WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION David Green v. E-mail Services, NA NA Case No. D2010-0425 1. The Parties
Complainant is David Green of Port Townsend, Washington, United States of America, represented by Ryan, Swanson and Cleveland, PLLC, United States of America.
The Respondent is E-mail Services, NA NA of Duarte, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2010. On March 19, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 19, 2010, eNom transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on March 26, 2010. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on March 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 19, 2010.
The Center appointed Christopher S. Gibson, Leon Trakman and Robert A. Badgley as panelists in this matter on May 4, 2010. The Panel finds that it was properly constituted. Each member of 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
Complainant is the owner of the word mark CAFE INTERNET, registered in connection with a restaurant service that offers access to computer usage. Complainant filed for registration with the United States Patent and Trademark Office (“USPTO”) on May 3, 1995; the mark was published for opposition on September 9, 1997; and it was registered on August 18, 1998.
Respondent registered the disputed domain name on November 1, 1997. The disputed domain name consists of the generic terms “cafe” and “internet.” The domain name links to an adult website. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name, , is identical or confusingly similar to the trademark, CAFE INTERNET, in which Complainant has rights. Respondent uses the mark verbatim in the domain name. Complainant states that insofar as the domain name is not “identical,” it is at least confusingly similar. When taken in its entirety and as it appears in the marketplace, the disputed domain name is similar in appearance, sound and meaning to Complainant's registered mark. If there are any differences, the similarities should outweigh those differences and support a finding that the domain name is identical or confusingly similar to Complainant's mark.
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain name. Complainant is the sole registered owner of the CAFE INTERNET mark and has not authorized Respondent to use it. Since November 1, 1997, and to the best of Complainant's knowledge, Respondent has operated the website linked to the disputed domain name as an adult site. Respondent operates this site as a networking site, for profit, where users pay a fee to gain access to other users' profiles, presumably to find others willing to participate in the adult activities. In operating the site, Respondent's use of Complainant's mark is without authorization, and therefore without a legally cognizable right.
Complainant also argues that Respondent has no legitimate interest in the use of CAFE INTERNET. Respondent has never been publicly known as CAFE INTERNET nor has Respondent used CAFE INTERNET in connection with any bona fide offering of goods or services including restaurants with public Internet access. Instead, Respondent uses the website associated with the disputed domain name as “bait” for Internet users seeking “Cafe Internet.” Complainant urges that this is not a recognizable right nor does it form the basis for a legitimate interest.
Complainant further contends that the disputed domain name was registered and is being used in bad faith. Complainant notes that the potential circumstances of bad faith are not limited to those specifically identified in the paragraph 4(b) of the Policy. In particular, Complainant has cited several UDRP cases to emphasize that Respondent's failure to provide sufficient contact information supports a finding of bad faith. Prior cases have found instances of insufficient contact details where the respondents have provided false and misleading information in connection with the domain name registration; failed to provide a voice or fax phone number for the administrative or billing contact as required under the registration agreement; taken deliberate steps to conceal identity, such as registration under a phony name and where communication with the respondent is made impossible; and used the name of an unidentifiable business entity while failing to provide conventional information for one engaged in business activities. In registering the disputed domain name, Respondent in this case has provided only the following information:
Name: E-mail Services
Address: P.O. Box [____] Duarte, CA 91009-4195 US
Telephone: 626-[___]-[____]
Fax: 626-[___]-[____]
E-mail: [___]@
Complainant contends that Respondent's listed name, E-mail Services, and it's administrative contact, Web Enterprises, fail to denote whether either E-mail Services or Web Enterprises are corporations, limited liability companies, partnerships, sole proprietorships, or other forms recognized by the laws of California. In fact, the California Secretary of State shows no corporation or limited liability company under the name of either “ E-mail Services” or “Web Enterprises” operating in or around the Duarte, California area. In addition, the telephone number provided for Web Enterprises is in working order, but does not lead to any business under the name of Web Enterprises. In a reverse directory, the telephone number lists to Adegenix, Inc. with an address at 870 S. Myrtle Ave in Monrovia, California. Adegenix, Inc. is listed in the California Secretary of State corporate database. When dialed, the call is answered by a recording that identifies the number as belonging to Adegenix, Inc. The post office box addresses provided for both E-mail Services and Web Enterprises are not deliverable. On two separate occasions, letters sent to these entities were returned marked “Return to Sender - Not Deliverable as Addressed - Unable to Forward.” Neither Complainant nor Complainant's legal representative succeeded at reaching Web Enterprises or E-mail Services at this or any other address.
All circumstances considered, Complainant urges that Respondent has failed to provide sufficient contact information, which supports a finding of bad faith. Respondent has failed to provide a voice telephone number for the administrative contact in violation of the Registration Agreement. Respondent has also failed to provide a valid street address for either E-mail Services or Web Enterprises, in violation of the Registration agreement. Finally, Respondent uses the name of an unidentifiable business entity thereby supporting a finding of bad faith because Respondent is actively attempting to conceal the business' true identity.
