WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION GoD, Inc. v. D Case No. D2009-0073 1. The Parties
The Complainant is GoD, Inc., Scottsdale, Arizona, United States of America, represented by The Go Daddy Group Inc, United States of America.
The Respondent is D, Laguna Beach, California, United States of America, internally represented. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2009. On January 21, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On January 21, 2009, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 27, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 30, 2009. 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 (the “Policy” or “UDRP”), 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 February 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2009. The Response was filed with the Center on February 23, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on March 9, 2009. 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
The Complainant is an ICANN accredited domain name registrar in the United States of America (the “United States”), and reputedly the world's largest domain name registrar. The Complainant is the owner of United States trademark registrations for the marks GO DADDY, GODADDY.COM, GO DADDY.COM, and DADDY (the “GO DADDY marks”), for domain name registration and domain-related products and services.
The Complainant first applied to the USTPO to register the GO DADDY mark on August 14, 2001, and the USPTO issued certificate of registration for GO DADDY on April 9, 2002. The certificate of registration reflects a first use date of November 3, 2000. The Complainant registered the corresponding domain name on March 3, 1999.
The Respondent is a reseller of domain name registration and domain- related products and services through Tucows, Inc. The Respondent operates the myDiscountD “discountd” and D “www.d” websites. In addition to domain name registration and other domain-related products and services, the Respondent also offers domain names for sale on these websites.
The Respondent initially registered the disputed domain name on June 16, 2002. The Respondent uses the domain name to redirect Internet users to the Respondent's “DiscountD” website.
On July 2, 2007, the Respondent registered the disputed domain names and , and the Respondent's administrative contact also registered the domain name . The Respondent thereafter created a web page at , on which the Respondent accuses the Complainant of false advertising of low cost domain name registration in order to “steal other registrar's customers”.
The Respondent has used the disputed domain names and to redirect Internet users to this webpage, the current version of which is entitled “GoToDaddyNOT.org”. The Respondent promotes itself on the myDiscountD website as the “USA Domain Names Discount Price Leader”, and claims (on the GoToDaddyNOT.org” website) to have lost “10s of thousands of domain names and customers” to the Complainant as a result the alleged false advertising.
The Complaint did not include the domain name in this dispute, based on what the Complainant concedes to be the “non-commercial, legitimate use of [the domain name] accusing Go Daddy of false advertising and other advertising violations”. The Complainant maintains, however, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names and . 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to its registered GO DADDY mark, which the Complainant claims to have used in commerce since as early as March 1999. According to the Complainant, the inclusion of the pejorative word “not” in two of the disputed domain names does not serve to dispel confusing similarity.
According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain names because the Respondent is a direct competitor of the Complainant, and is using the confusingly similar domain names to redirect Internet users to the Respondent's commercial website. The Complainant asserts that the Respondent is not commonly known by the disputed domain names, and that, unlike , the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant further contends that the Respondent has registered and used the disputed domain names in bad faith, According to the Complainant, the Respondent, as a direct competitor of the Complainant, clearly was aware of the Complainant GO DADDY marks when the disputed domain names were registered, and the Respondent's use of the disputed domain names to redirect Internet users to websites offering products and services that competed directly with those of the Complainant is evidence of bad faith use within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent maintains that before registering the disputed domain name on June 16, 2002, a search of the USPTO database returned 403 live records for registered marks or trademark applications that contained the dictionary word “daddy. The Respondent further observes that there are thousands of domain names incorporating the term “daddy”, many of which are similar to the Complainant's mark, some of which are offered for sale on the Complainant's own website.
According to the Respondent, this prevents the disputed domain name from being considered confusingly similar to the Complainant's GO DADDY marks. The Respondent further asserts that the dominance and fame of the Complainant leave no chance for confusion between the domain names and .
