WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Myxer Inc. v. Domain Park Limited
Case No. D2008-0973
1. The Parties
The Complainant is Myxer Inc., of United States of America, represented by Foley & Lardner LLP, United States of America.
The Respondent is Domain Park Limited, Samoa; Domain Park Limited, Germany.
2. The Domain Names and Registrars
The disputed domain names
are registered with Moniker Online Services, LLC and R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2008. On June 27, 2008, the Center transmitted by email to Moniker Online Services, LLC and R Services Corp a request for registrar verification in connection with the domain names at issue. On June 27, 2008, Moniker Online Services, LLC, and on July 2, 22008, R Services Corp 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 “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 July 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2008.
The Center appointed David Perkins as the sole panelist in this matter on August 15, 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
4.A. The Complainant
4.A.1 The Complainant, Myxer Inc., provides telecommunication services including the dissemination of mobile content via the Internet and the dissemination of data via mobile telephones. It was previously known as mVisible Technologies, Inc and changed to its present corporate name in January 2008.
4.A.2 The Complainant has more than 10.4 million unique users of its services in 199 countries worldwide, including the United States, Argentina, Australia, Belgium, Brazil, Canada, China, Colombia, Denmark, Finland, France, Germany, India, Indonesia, Iran, Ireland, Italy, Japan, Mexico, Netherlands, New Zealand, Norway, Philippines, Poland, Romania, Russia, Saudi Arabia, Singapore, South Africa, Spain, Sweden, Switzerland, Turkey, the United Arab Emirates, the United Kingdom, Uruguay and Venezuela. In May 2008 alone more than 9.5 million visits were made to the Complainant’s website by over 4.7 million unique visitors. Of that number, the Complainant says that 1.2 million visitors were directed to the Complainant’s website as a result of typing variations of its MYXER trademarks into popular online search engines.
4.A.3 Since 2005 when the Complainant began using its MYXER trademark, it has spent more than US$100,000.00 a year advertising its services under and by reference to the MYXER trademarks and in 2007 spent some US$500,0000.00 in such advertising.
4.A.4 The Complainant’s MYXER trademarks
The Complainant is the proprietor of the following registered trademarks:
Country
Registration Number
Mark
Class(es)
Date of Application / Registration
United States of America
3,219,875
MYXER TONES
38
Application: 28 March 2006
Registered: 20 March 2007
First Used: 20 September 2005
United States of America
3,224,719 9
MYXER TONES (Stylised)
38
Application: 28 March 2006
Registered: 3 April 2007
First Used: 31 October 2005
United States of America
3,365,947
MYXER
38
Application: 9 November 2006
Registered: 8 January 2008
First Used: 20 September 2005
United States of America
App. 78/971,619
MYXER and device
38
Application: 11 September 2006
Registered: 8 January 2008
European Union Community Trade Mark
005376661
MYXER TONES
38
Application: 26 September 2006
Registered: 5 September 2007
European Union Community Trade Mark
005376678
MYXER TONES (Stylised)
38
Application: 26 September 2006
Registered: 5 September 2007
European Union Community Trade Mark
005771753
MYXER
38
Application: 5 March 2007
Registered: 30 January 2008
European Union Community Trade Mark
005771761
MYXER and device
38
Application: 5 March 2007
Registered: 30 January 2008
4.A.5 The Complainant’s MYXER domain names
The Complainant is the proprietor of, inter alia, the following MYXER domain names
Domain Name
Date Registered
30 October 2005
15 July 2005
8 May 2006
4.B. The Respondent
4.B.1 As registrant of and the Respondent is registered with an address in Samoa. Those domain names were registered in July 2007.
4.B.2 As registrant of , , and the Respondent is registered with an address in Berlin, Germany. Those domain names were registered in August and September 2007.
4.B.3 According to the Complainant, the Respondent has been the Respondent in 32 cases under the Policy in each of which the Respondent has been ordered to transfer to the Complainant(s) the domain name(s) in issue.
4.B.4 In the absence of a Response, nothing further is known of the Respondent.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
5.A.1 Complainant’s case is that all 6 of the disputed domain names are confusingly similar to Complainant’s family of MYXER marks in which the Complainant has rights.
5.A.2 The Complainant cites numerous cases under the Policy in which a domain name was held to be confusingly similar to the Complainant’s trademarks in circumstances where the disputed domain name incorporates a distinctive mark in its entirety. For example in the following instances:
Trademark
Domain Name
UDRP Case
EAUTO
Eauto LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047
AOL
MSN
Instant Messenger
and others
America Online Inc v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident,
WIPO Case No. D2000-1495
the disputed domain name merely adds or subtracts a single letter to a distinctive mark.
For example in the following instances:
Trademark
Domain Name
UDRP Case
BBVA
Banco Bilbao Vizcaya Argentaria, S.A. v. femi abodunrin,
WIPO Case No. D2004-0404
MICROSOFT
Microsoft Corporation v. Charlie Brown,WIPO Case No. D2001-0362
THALASSA
Accor v. Eduardo Marchiori Leite,
WIPO Case No. D2004-0680
REUTERS
and others
Reuters Ltd v. Global Net 2000, Inc,WIPO Case No. D2000-0441
the disputed domain name merely adds a generic word to a famous trademark. For example, the EAUTO case referred to above.
