstPlace Software as a mark.
The Panel also considers that the combination of вАЬfirst placeвАЭ and вАЬsoftwareвАЭ is not obviously generic. That combination, although at the weaker end of the spectrum, appears to have sufficient distinctiveness to operate as a mark. The fact that the mark includes generic terms is no bar to it being a trademark. Panels have frequently accepted the existence of common law trademark rights in marks comprised of a combination of generic terms. (e.g. Media Research Center v. Nick Bucci,
WIPO Case No. D2000-1280.) While the separate elements of the mark may be generic, the Respondent did not present any convincing evidence that the combination as such was generic. The Respondent provided no evidence at all that the term had been associated with any other way. Indeed, and somewhat inconsistently with its statements that the mark has вАЬvery genericвАЭ, the Respondent suggests that the use of the term is вАЬtoo rare to have acquired secondary meaningвАЭ. In addition, the top results for a Google search for вАЬFirstPlace SoftwareвАЭ relate almost entirely to the Complainant and, alternatively but to a lesser extent, to the Respondent.
The Panel also considers that, in the circumstances of this case, the RespondentвАЩs registration of the disputed domain name was itself evidence of the goodwill in the FIRSTPLACE SOFTWARE mark. The Respondent claims to operate his website for reviews of SEO software and so was clearly aware of the ComplainantвАЩs mark. As noted above, there is no evidence that the term вАЬFirstPlace SoftwareвАЭ has a generic meaning in relation to SEO software. For these reasons, the Panel considers it more likely than not that the Respondent chose the disputed domain name because of its association, as a mark, with the ComplainantвАЩs predecessor, FirstPlace Software, Inc.
The second issue is whether those unregistered rights were validly assigned to the Complainant. It is clear that the rights in an unregistered mark can be assigned. Such rights have been recognized in prior proceedings under the Policy. DreamWorks L.L.C. v. Grantics,
WIPO Case No. D2000-1269.
The Complaint itself is however unclear as to how that assignment took effect. The ComplainantвАЩs Vice President and General Counsel vaguely deposes that the Complainant вАЬacquired the WebPosition business through an asset acquisition from FirstPlace Software Inc. in April 2004. Under the agreement, WebTrends acquired trademarks in вА¶the FirstPlace Software trademark.вАЭ The Complainant does not however provide the terms of вАЬthe agreementвАЭ. Neither does the Complainant indicate what was comprised in the вАЬWebposition businessвАЭ which it acquired. Neither does the Complainant identify whether or not FirstPlace Software, Inc. itself continued as a separate entity.
Despite this, the totality of the evidence makes it reasonably clear that the Complainant did acquire rights in the FIRSTPLACE SOFTWARE mark, as well as rights in the WebPosition Software to which that mark relates. The RespondentвАЩs own website (quoted above under вАЬFactual BackgroundвАЭ) also notes that FirstPlace Software, Inc. was acquired by the Complainant in 2004. On this basis the Panel finds that, on the balance of probabilities, the Complainant acquired the same rights in the FIRSTPLACE SOFTWARE mark as those previously held by FirstPlace Software, Inc itself.
The third issue is whether the Complainant maintained those unregistered rights. The Respondent submits that the Complainant has вАЬabandonedвАЭ the FIRSTPLACE SOFTWARE mark because it has not used it since 2004. The question of whether a mark has been abandoned under US trademark law has been considered in a number of prior panel decisions. (e.g. The Republican Company v. John Bonin
WIPO Case No. D2001-1207, in which the then panel found that there was no evidence of use of the relevant trademark.) As relevantly noted by the panel in Video Images, LLC v. Stoebner, Jeff,
WIPO Case No. D2004-0887: вАЬto demonstrate common law ownership of a mark both appropriation and actual use of the mark in trade are necessaryвАЭ. See Blue Bell, Inc. v. Farah Manufacturing Co., 508 F.2d 1260 (5th Cir. 1975). Thus, the assignee of a common law trademark is obligated to purchase the associated goodwill of the underlying business and to continue to use the mark in connection with goods or services of the same basic nature as the assignor. PepsiCo., Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969).вАЭ (emphasis added).
This contention arises because the ComplainantвАЩs own website includes no visible use of the FIRSTPLACE SOFTWARE trademark. The only apparent use the Complainant makes of that mark is in its registration of the domain name <firstplacesoftware.com>, which reverts to the ComplainantвАЩs website at вАЬwww.webposition.comвАЭ. The Complainant also appears to use the mark as a search term so that, when typed into a search engine like Google, the top results refer to the ComplainantвАЩs website at вАЬwww.webposition.comвАЭ. The Panel has inferred this from those search results. The Complainant itself provides no direct evidence of this. The Respondent also denies that вАШFirstPlace SoftwareвАЩ is so used, and provides statements from some third parties to that effect. But the Panel finds this denial implausible, given the search results themselves. The Respondent provides no explanation as to how the ComplainantвАЩs webpage is the top listed search result for вАЬFirstPlace SoftwareвАЭ, where there is otherwise no visible use of the term вАЬFirstPlace SoftwareвАЭ on the ComplainantвАЩs website.
