WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Demand Media Inc. v. Digi Real Estate Foundation
Case No. D2007-1304
1. The Parties
The Complainant is Demand Media Inc., of Seattle, Washington, United States of America, represented by Kirkpatrick & Lockhart Preston Gates Ellis LLP, United States of America.
The Respondent is Digi Real Estate Foundation, of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name is registered with SiberN, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2007. On September 5, 2007, the Center transmitted by email to SiberN, Inc. a request for registrar verification in connection with the domain name at issue. The same day SiberN.Inc replied stating that the domain name was not registered with them and that they had not received any Complaint in relation to it. Also on September 5, 2007 the Center transmitted by email to P a request for registrar verification in connection with the domain name at issue. On September 7, 2007 A on behalf of SiberN, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 25, 2007 the Center responded to P, with copy to SiberN, Inc., requesting clarification of the name of the Registrar with which the domain name at issue is registered and of the relationship between A and SiberN, Inc. On September 26, 2007 SiberN, Inc. replied to the Center explaining that “[the]… domain name is managed by a, which is the company registers deleted domain names through our batch pool.” On the same day P also replied to the Center explaining that with respect to the domain name at issue “…the Registration services are provided by “ANSWERABLE.com” and the Registrar is “SIBERNAME.com, Inc”.” The Center verified that the Complaint 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”).
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 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2007.
The Center appointed David Perkins as the sole panelist in this matter on October 26, 2007. 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.A. The Complainant
The Complainant's Business
4.A.1 The Complainant, Demand Media, Inc, is one of the world's largest Internet domain name registrars and a leading online provider of domain name registration and other online services.
4.A.2 In 2006 the Complainant acquired Enom, Inc., which is described as a technology and support service for small and home-based businesses, individuals, Internet traffic aggregators and domain resellers. Enom is the largest ICANN accredited domain wholesaler and is the second largest domain name registrar worldwide with nearly 9 million names on its platform.
4.A.3 The EHOW trademark has been continually used in commerce by Enom since August 1999. The online services provided by the Complainant include a number of online platforms where users can read and publish information and socialize with one another. It also offers over 20,000 articles on how to do things; for example, “How to grip a golf club”, “How to make Planter's Punch” etc. The Complainant's “” website averages nearly 7 million unique users per month. In June 2007, the domain hosted approximately 7.2 million unique users and entertained 16.2 million page views.
The Complainant's EHOW trademark
4.A.4 On September 26, 2006 the Complainant filed with the US Patent and Trademark Office an application to register EHOW as a trademark in Classes 9, 16, 35, 28, 41 and 42.
4.A.5 The Complainant is the proprietor of registrations for the trademark EHOW in the following countries:
Country
Registration No.
Mark
Class
Date of Application or Registration
Sweden
343,197 EHOW
35, 36, 39, 41 and 42
September 20, 1999
Denmark
2000 2852 VR EHOW
9, 35 and 42
June 22, 2000
Italy
1020 99 FI EHOW
42
September 20, 1999 (applied for)
Finland
220,408 EHOW
35 and 42
March 15, 2001
Norway
204,387 EHOW
35, 38 and 42
August 31, 2000
Benelux
672,009 EHOW
35, 38 and 42
Not stated
France
99 812781 EHOW
38, 41 and 42
September 17, 1999
Germany
399 57650.9 EHOW
35,38 and 42
September 17, 1999 (applied for)
United Kingdom
2,208,957 EHOW
42
March 1, 2002
4.A.6 The Complainant also asserts common law rights in the EHOW trademark based on continuous use by the Complainant and its predecessors in interest since August 1999. Complainant further asserts that the EHOW mark is an invented, arbitrary and fanciful mark, which they say qualifies as inherently distinctive under US trademark case law. In other words, EHOW is a well-known mark in relation to the provision of online networking and how-to services.
4.B. The Respondent
In the absence of a Response, all that is known about the Respondent is that it is the Registrant of the domain name in issue, which was registered on November 29, 2006, and that that domain name resolves to a website which automatically redirects the user to a web page “” which contains third party click-through advertising links. A print out of that web page exhibited to the Complaint links to educational sites offering, for example, financial assistance in the form of student loans, study aids in the form of online textbooks, and links to specific Colleges and Universities.
