WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viva Group, Inc. v. Peter Best, Jr.
Case No.�D2006-1151
1. The Parties
The Complainant is Viva Group, Inc., of San Jose, California, United�States�of�America, represented by Cooley Godward, LLP, of San Francisco, California, United States of America.
The Respondent is Peter Best, Jr. of Boston, of Boston, Massachusetts, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with InnerWise, Inc., doing business as ItsYourD.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September�6,�2006. On September�12,�2006, the Center transmitted by email to InnerWise, Inc. a request for registrar verification in connection with the domain name at issue. On September�13,�2006, InnerWise transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details for the administrative, billing, and technical contacts and confirming the details of the registration agreement. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September�19,�2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental�Rules”).
In accordance with the Rules, paragraphs�2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�25,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was October�15,�2006. The Respondent did not submit any response to the Complaint.1 Accordingly, the Center notified the Respondent’s default on October�17,�2006.
The Center appointed Debra�J.�Stanek, Diane�Cabell and Nicolas�Ulmer as panelists in this matter on November�13,�2006. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the paragraph�7 of the Rules.
4. Factual Background
Complainant began using the mark GIGAMOVES in February�2006, when it began offering services on its “” website. The website permits visitors to request and receive quotations for moving and relocation services and generates leads for moving companies by identifying potential customers of moving services. On�February�24,�2006, Complainant issued a press release to publicly announce that it was launching its lead generation services for moving companies.
Complainant owns two pending intent-to-use United States federal service mark applications for the mark GIGAMOVES, one covering moving, relocation, and related services and another for a website that provides business referral and related services for movers.
The disputed domain name was registered on February�24,�2006. For some time prior to the filing of the Complaint, the website’s home page, under the heading “The #1 Site for Moving and Relocating Quotes and Much More!” contained headings for “moving and relocating”, “moving company”, “moving”, and related terms. Currently, the domain name does not devolve to an active website.
5. Parties’ Contentions
A. Complainant
Complainant makes the following contentions:
The disputed domain name is confusingly similar to Complainant’s distinctive GIGAMOVES mark, which it has used since February 2006. The disputed domain name incorporates the GIGAMOVES mark in its entirety, preceding it with the term “best”, which is either merely laudatory or, if a reference to Respondent’s surname, descriptive.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not authorized Respondent to use the domain name. Complainant asserts, on information and belief, that Respondent has no rights in any BESTGIGAMOVES mark and believes that Respondent is not commonly known by the domain name. Further, Complainant asserts that Respondent cannot, by merely adding the term “best” to Complainant’s GIGAMOVES mark, create a new or different mark in which Respondent can have legitimate rights.
The Respondent registered and is using the disputed domain name in bad faith because:
(a) Respondent’s domain name incorporates Complainant’s distinctive mark in its entirety.
(b) Respondent registered the domain name on the very same day that Complainant issued its press release about its “” website.
(c) In response to Complainant’s letters objecting to Respondent’s use of the domain name, Respondent did not respond to Complainant or modify his website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove that:
(i) The domain name is identical or confusingly similar to Complainant’s mark; and
(ii) 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.
Paragraph�4(a) of the Policy. The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Paragraph�4(c) of the Policy, as well as circumstances that may evidence a Respondents’ bad faith registration and use, see Paragraph�4(b) of the Policy.
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Paragraph�14(b) of the Rules.
A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark.
Complainant alleges that it has been using the GIGAMOVES mark since February�2006 and that it has advertised its GIGAMOVES services extensively. However, apart from a copy of its February�24,�2004 press release, copies of pages from the “” website, and a page from Complainant’s “” website, it has provided very little documentary evidence of such use. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph�1.7 (setting�out consensus view as requiring complainant asserting rights in unregistered trademark rights to show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition).
Complainant’s pending U.S. trademark applications are based, as is permitted under U.S. law, see 15 U.S.C. ��1051(b), on its bona fide intention to use the marks. However, under U.S. trademark law (except for certain applications filed pursuant to international conventions, which are not applicable here) intent-to-use trademark applications cannot mature into trademark registrations until appropriate statements of use have been filed and accepted. 15 U.S.C. ��1051(b)(3). Thus, the applications merely establish that, on the date that they were filed, September�22,�2005, applicant intended to use the mark as a trademark. They do not, standing alone, evidence use of a mark. Complainant’s assertion that it uses the GIGAMOVES mark in Canada, where it filed a currently pending application to register the mark, is not supported by any documentary evidence concerning that application.