The Respondent contends that is has established rights or legitimate interests in the disputed domain name because it registered the domain name based on its descriptive meaning without any intent to trade on the Complainant's good will. According to the Respondent the use of the disputed domain name to redirect Internet users to one of the Respondent's reseller websites constitutes a legitimate noncommercial or fair use of the domain name. The Respondent asserts that the amount of Internet traffic redirected by the domain name is minimal.
The Respondent contends that the Complainant has long been aware of the Respondent's ownership of the domain name, and that the Complaint brought this administrative proceeding under the UDRP in an attempt to retaliate against the Respondent's exercising its right of free speech to protest the Complainant's deceptive advertising practices. The Respondent also asserts that the Complainant has recently registered .
The Respondent maintains that the Complainant delayed for more than seven years after the Respondent registered . As a result, the Respondent asserts that the Complainant failure to file the complaint earlier constitutes an abandonment of any rights in the disputed domain name under common law principles. The Respondent further argues that the substantial after market value of the domain name is the Complainant's primary motivation. In view of the foregoing, the Respondent requests the Panel to make a finding of reverse domain name hijacking respecting the domain name.
Because the Respondent asserts that the Complainant should not have been permitted to pursue its complaint regarding the domain name in the same administrative proceeding as its complaints regarding the and domain names, the Response does not address the latter dispute directly. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Laches
The Respondent points out that it used the disputed domain name for seven years before the Complainant complained of such use. The Respondent's argument that the Complainant's failure to timely object to the Respondent's use of the should prevent the Complainant from now contesting such use raises the issue of laches.
The parties are both located in the United States, where courts recognize the doctrine of laches (undue delay in asserting a legal claim, resulting in prejudice to the respondent). However, the Panel concludes that the equitable defense of laches does not properly apply in this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See, e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes). See also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §31:10 (4th ed. 2005), and cases cited therein (in common law, the defense of laches bars the recovery of damages incurred before the filing of a lawsuit; this is not apposite to injunctive relief in a trademark action that seeks to avoid confusion among customers in the future).
Accordingly, the Panel declines to dismiss the Complaint on the ground that the Complainant inexcusably failed to seek the transfer of the disputed domain name more promptly. C. Identical or Confusingly Similar
The Panel finds that each of the domain names are confusingly similar to the Complainant's GO DADDY marks for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The Panel does not find the insertion of the word “to” between the words “go” and “daddy” to be sufficient to dispel confusing similarity with the Complainant's mark, particularly given the use of the disputed domain names in relation to domain name registration and other domain-related products and services. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524. Nor does the Panel find the inclusion of the word “not” in the disputed domain names and , even if considered pejorative or derogatory, sufficient to dispel the confusing similarity with the Complainant's mark. See e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647 (and decisions cited in footnote 5 therein).
The Complainant without question has established rights in the GO DADDY marks. At a minimum, the Complainant's marks are entitled to a presumption of validity by virtue of its registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. That presumption is not overcome by the Respondent's reliance on third-party use of “daddy” in contexts other than that for which the Complainant has sought and obtained registration of its GO DADDY marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The record convincingly establishes that the Respondent was aware of the Complainant's rights in the GO DADDY mark at the time it registered each of the disputed domain names. The Respondent, a direct competitor of the Complainant, has used the confusingly similar disputed domain name to redirect Internet users to the Respondent's myDiscountD website. The Respondent by its own admission has used the confusingly similar disputed domain names and to redirect Internet users to a page on the Respondent's myDiscountD website. There is no indication in the record that the Respondent has ever been commonly known by any of the disputed domain names.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent maintains that it registered the disputed domain name because of the appeal of “daddy” as a dictionary term or commonly used descriptive phrase, and not because the value of the disputed domain name in relation to the Complainant's GO DADDY mark. A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant's trademark in mind. See, e.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Thus, where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).