5.A.3 Here, the Complainant says that the Respondent has either incorporated the Complainant’s MYXER or MYXER TONES trademarks in their entirety or has used immaterial variations of those trademarks. For example:
Complainant’s Trademarks
Disputed Domain Name
MYXERTONES
MYXER
The underscored letter or letters illustrates the differences to the Complainant’s MYXER marks.
5.A.4 Here, the Claimant relies on mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 where a three-member panel unanimously ordered transfer of 34 of the 35 MYXER disputed domain names and by a majority transfer of the other disputed domain name . Of those 35 domain names 3 were held to be identical to the MYXER TONES trademark, 25 contained misspelling or minor variations of the MYXER and MYXER TONES trademarks, 3 were identical to the MYXER or MYXER TONES trademarks but for the addition or removal of the single letter “s” to those marks, and 14 were held to be similar to the MYXER and MYXER TONES trademarks by reason of fully incorporating those marks or some slight variation on those marks with the addition of terms such as “the”, “my”, “codes” and “ring” which the Panel held are generic for the services in Class 38 covered by the marks.
5.A.5 Furthermore, the Complainant points to the fact that the websites to which each of the 6 disputed domain names resolve all contain sponsored links to the websites of providers of downloadable ring tones for cellular phones and/or downloadable music, which are the same or related services to those provided by the Complainant. These websites belong to competitors in the same industry as the Complainant.
Rights or Legitimate Interests
5.A.6 The Complainant says there is no evidence that the Respondent can bring itself within any of the circumstances set out in paragraph 4(c) of the Policy.
5.A.7 Specifically, there is no evidence that the Respondent has been commonly known by any of the disputed domain names,
5.A.8 Nor, the Complainant says, is the Respondent making legitimate non-commercial or fair use of any of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish its family of MYXER marks. The reverse is the case. The Respondent has, according to the Complainant, intentionally set out to deceive and the disputed domain names comprise a scheme to mislead consumers into believing that the sponsored website links located through those domain names are affiliated with, sponsored by or endorsed by the Complainant. To illustrate that such practice does not provide rights or a legitimate interest, by way of example the Complainant refers to Micro Electronics, Inc. v. J Lee,WIPO Case No. D2005-0170 and to Drake Bliss v. Cybaline Enterprises,WIPO Case No. D2001-0718. In the former case; the trademark was MICRO CENTER and the disputed domain name was . In the latter the complainant’s trademark was SINGLESITES.COM and the disputed domain name was . In both cases no rights or legitimate interest in the disputed domain name was found by reason of them both linking to commercial websites unrelated to the businesses of the complainant trademark owners.
5.A.9 The Complainant also says that the Respondent can have no rights or legitimate interest in any of the 6 disputed domain names, because use of those names will infringe the Complainant’s MYXER marks both under the Lanham Act, 15 USC 1125 and other laws.
Registered and Used in bad Faith
5.A.10 The Complainant asserts that the circumstances set out in paragraphs 4(b)(iii) and (iv) are present on the facts of this case, so demonstrating both registration and use in bad faith.
5.A.11 First, the Complainant asserts that its MYXER marks have been used in commerce worldwide for several years in connection with provision of mobile content services, including in areas where the Respondent is located, namely Germany and the Pacific Islands.
5.A.12 Second, the Complainant asserts that the Respondent was undoubtedly aware of the Complainant’s MYXER marks when it registered the disputed domain names in the period July to September 2007. In that respect, the Complainant points to use of its MYXER trademarks and domain names since 2005, by reason of which use those MYXER marks are well known and widely recognised for use in relation to the provision of its mobile content services.
5.A.13 Third, by reason of the registration of its MYXER and MYXER TONES US trademarks, the Respondent had constructive notice of those trademarks, which were registered in March and April 2007, prior to registration of the disputed domain names. Here, the Complainant cites Volvo Trademark Holding AB v. Cosmos1,WIPO Case No. D2003-0648 where the disputed domain name was registered in February 2000 long after worldwide registration of the well known VOLVO trademark.
5.A.14 Fourth, the Respondent is deriving commercial benefit from use of the disputed domain names to link to third party websites.
5.A.15 Fifth, those links are to websites of the Complainant’s competitors in the same field of activity and this has consistently been held to demonstrate bad faith use in cases decided under the Policy. In that respect, the Complainant cites:
Parke-Bel Ltd., Inc. v. Maltuzi LLC, NAF Case No. 1082265, where the Complainant’s TOUCH OF CLASS trademark was used in relation to retailing bed and bath accessories and other home furnishings and the Respondent’s domain name was linked to competing business.
Enterprise Rent-a-Car Company v. Andrey Vishnevskii d/b/a Cosmos1 aka NA NA, NAF Case No. 263577, where the Complainant’s ENTERPRISE trademark was used in the provision of car rental services in over 5,000 locations in 5 countries and the Respondent’s domain name linked to a variety of other car rental websites.