Complainant raises other factors in support of bad faith. Complainant alleges that Respondent acquired the disputed domain name for the purpose of disrupting the business of a competitor, and has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's registered trademark. In particular, Complainant contends that the timing of Respondent's registration in conjunction with the sheer lack of contact information indicate that Respondent has registered the disputed domain name for the purpose of “blocking” Complainant from using the domain name and ensuring Complainant's inability to find a legally recognizable business entity against which to assert a claim. This is an improper motive for using the trademark of another in a registered domain name and is indicative of bad faith under paragraph 4(a)(i) of the Policy.
Apparently, since its initial registration on November 1, 1997, Respondent has used the disputed domain name in conjunction with a website for adult entertainment for the purpose of fraudulently misdirecting consumers to a website which contains hardcore pornographic images and which sells various services connected with sexual relations. According to Complainant, this is an intentional attempt to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark. Respondents' use of the disputed domain name has no logical nexis to the services offered at its website, and Respondent's services are not connected in any way to the words or concepts embodied in the name “Cafe Internet.” Complainant further argues that UDRP panels are nearly unanimous in holding that the use of one's trademark to direct Internet traffic to a pornographic site or gaming site is, in and of itself, evidence of bad faith. Here, Respondent seeks to use Complainant's trademark registered in connection with restaurant services combined with access to computer usage, to direct Internet traffic to its website advertised as “your ultimate source for free sex personals, adult dating, amateurs & swingers.”
Thus, in lieu of Respondent's intentional failure to provide adequate contact information, and in conjunction with circumstances indicating Respondent's inability to prove it operates the disputed domain name in good faith or for a proper purpose, this Panel should find that Complainant satisfies the requirements of paragraph 4(a)(iii) of the Policy and that Respondent has no right, in either law or equity, to operate the disputed domain name. B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Insofar as Respondent has defaulted, it is therefore appropriate to accept the reasonable facts asserted by Complainant and to draw adverse inferences of fact against Respondent. See American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it has rights in its CAFE INTERNET trademark based on its federal trademark registration. The Panel would, however, note that it cannot assess the strength of Complainant's trademark rights because Complainant has provided no evidence and has said little regarding use of its mark or the development of any reputation or goodwill in its mark. Although the disputed domain name appears to have been registered roughly nine months prior to the registration of the Complainant's United States trademark, the Complainant's claimed first use in commerce (in 1995) substantially predates the registration of the domain name. The timing of a trademark registration, while potentially relevant to an assessment of a respondent's rights or legitimate interests, or to a determination of bad faith registration, is not necessarily dispositive in the assessment of identity or confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.4.
Thus, regarding identity or confusing similarity, the disputed domain name, , incorporates Complainant's CAFE INTERNET mark in its entirety. Because Complainant's CAFE INTERNET mark and the domain name are identical (except for the lack of a space between the words “cafe” and “internet,” and the addition of the “.com” suffix), the Panel finds that the domain name is identical or confusingly similar to the Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has the burden to make a prima facie showing under paragraph 4(a)(ii) of the Policy that Respondent has no rights or legitimate interests in respect of the disputed domain name. As recited above, Complainant contends that Respondent has never been publicly known as Cafe Internet, nor is there any indication in the evidence to suggest otherwise. Complainant has not authorized Respondent to use its CAFE INTERNET mark. Moreover, Complainant contends that Respondent has not used the domain name in connection with any bona fide offering of goods or services, but instead has used it to operate a website containing pornographic content and offering adult services.
Insofar as Complainant has made a prima facie showing that Respondent lacks rights to the disputed domain name, the burden shifts to Respondent to show by concrete evidence that it has rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1. Respondent, however, has provided no response and thus no evidence to carry its burden. In this respect, some UDRP panels have considered that a failure by a respondent to submit a response is itself at least an implied acknowledgement by the respondent that it has no rights or legitimate interests in a disputed domain name. See e.g., Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (finding that respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
In any event, the Respondent, although provided with notice of the dispute and an opportunity to reply, has elected not to participate in these proceedings or provide any evidence of its rights or legitimate interests. The Panel has reviewed the record in this case and finds nothing therein that would suggest that Respondent has any rights or legitimate interests in the domain name. In this Panel's view, the textual string of the disputed domain name does not call to mind any generic or descriptive association with an adult-content website. Thus, although the domain name is comprised of dictionary terms, the Panel does not believe that the domain name is being used for its descriptive value. This view concerning Respondent's lack of rights or legitimate interests is further supported by the Panel's analysis of the bad faith element below, insofar as Respondent appears to have provided inaccurate and insufficient contact details and the disputed domain name has been used in connection with a pornographic website.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant has correctly observed that paragraph 4(b) of the Policy provides a non-exhaustive list of potential circumstances for which a panel may find bad faith on the part of a respondent. Because the list is non-exhaustive, the panel may also determine bad faith on grounds other than those included in the list. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“[I]t must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation' – that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); Home Interiors & Gifts, Inc. v. Home Interiors,WIPO Case No. D2000-0010 (“[J]ust because Respondent's conduct does not fall within the ‘particular' circumstances set out in paragraph [4(b)] does not mean that the domain names at issue were not registered in and are not being used in bad faith”).
