WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intersections Inc. v. Jasper Developments Pty Ltd Case No. D2009-0795 1. The Parties
The Complainant is Intersections Inc. of Chantilly, Virginia, United States of America (“USA”), represented by Venable, LLP, USA.
The Respondent is Jasper Developments Pty Ltd of Melbourne, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on June 16, 2009.
The Center transmitted its request for registrar verification by email to the Registrar on June 17, 2009. The Registrar responded the same day, confirming that it had received a copy of the Complaint, that it was the Registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name was locked and that the registration agreement was in English. The Registrar provided the contact details in respect of the Domain Name on its Whois database and did not dispute that the registrant submitted in the registration agreement to the jurisdiction of the courts where the Registrar was located for the adjudication of disputes concerning or arising from use of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 13, 2009. The Response was filed with the Center by web page submission on the Center's website on July 13, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on July 15, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with, paragraph 7 of the Rules. The Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant provides credit management services, credit bureau information services and identity theft protection services. The Complainant owns the trademark CREDITCOMPARE registered in the Principal Register of the US Patent and Trademark Office in respect of credit bureau information services. The mark was originally registered on February 24, 1998 in the name of CreditComm Services LLC and assigned to the Complainant on January 10, 2000. The application for registration of the mark was filed on March 12, 1997, with first use in commerce on June 17, 1996.
The Domain Name was registered on February 3, 2003, and is currently being used by the Respondent for a website containing sponsored links which are automatically generated depending on what visitors to the website are looking for. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its registered mark CREDITCOMPARE.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name, in that the Respondent has no trademark rights consisting of the term “creditcompare” in any country, is not known by this mark, is not a provider of the Complainant's services, and has not been licensed or permitted to use the Complainant's mark.
The Complainant alleges that the Respondent is using the Domain Name with intent to mislead and divert the Complainant's consumers to its competitors and to disrupt the Complainant's business for the Respondent's commercial gain. According to the Complainant, the sponsored links on the Respondent's website include links to websites related to credit reporting services, credit bureau information services and credit counseling services. The Complainant maintains that a click-through site such as this does not create a legitimate interest in the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant states that “on information and belief” the Respondent registered the Domain Name with knowledge that the Complainant held rights in its CREDITCOMPARE mark. The Complainant relies on constructive notice of its trademark rights by virtue of its registration in the USA. The Complainant also refers to the Respondent's use of the Domain Name to link to USA-based credit monitoring services, credit reporting services, credit bureau information and credit counseling services as indicating that the Respondent was aware of the Complainant's rights despite providing an Australian address.
The Complainant submits that the Respondent's use of a confusingly similar Domain Name for the purposes of monetary gain by providing click-through links to other companies' products and services is evidence of bad faith. The Complainant further alleges that the Respondent is a known cyber-pirate who has previously been named in domain name disputes, citing three National Arbitration Forum decisions. The Complainant contends that this constitutes a pattern of conduct under paragraph 4(b)(ii) of the Policy and that the Respondent's conduct also falls under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. According to the Complainant, the reckless registration of domain names with the intention of collecting cash, unless and until the brand owner files a complaint, is a bad faith exploitation of rights in violation of the Policy.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
The Respondent does not dispute that the Complainant has a registered trademark for CREDITCOMPARE, but states that the Complainant has provided no evidence of the use of this mark in trade or commerce and that it has been unable to find any such use on the Internet. The Respondent also denies that its website features competitors of the Complainant and points out that the Complainant has not identified any specific examples. According to the Respondent, its website contains links to a wide range of consumer credit card services, in particular credit cards.
The Respondent states that it registered the Domain Name due to its natural association with the business of providing credit provider comparisons. It observes that the term “credit compare” is in common use referring to credit comparison services, but that it has found no use of the term by the Complainant itself.
The Respondent denies that it is using the Domain Name to mislead and divert the Complainant's customers, stating that its website carries automatically generated pay-per-click advertising that varies over time according to what visitors to the site are searching for. The Respondent notes that the links currently relate almost entirely to the provision of credit to consumers and that the Complainant has provided no evidence that those visiting its website are looking for the Complainant's services.
The Respondent submits that previous cases under the UDRP have confirmed that merely having a trademark registration does not prevent the use by others of the words comprising the mark where the use simply relates to the terms primary meaning in the English language.
The Respondent denies that the Domain Name was registered with knowledge that the Complainant had rights in the mark CREDITCOMPARE. The Respondent rejects the Complainant's contention that it is entitled to rely on constructive notice by virtue of the registration. The Respondent does not deny that its website is being monetized through pay-per-click links, but asserts that such usage has been held to be legitimate in previous decisions.
The Respondent requests that the Complaint be denied. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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. A. Identical or Confusingly Similar to a Mark in which Complainant has Rights
It is not disputed that the Complainant has registered rights in the mark CREDITCOMPARE.