5. Parties’ Contentions
5.A Complainant
5.A.1 Identical or Confusingly Similar
5.A.1.1 The Complainant's case is that the domain name in issue is substantially similar to and consequently, confusingly similar to its EHOW trademark. “Ehow” is the distinctive element of the domain name and the addition of “www” to that domain name does nothing to distinguish it from the Complainant's EHOW trademark nor to avoid confusing similarity with that. Indeed, it is plainly an attempt to capitalize on Complainant's EHOW trademark and to misdirect Internet traffic from users seeking the Complainant's website and services.
5.A.1.2 Complainant cites a number of decisions under the Policy in which the addition of “www” to a domain name has been disregarded for the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy. They are Toyota Motor Credit Corp. v. Digi Real Estate Foundation,WIPO Case No. D2005-1111, where the domain name in issue was : Neiman Marcus Group, Inc. v. S1A, NAF Case No. FA 128683 where the domain name in issue was ; and Marie Claire Album v. Geoffrey Blakely, WIPO Case No. D2002-1015, where the domain name in issue was .
5.A.2 Rights or Legitimate Interests
5.A.2.1 Complainant asserts that evidence that the Respondent is not commonly known by the domain name in issue is its very existence as the registrant, administrative contact and billing contact in the WHOIS information. This was a factor taken into consideration in Tercent Inc v. Lee Y,i NAF Case No. FA 139720, where the Panel found that “…nothing in Respondent's WHOIS information implies that Respondent is ‘commonly known’ by the disputed domain name.”
5.A.2.2 Complainant has neither licensed nor otherwise authorized the Respondent to use the EHOW trademark for a domain name.
5.A.2.3 Whereas the Complainant's EHOW trademark has been continually used since August 1999, the domain name in issue was registered some 7 years later on November 29, 2006 and has not been used in connection with a bona fide offering of goods or services. Respondent's use of the domain name to generate click through revenue (as explained in paragraph 4B above) is not a bona fide use of the domain name which is confusingly similar to the Complainant's well-known EHOW trademark.
5.A.2.4 Nor is that use of the domain name in issue a legitimate non commercial or fair use under paragraph 4(c)(iii) of the Policy. Rather, it is intended to misleadingly divert Internet traffic intended for the Complainant's website and thereby to tarnish the Complainant's EHOW trademark.
5.A.2.5 Complainant cites in support of its case in this respect a number of decisions under the Policy where use of a Complainant's trademark in a domain name to divert Internet users to the Respondent's website was found not to be a legitimate non commercial or fair use under paragraph 4(c)(iii) of the Policy. They are Bank of America Corporation v. Northwest Free Community Access, NAF Case No. FA 180704, where the domain name in issue was ; and Sanofi-aventis v. Montanya ILtd.,WIPO Case No. D2006-1079, where the domain name was .
5.A.2.6 Complainant also asserts that use of the typosquatted version of a Complainant's mark – as is the case here – of itself indicates a lack of rights or legitimate interests in the domain name in issue, citing the decision in InfoSpace v. TBD Entertainment, NAF Case No. FA165120. In that case the Complainant's trademark was DOGPILE and the domain name in issue was .
5.A.3 Registered and Used in Bad Faith
5.A.3.1 Given the well-known status of the Complainant's EHOW trademark, Complainant says it is inconceivable that the Respondent was not aware of that mark when registering the domain name in issue. In that respect, the Complainant cites the decisions in A, Inc v. Victor Korotkov,WIPO Case No. D2002-0516, where the domain name in issue was and A, Inc .v. MCL International Limited,WIPO Case No. D2000-1678, where the domain name was
5.A.3.2 Furthermore, Complainant contends that intentional use of a well-known trademark for unauthorized commercial gain through as click-through website constitutes bad faith registration, citing Caesars Entertainment, Inc. v. Infomax, Ltd., WIPO Case No. D2005-0032, where the domain name in issue was and the Complainant owned US trademark registrations for PARIS CASINO RESORT: PARIS and PARIS LAS VEGAS.