In this case, the Panel determines that while no specific act of bad faith by Respondent falls squarely within the non-exhaustive circumstances listed in paragraph 4(b) of the Policy, Complainant has asserted other compelling grounds to support a finding of bad faith. In particular, the Panel finds that Respondent, by providing the name of an unidentifiable business entity and misleading contact information, has taken deliberate steps to conceal its identity and make contact or communication impossible, all while operating a pornographic website at a domain name which could be easily confused with the Complainant's trademark. As discussed above, Respondent has failed to provide details of its true name or identity. In this regard, Respondent's listed name, “ E-mail Services”, and its administrative contact, “Web Enterprises”, fail to denote whether either entity is a corporation, limited liability company, partnership, sole proprietorship, or other form of business recognized under the laws of the State of California. Complainant has submitted evidence that, according to records of the California Secretary of State, there is no corporation or limited liability company bearing the name of either entity operating in or around Duarte, California, which is the city and state listed by Respondent as its address in the domain name registration records. In addition, Respondent appears to have failed to provide accurate telephone or fax numbers for the administrative contact in violation of the domain name registration agreement. Respondent has also failed to provide a valid street address, as evidenced by the fact that letters sent by Complainant to these entities that were returned marked “Return to Sender - Not Deliverable as Addressed - Unable to Forward.” These facts suggest that Respondent provided a false name and false contact details in an effort to make identification and communication impossible, thereby supporting a finding of bad faith in this particular case. See Verio Inc. v. Sunshinehh,WIPO Case No. D2003-0255 (“The Respondent is elusive” and this contributed to a finding of bad faith registration and use); Home Director, Inc. v. HomeDirector,WIPO Case No. D2000-0111 (“Further evidence of bad faith is Respondent's use of false or misleading information in connection with the registration of the domain name.”). As suggested by the panelist in the Home Director, Inc. case, because both parties are United States residents, may also be appropriate to consider United States legal principles. See, for example, the requirements under 15 U.S.C. § 1125 (d)(1)(B)(VII) (In determining whether a person has a bad faith intent, a court may consider factors such as “the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct”).
In addition, a bad faith determination is supported by the fact that Respondent has used the disputed domain name in connection with a website displaying adult content. The Panel considers the present case as an example of “pornosquatting,” where linking the domain name at issue to adult-oriented websites is a widely accepted evidence of use in bad faith (MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661; Motorola, Inc. v. NewGate Internet, Inc.,WIPO Case No. D2000-0079; Ty, Inc. v. O.Z. Names,WIPO Case No. D2000-0370; La Union Alcoyana S.A. de Seguros y Reaseguros v. Cosmar Hard-Soft, WIPO Case No. D2003-0570; Youtv Inc. v. Mr. Erkan Alemdar, NAF Claim No. 94243; Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362.
Consequently, for the majority of this Panel, the provision of false contact details and the operation of an adult-oriented website in connection with a domain name registered (as the record before this Panel suggests) after Complainant's first use of the mark in commerce tips the finely-balanced scale under this element in Complainant's favor.
In the face of the evidence and allegations concerning bad faith registration and use, Respondent has submitted no response in this case. The Panel therefore finds that, in view of the above facts and circumstances, Respondent has registered and is using the disputed domain name in bad faith, according to 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 name be transferred to Complainant.
Christopher S. Gibson
Presiding Panelist
Leon Trakman
Panelist
Robert A. Badgley
Panelist (Dissenting)
Dated: May 25, 2010 Dissenting Opinion
I must respectfully disagree with the decision of my co-panelists, while recognizing that this was a close call. It is true that Respondent has taken no steps to explain its side of the dispute or rebut the allegations in the Complaint, and Respondent's activities – including its website content and its evasive contact information – are not condoned. However, I have seen no evidence, and can draw no inference, that Respondent actually had Complainant's CAFE INTERNET mark in mind when it registered the disputed domain name back in 1997. The disputed domain name was registered before the USPTO registered the Complainant's mark. Moreover, while I cannot gainsay the decision by the USPTO to allow the registration, I view the mark as rather weak and appropriately limited in scope. The term “Internet cafe” is in such common generic usage that the inversion of the term, “cafe Internet,” can hardly be viewed as deeply original. It is for that reason somewhat relevant to me that Respondent has operated in a different field of economic activity from Complainant. It is also noteworthy that Complainant gives almost no account of itself and its business in the Complaint. Other than the fact of trademark registration in 1997, there is nothing to indicate how extensively Complainant has used the mark and what measure of renown it has achieved. In my view, these matters bear on the “bad faith” analysis under the Policy under the circumstances of this case.
I am also troubled by the fact that it took Complainant 13 years to bring a Complaint under the Policy while someone was out there using the “.com” verbatim version of its mark. Fortunately, I need not enter the thicket of laches to reach my conclusion, but I mark it as another issue that could have contributed to the defeat of this Complaint.
I would deny the Complaint.
Robert A. Badgley
Panelist (Dissenting)
Dated: May 25, 2010
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