The Domain Name is identical to this mark, apart from the generic top level domain suffix, which should be discounted for the purposes of paragraph 4(a)(i) of the UDRP.
The first requirement of the Policy is satisfied. B. Rights or Legitimate Interests
In the Panel's view, the Respondent's use of the Domain Name for a website comprising automatically generated sponsored links does not constitute a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the UDRP. Even where the second level domain (“SLD”) is a descriptive term and is being used in good faith, the Panel considers that monetization through automatically generated links does not come within this provision. On this point, the Panel agrees with and follows the decision in Trade Me Limited v. Vertical Axis Inc.,WIPO Case No. D2009-0093.
It appears that the Respondent is not commonly known by the Domain Name.
The Respondent admits that it is using the Domain Name for the purpose of commercial gain through sponsored links. It cannot therefore rely on paragraph 4(c)(iii) of the Policy.
The Panel considers that there is no other basis on which the Respondent can claim rights or legitimate interests in the Domain Name. In this Panel's view, merely registering and holding a domain name in good faith is insufficient to confer a right or legitimate interest in it for the purpose of the UDRP; if it were, paragraph 4(c) of the UDRP would be redundant.
The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
It is not suggested and there is no evidence that the Respondent registered or acquired the Domain Name for the purpose of selling, renting or otherwise transferring it to the Complainant or a competitor of the Complainant for valuable consideration. Paragraph 4(b)(i) of the Policy does not apply.
The Panel is not satisfied on the evidence that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. There is no direct evidence that the Respondent was aware of the Complainant's interest in the mark when it registered the Domain Name. Nor has the Complainant provided evidence of extensive use of the mark from which it might be inferred that the Respondent must have known of its interest in the mark.
Examination of the Complainant's website suggests that this lack of evidence is not due to inadvertence but rather reflects the fact that the Complainant is not actually using the mark. However, this may be, the burden of proof is clearly on the Complainant and has not been discharged on this point.
The Panel notes that the Respondent has been found to have registered and used domain names in bad faith on three previous occasions. However, none of these cases was decided on the basis that it had registered the domain name in question in order to prevent the complainant from reflecting its mark in a corresponding domain name. In these circumstances, the Panel cannot regard these past cases as supporting the allegation in the present case that the Domain Name was registered for this purpose, or as constituting a pattern of such conduct as required by paragraph 4(b)(ii) of the Policy.
The Panel also rejects the Complainant's contention that registration of its mark in the USA constitutes constructive notice of its rights to the Respondent. In line with the majority of previous decisions, the Panel considers that this presumption in US law should not normally be applied under the UDRP where the Respondent is not based in the USA: see paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
For similar reasons the Panel is not satisfied that the Respondent registered the Domain Name for the purpose of disrupting the Complainant's business, even if it could be regarded as a competitor for the purposes of paragraph 4(b)(iii) of the UDRP.
It is necessary next to consider whether the Respondent has used the Domain Name in an intentional attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark, in which case paragraph 4(b)(iv) of the UDRP would apply.
Where a domain name which is similar to a widely used mark is used for a website consisting of links which are automatically generated on the basis of searches made by visitors, it is likely that the links displayed will relate to the fields in which the mark is used, unless the settings are adjusted to exclude such links. It may therefore be inferred that a registrant which uses such a domain name in this way intends to profit from the confusion which is liable to occur and that it is using the domain name in bad faith within the meaning of the UDRP.
This is so even if the registrant is not specifically aware of the Complainant's mark, if the SLD of the domain name is of a form which is likely to be a mark, and the registrant uses it in this way without making any investigation or taking any precaution. A number of decisions have so held: see e.g. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; Grisoft, s.r.o. v. Original Web Ventures Inc.,WIPO Case No. D2006-1381; Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216.
However, this reasoning does not apply where (as in this case) the SLD is a descriptive term and there is no evidence that the mark is widely used or even that it is used at all. In these circumstances the Panel cannot conclude that the use of the Domain Name has attracted Internet users to the Respondent's website through confusion with the Complainant's mark, still less that this has been the Respondent's intention.
Nor can the Panel conclude that the Domain Name was registered and is being used in bad faith on any other basis. In the absence of any evidence of the use and reputation of the Complainant's mark at any time, its case on bad faith fails in relation to both registration and use.
This view is in line with other similar cases relating to descriptive domain names where the complainant has not provided evidence of widespread use of its mark at the relevant dates, such as Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275; Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc.,WIPO Case No. D2007-0795; Super Supplements, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0244; Archipel, Inc v. invidual kim@ / Kim Yunsik, WIPO Case No. D2008-0553; and Norbert A. Aleman v. C / Vertical Axis, Inc., WIPO Case No. D2008-1252.
The third requirement of the UDRP has not been established and the Complaint must therefore be rejected. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner
Sole Panelist
Dated: July 20, 2009
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