Further, Complainant’s allegations concerning length of use and dollar amounts of advertising expenditures are combined with its use and expenditures related to another of its marks. Therefore those allegations are of little value in establishing its rights in the mark. Nonetheless, Complainant’s press release and webpages do show use of the GIGAMOVES trademark at least as of February�24,�2006, sufficient to here demonstrate the requisite rights.
As to confusing similarity, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name does incorporate the entire mark, preceding it with the term “best”. It seems most likely that the average consumer would understand “best” in this context as a laudatory term, rather than a reference to Respondent’s surname. In either case, however, the Panel concludes that the use of the term in conjunction with the distinctive GIGAMOVES mark results in a confusing similarity.
Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in paragraph�4(c) of the Policy are applicable. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph�4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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.
Even though Respondent’s surname appears to be “Best”, nothing in the “whois” record or the copies of the “www.” web pages suggests that Respondent is commonly known by the domain name. Further, from the copies of the “www.” web pages provided by Complainant, it does not appear that Respondent is making a legitimate non-commercial or fair use of the domain name.
Finally, a majority of the Panel2 concludes that Complainant has made an adequate prima facie showing that before notice of the dispute, Respondent was not using the domain name in connection with a bona fide offering of goods or services. See Paragraph�4(c)(i) of the Policy. As noted above, the disputed domain name is confusingly similar to Complainant’s mark. Visitors to the site were presented with what appear to be links related to the same or similar services. Given the distinctive nature of the GIGAMOVES mark, it is difficult for a majority of the Panel to see any circumstances in which Respondent might make a bona fide offering, particularly of similar goods or services. Instead, the majority concludes that the facts presented, and the inferences drawn from those facts, provide sufficient support of Complainant’s contention that Respondent registered and was using the disputed domain name to divert those seeking the Complainant’s site, in a manner that cannot be said to be bona fide, such that the burden on this issue has shifted to Respondent.
Under these circumstances, a majority of the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
As noted above, the disputed domain name is confusingly similar to the GIGAMOVES mark. It is therefore reasonable to conclude that Respondent’s site would attract visitors who are actually seeking Complainant’s site.
The Panel concludes that registration of the domain name on the same day as Complainant’s press release about its “” website was not serendipitous.
Further, as noted above, the Panel cannot conceive of any use of the domain name, by virtue of the registration of a domain name containing Complainant’s distinctive mark plus a laudatory term, that would be other than to “intentionally attempt[] to attract, for commercial gain, Internet users . . . , by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location”. See Paragraph 4.b.
Under these circumstances, including Respondent’s default, the Panel finds that Respondent has registered and used the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs�4(i) of the Policy and 15�of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Debra J. Stanek
Presiding Panelist
Nicolas Ulmer
Panelist
Dated: November 28, 2006
DISSENTING OPINION
The Dissenting Panelist agrees with the majority of the Panel on the questions of confusing similarity and bad faith. However, the Dissenting Panelist cannot agree with the majority on the question of rights or legitimate interests in the Domain Name.
The Complainant submitted copies of web pages indicating that the domain holder was initially and, to all appearances, actively engaged in offering goods and services similar to the Complainant’s. The Dissenting Panelist is of the view that this establishes a Sec.�4(c)(i) defense. This Panelist interprets “bona fide offering of goods or services” to mean any authentic offer to engage in a transaction, regardless of the moral or legal right of the domain holder to extend such an offer. The reason for this interpretation was that the UDRP was not meant to substitute for a trademark infringement action between competing vendors. Complainant’s remedy was in court, not the UDRP. No�evidence was introduced to indicate that the domain holder’s website was an empty sham posted in a fraudulent attempt to establish a (c)(i) defense. The fact that the site is now inactive could as easily speak to intimidation factor as to any lack of initial trading intent on the part of the domain holder.
Accordingly, in the view of this Panelist, the Complainant failed to establish that Respondent lacked rights or legitimate interests in the domain name at suit, therefore the Complaint should be denied.
Diane Cabell
Dissenting Panelist
Dated: November 28, 2006
1 Although no response to the Complaint was submitted, the Center did receive an email message, dated September�15,�2006, from the same email address given for the administrative, billing and technical contacts, petebest@, stating: “WE DELETED THE NAME. HAVE A NICE DAY!”
2 One member of the Panel believes that Complainant’s evidence supports a finding that Respondent was using the domain name in connection with a bona fide offering prior to notice of the dispute in that Complainant asserted that active trading was occurring on Respondent’s site.
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