WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION GasBuddy Organization, Inc. v. Whois Protection Service LLC Case No. D2009-0607 1. The Parties
The Complainant is GasBuddy Organization, Inc. of Minnesota, of United States of America, represented by Dustin Coupal, United States of America.
The Respondent is Whois Protection Service LLC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2009. On May 8, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the disputed domain name. On May 12, 2009, CSL Computer Service Langenbach GmbH dba J transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent. The Center verified that 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 May 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 11, 2009.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 19, 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
On September 25, 2007, the Complainant registered the service mark GASBUDDY with registration number 3,296,816 at the United States Patent and Trademark Office. The service mark GASBUDDY was first used in commerce on December 6, 2000. The Complainant's service mark is registered for advertising and commercial information via the Internet; advertising via electronic media and specifically the Internet; market manipulation, research and analysis, whether or not via the Internet; providing and rental of advertising space on the Internet; providing consumer product information via the Internet, in class 35.
The Complainant also states that it owns the domain name at which it posts links, information and searches regarding the location and purchase of cheap gas in various areas throughout the United States. The Panel notes that a WhoIs search of shows a creation date of December 6, 2000, which coincides with the date of first use in commerce by the Complainant of its GASBUDDY mark.
The Respondent registered the disputed domain name on July 26, 2005. 5. Parties' Contentions A. Complainant
The Complainant argues the following:
- the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The burden that the Complainant must meet under paragraph 4(a) of the Policy is to prove:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant established that there is a trademark or service mark in which it has rights.
The test for identity or confusing similarity under the first element of the Policy is a direct comparison between the disputed domain name and the trademark at issue (AIDA Cruises German Branch of Società di Crociere Mercurio S.R.L. v. , Ltd,WIPO Case No. D2008-0110). The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant's registered trademark (AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758).
The Panel considers the disputed domain name to be composed of the non-distinctive generic terms “my” and a term identical to the GASBUDDY service mark. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark in the present case gives rise to confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Wells Fargo Home Mortgage v. domains Ventures, FA 810215 (Nat. Arb. Forum Nov. 14, 2006) (finding the addition of the term “your” to the WELLS FARGO mark in the domain name to be insufficient to distinguish the disputed domain name from the complainant's mark under Policy paragraph 4(a)(i)).
The additional non-distinctive term “my” does little to reduce the confusing similarity of the disputed domain name with the Complainant's trademark. The disputed domain name is likely to lead Internet users to assume that the website that is linked to the domain name offers services supplied by the Complainant.
Accordingly, the Panel agrees with the Complainant that the domain name is confusingly similar to the Complainant's service mark GASBUDDY. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
It is established case law that it is sufficient for the complainant to make a prima facie showing that the respondent has no right or legitimate interest in the domain name in order to shift the burden of proof to the respondent. (See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.)
The Panel notes that based on the record the Respondent has not been commonly known by the domain name and that the Respondent has not acquired trademark or service mark rights. The Respondent's use and registration of the disputed domain name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate non-commercial or fair use of the domain name.
The Respondent's only use of the domain name has been to have a parking page on which the Respondent seems to offer links to services related to selling cheap gas. These links on the website and the search tool both refer to a sort of landing page with links to third party websites, offering cheap gas. Moreover, Respondent presumably receives referral fees of some sort for the placement of these advertisements on the corresponding website and hereby diverts traffic to websites of direct competitors of Complainant. Such use does not constitute a bona fide use or a legitimate non-commercial use, as contemplated by the Policy. (See e.g, McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, FA 1230837 (Nat. Arb. Forum December 4, 2008); Stunt Dynamics c/o John Zimmerman v. BWI Domains c/o Domain Manager, FA 1226425 (Nat. Arb. Forum, Nov. 14, 2008); MacKenzie-Childs Aurora LLC v. BWI Domain Manager c/o Domain Manager, FA 1218043 (Nat. Arb. Forum, September 12, 2008)).
Diverting Internet traffic to third party websites offering cheap gas directly competes with the Complainant as the Complainant appears to be using its mark to offer and advertise links, information and searches for the location and purchase of inexpensive gas. In context, such use can even be considered to be misleading and damaging to the Complainant's trademarks. In the present case, the Panel considers that the Respondent has likely misleadingly diverted consumers and may have even damaged the service mark at issue.
As a result, the Panel is of the opinion that Complainant made a prima facie showing that Respondent had no rights or legitimate interests in the disputed domain name that the Respondent has not rebutted; as such, the Panel finds for the Complainant under the second element of the Policy as well. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the use of the domain name for intentionally attempting to attract, for commercial gain, Internet users to a 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 the respondent's web site or location or of a product or service on the respondent's web site or location. (i) Bad Faith Registration
In the instant case, the Respondent most likely had knowledge of the Complainant's rights in the GASBUDDY service mark at the moment he registered the disputed domain name, since the Complainant's service mark was first used in commerce on December 6, 2000. The Complainant continuously used the service mark on its website, since that date. This alone makes it conceivable that Respondent had knowledge of the service mark GASBUDDY at the moment of registration of the disputed domain name.
Besides, the Panel is of the opinion that the failure to participate in the proceeding under the present circumstance can be suggestive of bad faith registration and use and a lack of rights or legitimate interests in the mark (See, e.g., Mars, Incorporated v. Vanilla, Ltd.,WIPO Case No. D2000-0586).
The Respondent had the opportunity to explain why it registered the disputed domain name in 2005 incorporating the service mark of the Complainant but has chosen not to file a Response.
The lack of any response in the present case combined with the established rights in the service mark by Complainant and with the fact that the name of the Respondent indicates that it is a privacy shield and a front for the real registrant, the parking page that displays links that serve to divert Internet users to third party websites offering cheap gas, which itself is in direct competition with the Complainant, causes the Panel to infer bad faith registration (See Farouk Systems, Inc. v. Whois Protection,WIPO Case No. D2009-0515). (ii) Bad Faith Use
The Panel finds that, by using the domain name for a set of links to other providers of gas, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's GASBUDDY service mark as to source, sponsorship and affiliation of the website. This is further bolstered by the composition of the domain name itself which incorporates the Complainant's service mark with the mere addition of the word “my”.
In addition to that, the Respondent's website provides links to the Complainant's competitors, selling competitive products to Internet users. Therefore, Internet users are likely to get the idea that the Respondent's site at the disputed domain name is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion would in all likelihood attract more customers to the site of the disputed domain name resulting in commercial gain as the Respondent's site provides links to numerous commercial websites.
Therefore, the Panel finds that the Respondent is clearly using a confusingly similar domain name intentionally to attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's service mark. Use under paragraph 4(b)(iv) of the Policy applies. Accordingly, the Panel finds that the Respondent registered and is using the disputed 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.
Flip Jan Claude Petillion
Sole Panelist
Dated: July 3, 2009
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