WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Drake Bliss v. Cyberline Enterprises
Case No. D2001-0718
1. The Parties
Complainant is Drake Bliss, an individual doing business as Precision Computer Systems in Cape Coral, Florida, USA.
Respondent is Cyberline Enterprises, a business located in Richardson, Texas, USA.
2. The Domain Name and Registrar
The domain name at issue is: ("the Domain Name").
The registrar is R in San Francisco, CA, USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").
The Complaint was submitted on May 31, 2001, and amended on June 11, 2001. The Response was submitted on July 11, 2001.
On August 2, 2001, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as panelist.
4. Factual Background
Complainant operates a web site under the domain name and mark , providing a directory of singles related web pages and links. Complainant claims to have used the mark since 1997, and owns a federal registration for the mark for "providing a directory of singles related web pages as well as links to singles related websites via a global computer network," Reg. No. 2,367,174, issued July 11, 2000.
Respondent is a web site developer. It appears that its primary business is the registration of domain names to generate revenue through sponsored links to commercial sites. Among the many domain names registered by Respondent are the Domain Name, , which was registered on April 18, 2001.
5. Parties' Contentions
Complainant contends that the Domain Name is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Names in bad faith as demonstrated by its use of the Domain Name to divert Internet traffic for profit.
Respondent claims that the Domain Name is generic for use as a web site relating to singles, that its current use to divert traffic via sponsored links involves a legitimate interest and that it has not registered and used the Domain Name in bad faith.
6. Discussion
A. Confusing Similarity
Complainant's mark is the subject of a U.S. registration that predates registration of the Domain Name. In the absence of the federal registration, one might conclude that Complainant lacks rights because its mark is merely descriptive or generic for an Internet directory of singles sites. However, the federal registration creates a prima facie presumption of rights in the mark and the validity of the registration has not been adequately challenged here. The differences between the registered mark and the Domain Name are slight. Accordingly, I find that the Domain Name is confusingly similar to a mark in which Complainant has rights.
B. Legitimate Interests
Respondent asserts that it has a legitimate interest in the Domain Name because it is using the Domain Name in connection with sponsored advertising links. In support of its position, Respondent relies on Kis v. A Ltd., Case No. D2000-0770, and Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc., Case No. D2000-0706, decided by a three-member panel including this Panelist.
This is not a situation where Respondent has selected a domain name that is an apt choice for an operating site. Respondent does not currently use the Domain Name for a site relating to singles. Instead, the question here is whether using a domain name to divert traffic to unrelated links for commercial gain is a legitimate use under the Policy. In Kis v. A Ltd., ("Kis") the Respondent claimed that it selected the domain name as an abbreviation for "Korean Information Services" and used the domain name for a web page featuring hyperlinks to information about Korea and Asia. The Panel found this to have created a legitimate interest in the Domain Name.
In Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc., ("Lip Service") the respondent had adopted the domain name for a web page providing hyperlinks to adult entertainment sites. The Panel found that the Complainant had failed to prove a lack of legitimate interest "because the term 'lip service' is susceptible of a meaning that is arguably . . . 'apt' for the services offered."
The situation here is different from that presented in Kis or Lip Service. Respondent claims that it intends to use the Domain Name for a site relating to singles, but at present it does not do so. Instead, it uses the Domain Name to divert traffic to unrelated commercial sites in exchange for linking fees. Unlike either Kis or Lip Service, respondent here is not using a Domain Name that is "apt" for its current activity. If Respondent's use were considered a "legitimate interest" under the Policy virtually any cybersquatter could circumvent the Policy by linking the domain name to unrelated commercial sites. Obviously, such a result would be contrary to the Policy's intent. Respondent has not provided evidence of a demonstrable plan to make use of the Domain Name for a bona fide offering of goods or services in the future. I find, therefore, that Respondent lacks any right or legitimate interest in the Domain Name.
C. Bad Faith
Complainant's proof of bad faith rests on the assertion that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with Complainant's mark. Respondent admits that it registered and used the Domain Name for commercial gain, but denies that it intentionally infringes Complainant's mark.
The evidence on this point is limited. Respondent claims it had no knowledge of Complainant's mark. Under U.S. law, however, Respondent had constructive notice of Complainant's registered mark as a matter of law. Respondent claims that it registered the domain name because it was an apt choice for the development of a "singles site." To support this claim, Respondent points to the numerous generic names it has registered for web site development. Complainant counters this evidence by listing a small number of domain names registered by Respondent that correspond to the marks of other. The registration of those domain names is indeed suspicious. They are not, however, at issue here and are a sufficient basis to infer bad faith in this proceeding given the nature of the mark at issue.
Complainant has selected and attempted to enforce a mark that is highly descriptive, if not generic, of its activities. In the absence of supporting evidence that Complainant's mark has become famous or that Respondent deliberately sought to trade on Complainant's goodwill, I find Respondent's version of the facts as to selection of the Domain Name to be more plausible. Not every case of similarity is a case of bad faith. Here, it seems more likely than not that Respondent registered the Domain Name to use in its apt dictionary sense for a site relating to singles, and not for the purpose of trading on Complainant's mark. Accordingly, I find that Complainant has failed to meet its burden of proof on the issue of bad faith.
7. Conclusion
Complaint has failed to establish that the Domain Name was registered and used in bad faith. Therefore, its request for relief is denied.
Mark V. B. Partridge
Sole Panelist
Dated: September 20, 2001
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