WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Entertainment Shopping AG v. Nischal Soni, Sonik Technologies Case No. D2009-1437 1. The Parties
The Complainant is Entertainment Shopping AG of Munich, Germany, represented by Cooley Godward Kronish LLP of United States of America.
The Respondents (collectively referred to as the Respondent) are Nischal Soni and Sonik Technologies of Bikaner, Rajasthan, India. 2. The Domain Names and Registrar
The disputed domain names (referred to individually as a “Domain Name” and collectively as the “Domain Names”) , , and are registered with Directi Internet Solutions Pvt. Ltd., d/b/a PublicDomainR (“Directi Internet Solutions”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2009. On October 26, 2009, the Center transmitted by email to Directi Internet Solutions a request for registrar verification in connection with the Domain Names. On October 29, 2009, Directi Internet Solutions transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Names, 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” 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 October 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on November 20, 2009.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 26, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant owns a number of service mark registrations and applications consisting of the word “swoopo” in jurisdictions including Germany, the United States, Canada and the European Union. The service mark applications and registrations cover auction services. The Complainant has used the SWOOPO mark in commerce since at least August 2008. The Complainant obtained their first registration for their service mark “SWOOPO” in Germany on April 16, 2009.
The Complainant runs a credit bidding auction service via its website, which is accessed through the Complainant's various domain names, including , , , and . The Complainant's website has over 2.5 million registered users and has conducted over 180,000 auctions since its launch in August 2008. The Complainant has spent substantial sums in advertising its auction services since the launch of the website.
The Domain Names were registered on the following dates:
was registered on April 24, 2009
was registered on December 28, 2008
was registered on December 28, 2008
was registered on February 5, 2009
At the time of the filing of the Complaint, and resolved to active websites, offering for sale software that can be purchased and downloaded to develop and operate websites similar to the Complainant's “swoopo” auction service, and which would therefore compete directly with the Complainant's offerings. At the time the Complaint was filed the Domain Name resolved to a parking page featuring sponsored links and click-through advertising, and resolved to an inactive page, titled “Coming soon”.
On July 15, 2009 the Complainant, through its legal counsel, dispatched a letter to the Respondent concerning the Respondent's unauthorised use of the Domain Name. In that letter, the Complainant informed the Respondent of the Complainant's extensive use of the SWOOPO service mark, and stated that any use of the SWOOPO service mark in the Domain Name or on its website could cause consumers to believe that and its associated website were sponsored by or affiliated with the Complainant. The Complainant requested that the Respondent deactivate the website, transfer the Domain Name to the Complainant, and undertake in writing to refrain from using the SWOOPO service mark in the future. In its reply to that letter, the Respondent refused to deactivate or transfer the Domain Name. 5. Parties' Contentions A. Complainant's Contentions
The Complainant's particular contentions can be summarized as follows:
(a) the Respondent has used the Complainant's SWOOPO service mark as the main part of the Domain Names, and has merely added the generic terms “clone”, “auction” and the prefix “a”, as well as blending the word “portal” with the Complainant's service mark;
(b) the addition of these generic terms does not eliminate the likelihood of confusion between the Complainant's service mark and the Domain Names, or the suggestion that the Complainant and Respondent are associated in some way;
(c) to the best of the Complainant's knowledge, the Respondent does not hold any trade mark or service mark rights that are identical, similar or related to the Complainant's service mark;
(d) the Respondent is not an authorised dealer, distributor or licensee of the Complainant, and has no affiliation with the Complainant;
(e) The Domain Names were registered at the end of 2008 and the beginning of 2009, after the Complainant had begun using the SWOOPO service mark commercially and after the Complainant's auction service, marketed under the SWOOPO mark, had garnered substantial media and consumer attention;
(f) there is no objective reason why the Respondent would have selected the Domain Names, other than to create an association with the Complainant's mark;
(g) the contents of the Respondent's website, and the fact that the Complainant's service mark appeared on the Respondent's website, indicate that the Respondent was aware of the Complainant's service mark and registered the Domain Names with the mark in mind;
(h) the Respondent is intentionally using the Domain Names to misleadingly divert consumers from the Complainant and for commercial gain, either by collecting referral fees from advertising, or by promoting software that is not associated with or approved by the Complainant, and which in fact facilitates direct competition with the Complainant's service offerings; and
(i) the Respondent has continued to use the Domain Names despite the Complainant's efforts to resolve this dispute informally. B. Respondent
The Respondent did not submit any formal Response to the Complainant's contentions. No exceptional circumstances explaining the default have been put forward.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true: Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant must first establish that there is a trade mark or service mark in which it has rights. In this case, the first service mark registration of SWOOPO occurred in April 2009, and the Domain Names were registered between December 2008 and April 2009. Nevertheless, the registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identity or confusing similarity. See paragraph 1.4 of the WIPO Overview of WIPO Panel views on Selected UDRP questions. In any event, the Complainant also relies on its extensive use of the SWOOPO mark in commerce since at least August 2008. It is well established that the Policy protects rights in unregistered marks: SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131, Imperial College v. Christopher Dessimoz,WIPO Case No. D2004-0322. The Panel considers that the Complainant has established that the SWOOPO mark has become a distinctive identifier associated with the Complainant and its services, so that the Complainant also has unregistered rights in that mark.
