The Complainant is Zeikos, Inc. (“Complainant”) of New York, New York, United States of America (“U.S.”) represented by Oved & Oved LLP, U.S.
The Respondent is Imagemap Help Page (“Respondent”) of Boca Raton, Florida, U.S. represented by Peterson, Ellis, Fergus & Peer LLP, U.S. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2011. On August 30, 2011, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the Disputed Domain Name. On August 30, 2011, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2011. The Response was filed with the Center on October 14, 2011.
The Center appointed Richard Page as the sole panelist in this matter on October 21, 2011. 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
Complainant is a global marketer of consumer electronics, that uses its industry-leading operating scale and brands to create, package and deliver high-quality products worldwide through multiple distribution outlets. Since December 2009, Complainant has been utilizing the trademark “iHip” (the “iHip Mark”) in connection with the design, manufacture, advertisement and sale of a particular line of electronic products and accessories.
On April 24, 2009, the iHip Mark has been on file with the United States Patent and Trademark Office and has been given Registration No. 3759233.
Complainant uses a network of websites including one dedicated to the sale of its products bearing the iHip Mark. On or about April 24, 2009, Complainant registered the domain name to promote its iHip Mark and sell products under that brand.
The Disputed Domain Name was originally registered with Network Solutions, Inc. in 1996. 5. Parties’ Contentions A. Complainant
Complainant alleges that it has invested substantial time, effort, energy and expense in the iHip Mark and has acquired substantial goodwill and recognition among its customers and the public at large. Complainant further alleges that it has invested substantial time, energy and economic resources developing and promoting the iHip Mark both on the Internet and through other channels of advertising.
Complainant alleges that the use of “iHip” in the Disputed Domain Name is confusingly similar to the iHip Mark because it incorporates the entirety of the iHip Mark. Complainant asserts that the Disputed Domain Name utilizes the entirety of the iHip Mark and Respondent’s intention is to trade for commercial gain upon the goodwill of Complainant by creating confusion among Internet users.
Complainant contends that it originally intended to register as the logical domain name for the iHip Mark. However, the desired domain name was occupied by the Disputed Domain Name with what appeared to be a crude website discussing “imagemaps.” Instead, Complainant registered and established its website.
Complainant further contends that Respondent modified its website and is now utilizing the Disputed Domain Name to advertise the sale of electronic products sold by Complainant’s competitors, such as Radio Shack, Panasonic, Bose, Skullcandy and AT&T.
Complainant alleges that Respondent offers no goods and provides no services of its own. Respondent merely passes on Internet traffic to Complainant’s competitors, presumably for “click-through” revenue. Complainant further alleges that Respondent has established no rights or legitimate interests in the Disputed Domain Name.
Complainant also alleges that Respondent is intentionally attracting Internet users for its own commercial gain by creating a likelihood of confusion regarding the source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. This activity is claimed to be in bad faith according to the definition of bad faith found in the Policy paragraph 4(b)(iv). Complainant sites former UDRP decisions in support of this view. See, e.g., Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786. Complainant also asserts that there is a continuing obligation of Respondent to ensure that his or her domain name does not violate another’s trademark rights. B. Respondent
Respondent does not dispute that the Disputed Domain Name is functionally identical and/or confusingly similar to the iHip Mark.
Respondent does assert that he has acquired rights and a legitimate interest in the Disputed Domain Name. From approximately 1996 until 2001, Respondent posted content to the website to which the Disputed Domain Name resolved in the form of an “Imagemap Help Page” discussing image mapping. This website did not generate revenue, nor was the website offered for sale. Hence, Respondent asserts that his activities were bona fide and noncommercial.
From approximately 2001 until 2008, Respondent posted no new content on his website and believed that the website was dormant. During this time, he believed that he had switched his Internet service provider from Network Solutions, Inc. to GoD, Inc.
Respondent explains that Network Solutions, Inc. used an obscure provision in its contract with Respondent to unilaterally post an “under construction” sign on the website. To the extent any advertisers were linked to this website or any click-through revenue was generated, it was done by and for the benefit of Network Solutions, Inc. without notice to Respondent.
In his Response, Respondent announces his intention to terminate his relationship with Network Solutions, Inc. and to ensure that there is no third-party material associated with the Disputed Domain Name or the website to which it resolves.
Respondent contends that he did acquire rights and a legitimate interest in the Disputed Domain Name before this dispute arose and before the registration of the iHip Mark. Furthermore, Respondent contends that he has not acted in bad faith under the Policy paragraph 4(b)(iv) or under any other provision of the Policy, Rules or Supplemental Rules. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that 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) that Respondent has no rights or legitimate interest 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
There is no dispute under the Policy paragraph 4(a)(i) that the Disputed Domain Name is functionally identical and/or confusingly similar to the iHip Mark. B. Rights or Legitimate Interest
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interest in the Disputed Domain Name. Once Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Complainant has established a prima facie case that the three circumstances establishing rights or legitimate interests do not apply.
Respondent argued that it has engaged in no commercial activity since the launch of the website in 1996. All postings that the website was “under construction” and any revenue derived through advertising or on a click-through basis were done by Network Solutions, Inc. without the knowledge of Respondent. The Panel notes that other UDRP panels have held that a respondent is responsible for the content on its website, including the use of pay-per-click (“PPC”) pages. In these particular circumstances, though, the Panel finds that Respondent has rights or legitimate interests in the Disputed Domain Name because his use was of a noncommercial nature and he was unaware of any revenue derived from the PPC pages.
Respondent’s evidence is persuasive and the Panel finds that Respondent has established the elements of the Policy paragraphs 4(c)(i) and (iii). C. Registered and Used in Bad Faith
Complainant alleges that Respondent is intentionally attracting Internet users for his own commercial gain by creating a likelihood of confusion regarding the source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. This activity is claimed to be in bad faith according to the definition of bad faith found in the Policy paragraph 4(b)(iv).
As discussed above, the Panel is persuaded that Respondent has not sought commercial gain from the Disputed Domain Name or the website to which it resolves. Therefore, Complainant has not met the elements of the Policy paragraph 4(b)(iv).
The Panel is aware that some UDRP panels have looked at “registration and use in bad faith” as a unitary concept rather than as a conjunctive requirement. See, e.g., Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, discussed supra. The Panel finds, however, that even if bad faith were to be viewed as a unitary concept, the Panel would not find bad faith use in this case. As discussed under 6B, the Panel finds the Respondent’s use to be legitimate under paragraph 4(c). For this reason, the Complaint fails under paragraph 4(b) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard W. Page
Sole Panelist
Dated: October 31, 2011
Full & Egal Universal Law Academy