Southern Exposure v. Southern Exposure, Inc. NAF Case No. 94864, where the Complainant’s SOUTHERN EXPOSURE trademark was used for the production of motion film and video tapes and the Respondent’s domain name resolved to its own competing website.
Sterling Jewelers, Inc. v. InterMos and Cosmos1,WIPO Case No. D2002-0899, where the Complainant’s JARED THE GALLERIA OF JEWELRY and KAY trademarks were used in connection with jewellery stores and the Respondent’s and domain names resolved to a website with a search engine which in turn linked to websites offering jewellery offered for sale by competitors.
5.A.16 Sixth, the Complainant asserts that actual knowledge of a Complainant’s trademark rights and, hence, bad faith registration can be inferred from multiple registrations of domain names containing misspellings of the Complainant’s trademark. In this case, the Respondent has registered 6 such domain names. The Complainant refers to three cases in point, namely:
Microsoft Corporation v. Charlie Brown, supra, [see, paragraph 5.A.2 above]
Sports Holdings Inc. v. “Texas International Property Associates” /”Sports Holdings Inc.” , WIPO Case No. D2007-0430, where the Complainant’s trademarks where HIBBETT SPORTS and SPORTS ADDITIONS and the Respondent had 18 domain names which were confusingly similar to those marks.
AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937, where the Complainant’s trademark was ALTAVISTA and the Respondent had registered and .
5.A.17 Seventh, it is plain, the Complainant says, on the facts that the Respondent intended to trade and is trading on the recognition of the MYXER marks with a view to deceive and defraud the public.
5.A.18 Eighth, the Complainant says that registration by the Respondent of the 6 disputed domain names was primarily for disrupting the Complainant’s business, citing the Enterprise Rent-A-Car case which is referred to in paragraph 5.A.15 above.
5.B Respondent
As noted, no Response has been filed.
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 recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 It is clear that the Complainant is the registered proprietor of the trademarks MYXER and MYXER TONES, which have been used since September 2005 and which were registered as trade marks in the United States of America in March and April 2007 and as Community Trade Marks in Europe in September 2007.
6.6 The analysis of the domain names in the mVisible technologies case [paragraph 5.A.4 above] is of equal application in this case. From the comparison set out in paragraph 5.A.3 above it is clear that in this case – as in the mVisible Technologies case - each of the 6 disputed domain names differs from the Complainant’s MYXER and MYXER TONES trademarks in immaterial respects, comprising (1) misspellings and the omission or addition of one letter and (2) the addition of generic words. The first category comprises ; ; and . The second category comprises and .
6.7 In the circumstances, each of the 6 disputed domain names is confusingly similar to the Complainant’s MYXER marks and the Complaint satisfies the first requirement of the Policy.
Rights and Legitimate Interests
6.8 Use by the Respondent is commercial, (since revenue is presumably obtained from linking the 6 disputed domain names to the websites of companies competing in the same business as the Complainant). Such use, for the same reason, is not fair or bona fide use and, given the confusing similarity of the 6 disputed domain names to the Complainant’s MYXER marks, it is likely to misleadingly divert consumers. Accordingly, the Respondent cannot establish rights or a legitimate interest under paragraph 4(c)(iii) of the Policy.
6.9 Further, there is no evidence that the Respondent can demonstrate such right or legitimate interest under paragraphs 4(c)(i) and (ii) of the Policy or otherwise.
6.10 In the circumstances, the Complaint meets the requirement of paragraph 4(a)(ii) of the policy.
Registered and Used in bad Faith
6.11 The Complainant asserts that the facts establish bad faith under paragraph 4(b)(iii) of the Policy. However, that provision requires disruption of the business of a competitor and there is no evidence that the Respondent is a competitor of the Complainant in the business of providing dissemination of mobile content via the Internet or the dissemination of data via mobile telephones. Hence, that assertion by the Complainant fails.
6.12 However, it is abundantly clear on the facts that the circumstances provided for in paragraph 4(b)(iv) of the Policy apply in this case. In that respect, there is no need to reiterate the facts set out in paragraph 5.A.4 above.
6.13 Additionally, the Respondent has been involved in 32 prior cases under the Policy in each of which it has been ordered to transfer the domain names disputed in those cases. This is powerful evidence of a history of cybersquatting and, hence, bad faith.
6.14 Finally, it is also clear on the evidence that the disputed domain names were registered in the period July to September 2007, some two years after the Complainant had begun using its MYXER marks and also subsequent to registration of those marks in the United States and to registration and use of the Complainant’s MYXER and MYXER prefixed domain names. This evidence, together with the subsequent bad faith use of the disputed domain names and the lack of rights or legitimate interests in those domain names all go to establish registration in bad faith.
6.15 In the circumstances, the Complaint satisfies the twin requirements of paragraph 4(a)(iii) 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 names ; ; ; ; and be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: September 9, 2008
Full & Egal Universal Law Academy