The Domain Names , and incorporate the Complainant's distinctive mark SWOOPO in its entirety, adding only the generic terms “clone”, “auction”, and the prefix “a”, the Domain Name blends the word “portal” with the Complainant's trade mark. It is well-established that the addition of a generic term to a domain name consisting of a trade mark or service mark does not exclude a finding of confusing similarity under the Policy: eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307; Violet Media Corp. v. Charon Communications Ltd.,WIPO Case No. D2009-0097.
In the present case, the Complainant has established that its SWOOPO mark has attained significant market recognition in respect of online credit bidding auction services. The Respondent's use of Domain Names consisting of a known service mark and a descriptive element is likely to give rise to confusion. This is the case regardless of the descriptive terms used (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 and Lilly ICOS LLC v. Sachin Tailor,WIPO Case No. D2005-0580. In the latter case, the addition of the generic term “clone” did not prevent a finding that the disputed domain name was confusingly similar).
The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is established, as the Domain Names are confusingly similar to the Complainant's service mark. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Domain Names. Therefore, the Panel will assess the Respondent's rights in the Domain Names (or lack thereof) based on the Respondent's use of the Domain Names in accordance with the available record.
The Domain Names and point to a website marketing software that facilitates direct competition with the Complainant's website, and which has previously referenced the Complainant's service mark. The Panel considers that it is clear that the Respondent was aware of the Complainant's mark when adopting the Domain Names, and intended to create an impression of association or affiliation with the Complainant and/or its mark. Using a domain name to intentionally trade on the fame or reputation of another constitutes unfair use, and cannot amount to a bona fide offering of goods or services: Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “”,WIPO Case No. D2000-0847.
The Domain Name points to a website which features sponsored links and click-through advertising. The use of a domain name containing a complainant's trade mark or service mark for the purpose of collecting referral fees from sponsored advertising links has been consistently held in the appropriate circumstances not to be a legitimate offering of goods or services (PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162). Based on the evidence submitted by the Complainant, the Panel finds that the Respondent's use of is not bona fide.
At the time of the filing of the Complaint, the Domain Name was inactive. The Domain Name was consequently not used in connection with a bona fide offering of goods or services, nor has there been any evidence put before the Panel of any demonstrable preparations to do so, pursuant to paragraph 4(c)(i) of the Policy (Bayer Aktiengesellschaft v. H. Monssen,WIPO Case No. D2003-0275). The Panel notes that at the time of the Panel's decision is no longer inactive, and now points to the same website as and . As the Panel has already found that the use associated with and does not amount to a bona fide offering of goods or services, the Panel finds that the use associated with likewise does not amount to a bona fide offering of goods or services.
The Panel finds that, in the circumstances of the present case, the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of each of the Domain Names. C. Registered and Used in Bad Faith
Although the Complainant's service mark registrations and applications are recent and the Complainant's website is relatively new, the Panel accepts that, in light of the Complainant's extensive commercial use of the SWOOPO mark and the significant media and consumer attention garnered by the Complainant's business as the first of its kind, the SWOOPO mark and its associated business are widely known across a number of jurisdictions.
The circumstances of the case also indicate that the Respondent must have known of the Complainant's mark and its rights therein. All four of the Domain Names incorporate the Complainant's mark in its entirety, and the Complainant's mark is not a generic term. The Respondent has used three of the Domain Names to point to a website selling software that enables competition with the Complainant, and which has in the past referenced the Complainant's mark. It is therefore readily apparent that the Respondent trades on the likelihood that Internet users will assume that there is some connection between the Respondent and the Complainant, and will derive commercial advantage from that assumption, either by attracting users to the Respondent's own website, or from referral fees: Control Techniques Ltd. v. Lektronix Ltd,WIPO Case No. D2006-1052; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
Although at the time of the filing of the Complaint, was inactive, the lack of active use of the Domain Name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith: Expedia, Inc. v. Miles Pennella,WIPO Case No. D2001-1416. In the present circumstances, and especially considering the fact that is now active, the Panel finds that there is ample evidence to justify a finding of bad faith.
The Panel also notes that the website to which the Domain Names , and resolve contains a disclaimer to the effect that the site is not linked, affiliated or a part of the Complainant's business. It is well established that such a disclaimer cannot cure bad faith, when bad faith has been established by other factors: Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869. Indeed, the Panel is of the view that the existence of the disclaimer is further evidence that the Respondent had prior knowledge of the Complainant's mark and registered the Domain Names with the intention to trade off the goodwill associated with the mark.
The Panel therefore finds that the Respondent has registered and used the Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Gabriela Kennedy
Sole Panelist
Dated: December 3, 2009
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