WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Go D, Inc. v. Shoneye’s Enterprise
Case No. D2007-1090
1. The Parties
Complainant is Go D, Inc. (“Complainant”), a corporation established under the laws of the State of Arizona, with a principal place of business located in Scottsdale, Arizona, United States of America.
Respondent is Shoneye’s Enterprise (“Respondent”), a business entity located in Randolph, Massachusetts, United States of America.
2. The Domain Name and Registrar
The domain name at issue is (the “Domain Name”). The registrar is GoD, Inc. located in Scottsdale, Arizona, United States of America.
3. Procedural History
On July 23, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On July 27, 2007, the Center received hardcopy of the Complaint. On August 5, 2007, the Center sent an Acknowledgment of Receipt of Complaint to the parties. The Complainant paid the required fee.
On August 2, 2007 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On August 7, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On August 29, 2007, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received, but an email was received by the Center from Respondent on August 30, 2007.
On September 5, 2007 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of the Panel.
4. Factual Background
Complainant is the owner of numerous registered trademarks including GODADDY and GODADDY.COM (the “GODADDY Marks”). The GODADDY Marks are used in connection with the registration, transfer and account management services of domain names for identification of users on a global computer network. The GODADDY Marks are further used in relation to website hosting, design, email, secure certificates, shopping carts, traffic building software and other products and services needed for an online presence.
Complainant is an ICANN accredited registrar of Internet second-level domain names under various top-level domains and is the number one registrar of new domain names. The GODADDY Marks are closely associated with Internet domain name registration and website hosting. The term “Daddy” is synonymous with Complainant in the industry.
Complainant registered the domain name on March 2, 1999 almost seven years prior to the Respondent’s registration of the Domain Name.
Respondent registered the Domain Name on July 28, 2005 using the Complainant as the Registrar. Respondent then became a reseller of Complainant’s products through Wild West Domains, a GoD Inc. affiliate company, on October 30, 2005. Respondent began using the Domain Name to offer domain name registration services and related products as early as December 2005.
On June 23, 2006, Complainant sent an email notifying the Respondent that the Domain Name was infringing on one or more of the GODADDY Marks. The notice also informed the Respondent that under the reseller agreement with Wild West Domains, the Respondent had agreed not to infringe on any of the trademarks belonging to the Wild West affiliate companies.
As Respondent did not reply to the June 23 email, Complainant again sent an infringement notice on July 12, 2006. Sometime thereafter, Respondent stopped using the Domain Name to offer the same products and services of Complainant. On November 18, 2006, the Respondent cancelled his reseller account with Wild West Domains. At this point, Complainant did not pursue the issue further.
On May 5, 2007, the Respondent attempted to transfer the Domain Name from the Registrar (Complainant) to another registrar. This prompted Complainant to investigate the Domain Name, discovering that Respondent was again using the Domain Name to offer similar products and services. The attempted transfer was denied, the Registrar (Complainant) stating that there was a reasonable dispute over the Domain Name.
Upon Respondent’s inquiry into the transfer denial, Complainant again informed the Respondent that the Domain Name was infringing on the GODADDY Marks. Complaint then offered to refund Respondent for the purchase of the Domain Name. Respondent did not agree with Complainant’s assessment of the infringement of the GODADDY Marks and demanded Complainant release the Domain Name. Complainant responded by asserting its right to initiate this WIPO proceeding under the Policy. There does not appear to have been any further correspondence between Complainant and Respondent.
5. Parties’ Contentions
A. Complainant’s contentions
i. Complainant contends that it has registrations of the GODADDY Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the GODADDY Marks. 15 U.S.C. � 1115.
ii. Complainant argues that the Domain Name is confusingly similar to the GODADDY Marks, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the principal element of the GODADDY Marks, namely the phrase DADDY (which is strongly associated with Complainant within the industry of internet registration and website hosting) with the addition of generic term “domain name”.
iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because Respondent has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant further contends that Respondent registered and is using the Domain Name to offer directly competing services, to trade on Complainant’s goodwill, and to infringe on the GODADDY Marks, cannot constitute a bona fide use of the Domain Name under paragraph 4(c)(i).
Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under either of the Domain Name or under the names GODADDY or DADDY. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the GODADDY Marks in a domain name or in any other manner.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant further alleges that Respondent had actual knowledge of the GODADDY Marks, because it was once a reseller of GODADDY products. Upon notification by Complainant in 2006 of the infringement, Respondent discontinued to offer its reseller products through the Domain Name. This indicates that the Respondent agreed he was infringing on the GODADDY Marks. Respondent’s subsequent use of the Domain Name in 2007 to again offer similar products demonstrates his bad faith intent to profit from the GODADDY Marks. Such use creates an implied or actual commercial connection to Complainant to attract Complainant’s customers, precluding Respondent from showing rights and legitimate interests in the Domain Name under paragraph 4(c)(iii) of the Policy.
iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Paragraph 4(b) of the Policy provides four nonexclusive factors which support a showing of bad faith. The four nonexclusive factors are the following:
(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
To summarize: Complainant alleges above that Respondent had actual knowledge of the GODADDY Marks, as it was once a reseller of GODADDY products. Upon notification by Complainant in 2006 of the infringement, Respondent discontinued to offer its reseller products through the Domain Name. This indicates that the Respondent knew it was infringing on the GODADDY Marks. Respondent’s subsequent use of the Domain Name in 2007 to again offer similar products demonstrates his bad faith intent to profit from the GODADDY Marks. Such use creates an implied or actual commercial connection to Complainant to attract Complainant’s customers. Complainant argues that this evidence supports the bad faith element of paragraph 4(b)(iv) of the Policy.
B. Respondent’s contentions
Respondent has not filed a formal Response contesting the allegations of Complainant.
Respondent did send an email to the Center which stated that Respondent was medically disabled and could not retain counsel to file a Response and that the Panel consider Respondent’s condition and right and opportunity for a fair hearing. The Panel has done so, but nevertheless notes that it is unaware of any procedure under the UDRP whereby a Provider or Panel may arrange representation for a party, and further notes that the Respondent does not in any case appear to have requested any extension of the due date for submission of a response. Having received no further communications from Respondent, the Panel therefore proceeds without any Response having been filed by Respondent.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie,WIPO Case No. D2000-1772.
Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant. See, Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Hewlett-Packard Company v. Full System, FA 0094637 (Nat. Arb. Forum May 22, 2000); David G. Cook v. This Domain is For Sale, FA0094957 (Nat. Arb. Forum July 12, 2000); Gorstew Jamaica, and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925 (Nat. Arb. Forum July 12, 2000).
Even though Respondent has failed to file a Response or otherwise contest Complainant’s assertions, the Panel must review the evidence proffered by Complainant to ascertain whether the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) [that the] domain name [registered by the Respondent] is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
ii) [that the Respondent] has no rights or legitimate interests in respect of the domain name; and,
iii) [that the] domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has registrations of the GODADDY Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the GODADDY Marks. 15 U.S.C. � 1115.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Respondent has not in any case contested the assertions by Complainant that it has valid registrations of the GODADDY Marks.
Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the GODADDY Marks.
Identical or Confusingly Similar
Complainant further contends that the Domain Name is identical with and confusingly similar to the GODADDY Marks pursuant to paragraph 4(a)(i) of the Policy, because it wholly incorporates the principal element of the GODADDY Marks, namely the phrase DADDY with the addition of generic term “domain name”.
Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the GODADDY Marks.
As prior United States courts and Panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. See, Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH). The addition of other generic, descriptive, or non-distinctive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark. See, Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical).
The Panel finds that the entirety of the principal element of the GODADDY Marks, namely the phrase DADDY, is included in the Domain Name. Furthermore, the Panel finds that the addition of the common term “domainname” is descriptive, especially in the domain name registration and website hosting industry. The addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name.
Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition � 23:50 (4th ed. 1998).
Therefore, the Panel finds that the Domain Name is confusingly similar to the GODDADY Marks pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name. The factual basis for Complainant’s contentions is set forth above.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See, Document Technologies, Inc. v. International Electronic Communications, Inc., Case No.WIPO Case No. D2000-0270.
It appears to the Panel from the record provided that Respondent has no current relationship with or permission from Complainant for the use of the GODADDY Marks. The Complainant has thus sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Name. The record contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names as set forth above.
Complainant alleges that Respondent had actual knowledge of the GODADDY Marks, as it was once a reseller of GODADDY products. Upon notification by Complainant in 2006 of the infringement, Respondent discontinued offering reseller products through the Domain Name. This indicates that the Respondent knew it was infringing on the GODADDY Marks. Respondent’s subsequent use of the Domain Name in 2007 to again offer similar products demonstrates its bad faith intent to profit from the GODADDY Marks. Such use creates an implied or actual commercial connection to Complainant to attract Complainant’s customers.
The Panel finds that this evidence supports the bad faith element of paragraph 4(b)(iv) of the Policy and that Respondent registered, used, and is presently using the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Panel concludes (a) that the Domain Name is confusingly similar to Complainant’s registered GODADDY Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: September 23, 2007
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