Is such a use by the Complainant sufficient to rebut the RespondentвАЩs argument that the mark has been abandoned? The Panel finds that it is. The Complainant has continued to use the FIRSTPLACE SOFTWARE as a mark вАУ both by using it in a domain name and by using it as a search term to direct Internet traffic to its principal website at вАЬwww.webposition.comвАЭ. By doing so, the Complainant has clearly continued to exploit the trademark value of the term вАЬFirstPlace SoftwareвАЭ. Whether the Complainant has exploited that value to the same extent, or in exactly the same way, as its predecessor in interest does not mean that it has not relevantly вАЬusedвАЭ the mark.
Further, as noted by the panel in American City Business Journals, Inc. v. theideaman.com,
WIPO Case No. D2001-0846: вАЬabandonment of a trademark is difficult to show under U.S. law, requiring an intent to abandon (or not to resume use of) the markвАЭ. See McCarthy on Trademarks ¬І 17:11 (2001). Prolonged non-use can give rise to such an inference. Id. The law, however, requires вАЬclear and convincing proofвАЭ of abandonment. See id. ¬І 17:12. Because of the forfeiture of rights involved, вАЬthe courts are reluctant to find abandonment.вАЭ Id. at 17-17.вАЭ The Panel in this case is similarly reluctant. And, having regard to the ComplainantвАЩs use of the mark in this case, it is reasonably clear that the Complainant does not intend to abandon the use of it.
For all these reasons, the Panel finds that the Complainant вАЬhas rightsвАЭ in the FIRSTPLACE SOFTWARE mark, for the purpose of paragraph 4(a)(i) of the Policy.
Identical or confusingly similar
The FIRSTPLACE SOFTWARE mark is not relevantly identical to the disputed domain name. The issue is then whether it is confusingly similar. The disputed domain name is only different to the ComplainantвАЩs mark to the extent that it replaces вАЬ1stвАЭ for the word вАЬFirstвАЭ and вАЬsoftвАЭ for the word вАЬsoftwareвАЭ.
The Panel finds that the disputed domain name is confusingly similar to the ComplainantвАЩs mark. The disputed domain name is phonetically similar. It is also obvious that the disputed domain name includes common abbreviations for the elements вАЬfirstвАЭ and вАЬsoftwareвАЭ. Previous panels have found that the substitution of common abbreviations does not avoid confusing similarity. Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts,
WIPO Case No. D 2001-0381. As such, the overall impression remains one of confusing similarity with the ComplainantвАЩs mark.
B. Rights or Legitimate Interests
The Respondent rests his rights or legitimate interests in the disputed domain name on operating a website which is, he says, is concerned with reviews for search engine optimization software. Relevantly, a respondent can establish rights or legitimate interests under paragraph 4(c)(iii) of the Policy where:
вАЬyou 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.вАЭ
The point at which use is not a fair use under paragraph 4(c)(iii) has attracted some differing panel decisions under the Policy. (For cases giving an overview of these different approaches, see e.g. Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,
WIPO Case No.D2004-0206; Justice for Children v. R neetso / Robert W. OвАЩSteen,
WIPO Case No. D2004-0175; CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul,
WIPO Case No. D2004-0988.)
The Panel considers that the Respondent has not demonstrated that he is making a legitimate noncommercial or fair use. As noted above, the disputed domain name is confusingly similar to the ComplainantвАЩs mark and is, no doubt, a domain name which the Respondent registered with the Complainant in mind. The Respondent also does not make any reference to why he chose this particular domain name. Panels in similar circumstances have drawn a negative inference from failures of a respondent to provide any such explanation: See e.g. Chi-ChiвАЩs, Inc. v. Restaurant Commentary (Restaurant Commentary),
WIPO Case No. D2000-0321. This Panel draws a similar inference. But even if the Respondent had genuinely established a review website, he is not entitled to appropriate the ComplainantвАЩs mark to do so. Such a use is not вАЬlegitimateвАЭ for the purpose of paragraph 4(c)(iii).
