Complainant is InfoSpace, Inc. of Bellevue, Washington, United States of America, represented by Stokes Lawrence, P.S., United States of America.
Respondent is DeCroux Corporation of Colleyville, Texas, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2011. On the same date, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the disputed domain names and GoD, Inc 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 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2011. Respondent submitted an email response to the Center on September 29, 2011. On October 6, 2011, the Center notified the parties of the commencement of the Panel Appointment Process.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on October 31, 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 provider of search engine services and a developer of Internet search tools and technologies. Complainant is the owner of numerous trademark registrations for the mark DOGPILE in the United States and in other countries, including in the European Union and Canada. Complainant’s trademark registrations include the following:
- United States Registration No. 2,456,655 for DOGPILE (registered on June 5, 2001), which became incontestable on September 6, 2006.
- United States Registration No. 2,939,779 for DOGPILE & Design (registered on April 12, 2005).
- United States Registration No. 3,879,959 for DOGPILE & Design (registered on November 23, 2010).
- Community Trademark Registration No. 003633047 for DOGPILE (registered on April 25, 2005).
- Canadian Trademark Registration No. TMA641,007 for DOGPILE (registered on June 1, 2005).
Complainant is also the owner of the domain name (since 1996), as well as (since 1998), used in connection with its search engine services.
Respondent registered the disputed domain names on May 11, 2011.
Complainant sent to Respondent a cease and desist letter on June 17, 2011, asking Respondent to transfer the disputed domain names to Complainant. Respondent did not respond to that letter. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain names incorporate Complainant’s registered DOGPILE trademark in its entirety, that Respondent has no rights or legitimate interests in respect of the disputed domain names and that the domain names were registered and are being used in bad faith. B. Respondent
On September 29, 2011, Respondent filed an email response stating, inter alia:
“[...] my opinion is if they truly thought these domain names where infringement on their search site why didn’t they simply buy them. Secondly these domains were to be used in context of shopping for products in mass. I don’t see how an ecommerce site infringes on their name here again. Lastly, the term dogpile is a common used term in the US and widely accepted as a general term meaning several people jumping on; in a common term name I don’t see how they can corner the market.
[. . .], seem to me that they could use the lawyer funds to purchase the domain names they want to keep off the market instead of beating up on those of us trying new internet concepts.”
Respondent did not submit any further response. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide the 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.” A. Identical or Confusingly Similar
Complainant has demonstrated that it owns strong rights in the trademark DOGPILE in connection with Internet search engine services. The disputed domain names incorporate Complainant’s trademark in its entirety. In accordance with UDRP precedents, the addition of descriptive term such as “shopping” and “it” do not add any distinctive subject matter for the purpose of evaluating confusing similarity.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Respondent is not a franchisee, authorized dealer, affiliated business or licensee of Complainant. Respondent is not an authorized agent of Complainant and Complainant has not authorized Respondent to register the disputed domain names or to otherwise use Complainant’s mark.
There is no evidence in the record indicating that Respondent has been commonly known by the disputed domain names. There is no evidence that Respondent has made any demonstrable preparation for use of the disputed domain name in connection with a bona fide offering of services. Rather, the evidence indicates that Respondent registered and used the disputed domain names to attempt to divert Internet users to Respondent’s website. As of the date of Complainant’s cease and desist letter, the disputed domain names directed to a website with a “demo” store featuring various goods and services. At the top of the webpage is the statement “This is a demo store. Any orders placed through this store will not be honored or fulfilled.” The website included a banner with the words “DogPileS The Intense Group Shopping Experience™.” Adjacent to the banner was a caricature of a dog with a bone. This is very similar to Complainant’s uses of a cartoon dog mascot on its own website. Respondent’s website also references Complainant’s trademark DOGPILE in several places, without the terms “shopping” or “it”. Respondent’s demo website does not constitute a bona fide, legitimate use of the disputed domain names.
As of the date of the Complaint, the disputed domain names resolved to inactive websites. Given the circumstances of this case, this further supports the lack of any bona fide offering of goods or services by Respondent in connection with the disputed domain names.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 the respondent’s website or location of a product or service on the respondent’s website or location.
The evidence indicates that Respondent was most likely aware of Complainant’s trademark rights and use of Complainant’s trademark in connection with Internet search engine services at the time Respondent registered the disputed domain names.
The evidence indicates that Respondent is using the disputed domain names in an attempt to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or products or services on Respondent’s website. Respondent’s email response also indicates that its primary purpose was to sell the domain names to Complainant for valuable consideration in excess of the documented out of pocket costs directly related to the domain names.
The Panel finds that Respondent has registered and used the disputed domain names 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 names and be transferred to Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: November 14, 2011
Full & Egal Universal Law Academy