In this instance, however, the Respondent registered a domain name that is confusingly similar to the Complainant's GO DADDY mark, and has used it to redirect Internet users to a website where the Respondent provides domain name registration and domain-related products and goods in direct competition with the Complainant. The record does not reflect the Respondent's use of the disputed domain name for any apparent reason other than in an attempt to exploit and profit from the Complainant's GO DADDY mark. The Respondent's use of a domain name that is confusingly similar to a competitor's trademark in order to drive Internet traffic to the Respondent's competing website does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E v. Ultimate Search, Inc.,WIPO Case No. D2001-1319. See also Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd.WIPO Case No. D2004-0088.
Nor, under the circumstances of this case, can the Respondent credibly claim to be making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy, since the Respondent is intentionally using this domain name to drive Internet users to its commercial “DiscountD” website. See Covanta Energy Corporation v. Anthony Mitchell,WIPO Case No. D2007-0185 (respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy).
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name .
The Panel entertains some doubt whether, given the circumstances at hand, the Respondent's use of the disputed domain names and can be considered a legitimate noncommercial or fair use without intent for commercial gain within the contemplation of paragraph 4(c)(iii) of the Policy. As noted above, the Respondent is a direct competitor of the Complainant, and the Respondent's motivation appears in part to stem from a loss of domain name business to the Complainant due to allegedly misleading advertising. Nevertheless, because, as discussed below, the Panel concludes that the Complainant has failed to meet its burden of proving bad faith registration and use of these two domain names under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in these disputed domain names is not necessary to the Panel's decision in this case. E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out of pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The circumstances in the record dispel any doubt that the Respondent was aware of the Complainant's trademark rights at the time the Respondent registered each of the disputed domain names. With respect to the earliest of these domain name registrations the June 16, 2002 registration of the Respondent claims to have conducted a search of the USPTO database for all live records containing the term “daddy”, which would have disclosed the Complainant's prior registration of the GO DADDY mark. Of course, the Respondent and the Complainant had been competitors for several years by that time, making it otherwise unlikely that the Respondent was not already aware of the Complainant's rights in the GO DADDY mark.
The Panel finds that the Respondent's registration of the disputed domain name with knowledge of the Complainant's rights in the GO DADDY mark is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. The Panel finds the Respondent's claim to have used the domain name based only on the attractive qualities of the word “daddy” unpersuasive, if not pretextual. To the contrary, the Panel is persuaded by the circumstances surrounding the registration of the domain name that the Respondent's aim was to exploit and profit from the Complainant's rights in the GO DADDY mark. The Panel accordingly is of the opinion that the Respondent has used the disputed domain name in bad faith in an intentional attempt to attract Internet users to the Respondent's “DiscountD” website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv) of the Policy. See E v. Ultimate Search, Inc., supra.
While it is clear that the Respondent was aware of the Complainant's rights in the GO DADDY mark in July 2007, when the Respondent registered the disputed domain names and , the evidence in the record indicates that the Respondent to date has used these domain names only with a web page where the Respondent protests the Complainant's alleged deceptive advertising practices. This is the same web page to which the domain name resolves. The Panel notes that the Complainant, in explaining why it chose not to include the domain name in this dispute, indicated that the Respondent was making a “non-commercial, legitimate use of accusing Go Daddy of false advertising and other advertising violations”.
There is nothing in the record indicating that the Respondent's use of the disputed domain names and differs materially from the Respondent's use of the website. That being the case, and in view of the Complainant's concession that the Respondent is making a legitimate noncommercial or fair use of the domain name, the Panel is of the opinion that the Complainant has failed to meet its burden of proving bad faith registration and use under paragraph 4(a)(iii) of the Policy respecting the disputed domain names and . However, the Panel would not exclude the possibility, if the current non-commercial use of the domain names was to materially change and become abusive only after the rendering of the current decision, that this might provide grounds for a re-filed complaint
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy with respect to the disputed domain name , but not on the present record with respect to the disputed domain names and . F. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent's strong rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited.,WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151. In view of the Panel's decision, the Respondent's assertion of reverse domain name hijacking domain name is without merit. 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. The Complaint is denied as to the domain names and .
William R. Towns
Sole Panelist
Dated: March 23, 2009
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