5.A.3.3 As to use in bad faith, the Complainant asserts that the circumstances of paragraph 4(b)(iv) are present on the facts of this case. Namely, that by using the domain name in issue the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the “” website by creating a likelihood of confusion with the Complainant's EHOW trademark as to the source, affiliation or endorsement of that website. In that respect, the Complainant cites the Toyota Motor Credit Corporation v. Digi Real Estate Foundation,WIPO Case No. D2005-1111, referred to in paragraph 5.A.1.2 above and to Wilmington Trust Co. v. Digi Real Estate Foundation,WIPO Case No. 2006-0667, where the domain names in dispute were and .
5.A.3.4 Finally, the Complainant points to the 40 or more cases decided under the Policy against the Respondent. In certain of those cases the Respondent has been characterised in the decision as a cybersquatter, as being engaged in a pattern of bad faith use by registering domain names containing third party trademarks and as conducting itself in breach of paragraphs 4(b)(ii) and (iv) of the Policy. The cases specifically cited are, again, the Toyota, supra; Wilmington Trust Co. v. Digi Real Estate Foundation,WIPO Case No. 2006-0667, referred to in the preceding paragraph; Asurion Corporation v. Digi Real Estate Foundation,WIPO Case No. D2006-0765, where the domain name was ; Lenox Financial Mortgage, LLC, JMH Financial Mortgage Corp d/b/a Lenox Financial Mortgage, Corp, .v. Digi Real Estate Foundation,WIPO Case No. D2006-1047, where the domain name was ; Morgan Stanley and Novus Credit Services Inc. v. Digi Real Estate Foundation, NAF Case No. FA767185, where the domain name included and ; Teledyne Technologies Incorporated v. Digi Real Estate Foundation,WIPO Case No. D2006-1054, where the domain name was ; and E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043, where the domain name was .
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name 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.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.A Identical or Confusingly Similar
6.A.1. The Complainant has established rights in the trademark EHOW both through registrations for that mark in a number of countries and also through very significant use of that trademark in the provision of Internet services.
6.A.2. The domain name in issue is confusingly similar to that EHOW trademark. The addition of the prefix “www” in the domain name does not avoid that confusing similarity. Indeed, the addition of “www” appears calculated to foster confusion not only with Complainant’s mark, but specifically with its website at “”.
6.A.3. The Panel finds for the Complainant under the first element of the Policy.
6.B. Rights or Legitimate Interests
6.B.1. In the absence of a Response, there is no evidence of any of the circumstances identified in paragraph 4(c) of the Policy. Indeed, the evidence is all in the other direction. Specifically, the Respondent is plainly not commonly known by the domain name. Nor has bona fide use been made by the Respondent of the domain name before being put on notice of this dispute. Such cannot be the case given the widely known status of the EHOW trademark which had been in use for more than 7 years before registration of the domain name and the fact that the domain name is confusingly similar to that mark. Finally, use of the domain name to generate click-through revenue is, in the circumstances, demonstrably neither a legitimate non commercial use nor a fair use.
6.B.2. The Panel finds for the Complainant under the second element of the Policy.
6.C. Registered and Used in Bad Faith
6.c.1. Commonly, where lack of rights or legitimate interests in a domain name is found, a finding of bad faith registration and use follows as a consequence. Such is the case on the facts of this Complaint.
6.c.2. Given the well-known status of the EHOW trademark it is inconceivable that the Respondent was unaware of it when registering the domain name in issue. The absence of a Response, the actual use to which the Respondent has put that domain name and the pattern of similar behaviour condemned in a number of previous decisions against the Respondent under the Policy all go towards indicating bad faith registration.
6.c.3. As to use in bad faith, the Panel is satisfied that the circumstance set out in paragraph 4(b)(iv) of the Policy are met in the light of the evidence set out in paragraphs 5.A.3.3 and 5.A.3.4 above.
6.c.4. Consequently, the Panel finds for the Complainant under the third element of the Policy.
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.
David Perkins
Sole Panelist
Dated: November 6, 2007
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