The Complainant is InfoSpace, Inc. of Bellevue, Washington, United States of America, represented by Stokes Lawrence, P.S., United States of America.
The Respondent is Alexander Bobov of Bryansk, Russian Federation and WhoisGuard of Los Angeles, 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 November 8, 2011. On November 9, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 9, 2011, 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. The Center sent an email communication to the Complainant on November 18, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file neither an amendment to the Complaint nor an amended Complaint. 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 November 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2011. On December 16, 2011, Respondent Alexander Bobov sent an email to the Center primarily disagreeing to transfer the disputed domain name to the Complainant.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on January 16, 2012. 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
The Complainant is a leading provider of search engine services and a developer of popular Internet search tools and technologies, using the INFOSPACE mark in connection with its businesses at least as early as 1995.
The Complainant owns trademark registrations for INFOSPACE and for trademarks containing “infospace”, particularly, United States registrations for INFOSPACE, Reg. No. No. 2872006 and 2580133, registered on August 10, 2004 and June 11, 2002, respectively; and Community Trademark registrations No. 001879790, 001161835, and 000865477, registered on July 18, 2003, February 22, 2001, and October 10, 2001, respectively.
The disputed domain name was registered by the Respondent on August 8, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
The Complainant contends that it is a leading provider of search engine services and a developer of popular Internet search tools and technologies.
Moreover, the Complainant contends that it owns trademark registrations for INFOSPACE and for trademarks containing “infospace”. Particularly, it contends that it owns the following:
- United States Registration No. 3175994 for INFOSPACE MOBILE (Registered: November 28, 2006)
- United States Registration No. 3031484 for INFOSPACE TOOLBAR BUILDER (Registered: December 20, 2005)
- United States Registration No. 2872006 for INFOSPACE (Registered: August 10, 2004)
- United States Registration No. 2580133 for INFOSPACE (Registered: June 11, 2002)
- United States Registration No. 2601453 for POWERED BY INFOSPACE (Registered: July 30, 2002)
- United States Registration No. 2121439 for INFOSPACE (Registered: December 16, 1997)
- United States Registration No. 2206397 for INFOSPACE (Registered: December 1, 1998)
- Community Trademark Registration No. 004122305 for INFOSPACE MOBILE (Registered: November 22, 2005)
- Community Trademark Registration No. 001879790 for INFOSPACE (Registered: July 18, 2003)
- Community Trademark Registration No. 001161835 for INFOSPACE (Registered: February 22, 2001)
- Community Trademark Registration No. 000960047 for POWERED BY INFOSPACE (Registered: March 26, 2001)
- Community Trademark Registration No. 000865477 for INFOSPACE (Registered: October 10, 2001)
- Community Trademark Registration No. 000865469 for INFOSPACE.COM (Registered: May 7, 2001)
- Community Trademark Registration No. 000539403 for INFOSPACE (Registered: February 25, 2000)
- Russian Federation Trademark Registration No. 225492 for INFOSPACE (Registered: October 25, 2002)
- Russian Federation Trademark Registration No. 216399 for INFOSPACE (Registered: July 5, 2002)
Furthermore, the Complainant contends that it has extensively used the INFOSPACE mark in connection with its businesses of providing search engine products and services and that in that connection, it has first used the INFOSPACE mark at least as early as 1995.
The Complainant also contends that it holds registrations for the domain names , since 1996, and , since 1997, which are used to render its services.
In that connection, the Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Moreover, the Complainant contends that the most distinctive term in the disputed domain name is “infospace” and that the mere addition of the generic word “online, is not sufficient to avoid the confusing similarity, and that under the circumstances of the case, would only exacerbate the confusing similarity.
Furthermore, the Complainant contends that on September 8, 2011, it sent the Respondent a cease and desist letter demanding the assignment of the disputed domain name, which the Respondent answered on October 15, 2011, stating that he was ready to listen suggestions from the Complainant.
On the other hand, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complainant has not licensed or given any authorization to the Respondent to use the trademark INFOSPACE.
In that connection, the Complainant contends that the Respondent is not commonly known as or identified by “infospace”, nor has any rights in it.
Moreover, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
In that connection, the Complainant also contends that the Respondent has registered the disputed domain name in bad faith as it was or should have been aware of the Complainant and its trademark INFOSPACE at the time of registering the disputed domain name .
Moreover, the Complainant contends that the disputed domain name resolves to an inactive website, having been established by the panels in certain circumstances passive holding of a domain name may constitute bad faith.
In light of the foregoing, the Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions and merely sent an email to the Center disagreeing to transfer the disputed domain name to the Complainant. 6. Discussion and Findings
For the Complainant to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant owns trademark registrations for INFOSPACE, as noted under Section 4, “Factual Background” above.
The disputed domain name incorporates the trademark INFOSPACE in its entirety. The mere addition to the disputed domain name of the term “online” is not sufficient to avoid the confusing similarity.
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
In that connection, there is no evidence that the Respondent is commonly known as or identified by “infospace” or “infospaceonline”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has identified itself as a leading provider of search engine services and a developer of popular Internet search tools and technologies, extensively using the INFOSPACE mark in connection with its businesses at least as early as 1995.
Moreover, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns trademark registrations for INFOSPACE and for trademarks containing “infospace”, which have been registered before the disputed domain name was registered on August 8, 2011. The relevant evidence included United States registrations for INFOSPACE, Reg. No. No. 2872006 and 2580133, registered on August 10, 2004 and June 11, 2002, respectively; and Community Trademark registrations No. 001879790, 001161835, and 000865477, registered on July 18, 2003, February 22, 2001, and October 10, 2001, respectively.
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark INFOSPACE before registering the disputed domain name, which evidences bad faith registration.
On the other hand, and as remarked by the Complainant, the disputed domain name resolves to an inactive website.
In connection with passive holding of disputed domain names, the consensus view of WIPO panels is that “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), 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. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”1
In that connection, in the circumstances of the case, particularly the undisputed alleged extensive use of the trademark INFOSPACE by the Complainant, the lack of response by the Respondent and the registrant's concealment of its identity, the Panel finds that that the respondent is using the disputed domain name in bad faith.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain names in bad faith and that the Complainant has therefore made out the third element of its case. 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 disputed domain name be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Dated: January 30, 2012
1 see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
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