The Complainant is Spoke Media Holdings, Inc. of San Diego, California, United States of America, represented by The Goodman Law Firm, United States of America.
The Respondent is Andrey Volkov of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with T, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2010. On August 4, 2010, the Center transmitted by email to T, Inc. a request for registrar verification in connection with the disputed domain name. On August 6, 2010, T, Inc. 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. The Center sent an email communication to the Complainant on August 9, 2010 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 amended Complaint on August 9, 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 the Respondent of the Complaint, and the proceedings commenced on August 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on September 7, 2010. 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.
Procedural Orders requesting further information on September 13 and 29, 2010 and these being duly complied with an extended deadline for a decision of October 18, 2010 was set. 4. Factual Background
The Complainant has traded for over a year in the field of on line advertising using the domain name . The Respondent registered the Domain Name on July 23, 2010 and used it to cause confusion such that AOL and its subsidiary placed a pixel code from the Respondent on its servers which served up malware via a javascript tag from the Domain Name for which AOL thought the Complainant was initially responsible. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
The Complainant has traded since February 16, 2009 in the field of on line advertising and owns the domain name . It has applied for a United States Federal trade mark registration for C3 METRICS. As early as August 2009 the Complainant's web site had greater than 11,000 monthly unique visitors and one month prior to the registration of the Domain Name was achieivng results of 80,000 monthly unique visitors.
The Respondent registered the Domain Name and used it to cause confusion such that AOL and its subsidiary placed a pixel code from the Respondent on its servers which served up malware via a javascript tag from the Domain Name for which AOL thought the Complainant was initially responsible.
The Domain Name is confusingly similar to the Complainant's trading and domain name. Having used the Domain Name for a malware attack the Respondent has not used it for bona fide purposes, has no rights to the C3 Metrics name, has not been commonly known by the name, has not made any legitimate non commercial or fair use of the Domain Name and has used it to tarnish the trade mark of the Complainant.
Registered primarily and used to perform malware attacks the Domain Name has been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the complainant must prove that:
- The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced evidence that it has made extensive use of the name C3 METRICS on the Internet since at least August 2009 through the domain name . As such the Panel holds that the Complainant is the owner of unregistered trade mark rights in the C3 METRICS name. The Domain Name consists of the Complainant’s C3 METRICS mark and the generic top level domain “.net”. As such for the purposes of the Policy the Domain Name is identical to the Complainant's C3 METRICS trade mark. B. Rights or Legitimate Interests
The Respondent has not filed a Response, does not appear to have any trade marks associated with C3 METRICS, does not appear to be commonly known by this name and does not have any consent from the Complainant to use this name. Having used the Domain Name to perpetrate a malware attack it is clear that the Domain Name has not been used for any bona fide offering of services. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
"you have registered the domain name primarily for the purpose of disrupting the business of a competitor" (Rules, paragraph 4(b)(iii)); and
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on [its] web site or location.” (Rules, paragraph 4(b)(iv)) the other grounds not appearing close to being applicable to this case).
The Respondent registered the Domain Name and used it to cause confusion such that AOL and its subsidiary placed a pixel code from the Respondent on its servers which served up malware via a javascript tag from the Domain Name for which AOL thought the Complainant was initially responsible. Whilst certainly confusing and disruptive it is not clear that the Respondent did this for commercial gain or that it is a competitor of the Complainant. However it is clear that the motive was malicious. As such even though it cannot be held that the Respondent's conduct falls strictly within one of the specific examples of conduct that constitutes bad faith set out in the Policy, including the two set out above, these examples are non exhaustive. Due to the deceptive and malicious conduct of the Respondent the Panelist finds that the Domain Name has been registered and used 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.
Dawn Osborne
Sole Panelist
Dated: October 18, 2010
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