Further, the nature of the RespondentвАЩs website does not clearly suggest that it is for a noncommercial use. The Respondent himself does not explicitly argue that he established the site for a noncommercial purpose. The website does not include any substantive reviews of SEO software. Rather it contains links to related commercial websites and prominent references to the ComplainantвАЩs software being вАЬbanned by GoogleвАЭ or вАЬNOT recommended in 2008 FAQвАЭ. This is more suggestive that, despite the RespondentвАЩs claims to the contrary, the website is at least partly intended to disrupt the ComplainantвАЩs business.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
To establish its case under paragraph 4(a)(iii) of the Policy, the Complainant must establish both that the disputed domain name was registered and is being used in bad faith.
The first question under this element of the Policy is, therefore, whether the disputed domain name was registered in bad faith. The Complaint proceeds on the assumption that the disputed domain name was registered by the Respondent in 2003 and that, at that time, the web site вАЬwww.1stplacesoft.comвАЭ was operated by the Respondent as a dealer of WebPosition Software.вАЭ The Complainant provides a copy of an archived version of that website at that time, indicating that the website was used as a genuine commercial website to market the ComplainantвАЩs software. The Complainant however contends that this website was first set up to falsely вАЬpose as an official website of the ComplainantвАЭ, in breach of the terms and conditions that applied to dealers of WebPosition Software. It appears that only later was that website progressively altered, to the version which is currently operated by the Respondent.
Had the Respondent been an authorized reseller of the ComplainantвАЩs software when the disputed domain name was registered, there would have been a difficult question about whether the disputed domain name had been registered in bad faith. However, the Panel finds it unnecessary to address this question, in light of the RespondentвАЩs claim that he has never been an authorized dealer of the ComplainantвАЩs products. The Respondent claims that he acquired the disputed domain name in 2007 from вАЬa previous dealer of WebPosition, Apex Promotion LLC.вАЭ It is well-established that, under the Policy, the acquisition of a domain name can be treated as equivalent to the registration of the domain name for the purpose of the Policy. See e.g. MC Enterprises v. Mark Segal (Namegiant.com),
WIPO Case No. D2005-1270.
Taking that into account, the Panel finds that the disputed domain name was registered, and then used by the Respondent in bad faith, for the following reasons:
Firstly, as noted above, the Respondent was clearly aware of the ComplainantвАЩs mark when he registered the disputed domain name in 2007. The Respondent website contains various references to the ComplainantвАЩs software, as well as the ComplainantвАЩs predecessor in interest, FirstPlace Software, Inc. In this circumstance, it seems more likely than not that the Respondent deliberately chose the ComplainantвАЩs mark to seek to misleadingly divert Internet traffic. The Panel is reinforced in this conclusion by the lack of any explanation provided by the Respondent about why he registered the disputed domain name in particular.
Secondly, from the evidence provided by the Complainant, it appears that the RespondentвАЩs website was changed only recently to one purporting to be a site relating to вАЬreviewsвАЭ of search engine optimization software. The Respondent explains this by stating it took him significant time to develop the new content for the website because of his вАЬlimited English and web site design skillsвАЭ. The Respondent claims that these changes were finished in September 2008 to include reviews of search engine optimization software.
The Panel however does not find these explanations credible. As noted further above, the RespondentвАЩs website contains no real reviews of such software on that site itself. For example, one purported link to вАЬReviews Comparison of All SEO SoftwareвАЭ does not work at all. Of its functioning links, the website merely links to a website at вАЬwww.apexpromotion.netвАЭ. That website appears to be a competitor to the Complainant. It does not so much contain вАЬreviewsвАЭ of the relevant software, as merely advertisements for competing products. The PanelвАЩs overall impression from these facts is that the Respondent has merely sought to (more recently) divert Internet traffic, looking for the ComplainantвАЩs products, to a competing website.
It also seems hardly credible that the Respondent was so significantly delayed in setting up because of his limited English skills. The Respondent displays no lack of facility in English in the Response. Neither does the Respondent explain why he would chose to establish a website in English, if that is not a language with which he is familiar.
Thirdly, the RespondentвАЩs website prior to its most recent form, suggests that the Respondent was also seeking to tarnish the Complainant and its business. Before September 2008 the RespondentвАЩs website otherwise appeared to be one associated with the Complainant and promoting its products, except that it prominently featured the statement вАЬWebPosition Gold Banned by Google in 2008 FAQвАЭ. Taken together with the more recent evidence of the RespondentвАЩs website, it seems clear that the Respondent has engaged in conduct designed to diminish the reputation of the ComplainantвАЩs product, and to promote competing products. The registration and use of the disputed domain name for that purpose is indicative of bad faith.
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, <1stplacesoft.com> be transferred to the Complainant.
James A. Barker
Dated: December 15, 2008