WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION O, Inc. v. Metro Media Case No. DME2009-0001 1. The Parties
Complainant is O, Inc. of Salt Lake City, Utah, United States of America, represented by The Gigalaw Firm, United States of America.
Respondent is Metro Media of Beverly Hills, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2009. On January 7, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 7, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the 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, as approved by the doMEn d.o.o. (“doMEn”) (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by doMEn) (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 January 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 9, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 27, 2009. 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.
By email dated January 29, 2009, Respondent advised the Center that it had the intention to transfer the disputed domain name to Complainant, and requested that this proceeding be terminated. By email dated January 30, 2009, the Center advised the parties of the possibility for Complainant to request a suspension of the proceeding for the purpose of allowing a negotiated settlement and transfer of the disputed domain name from Respondent to Complainant. Complainant transmitted no such request for suspension to the Center. 4. Factual Background
Complainant registered the service mark OVERSTOCK.COM on the Supplemental Register of the United States Patent and Trademark Office (USPTO), registration number 2503246, dated October 30, 2001, in International Class (IC) 35, covering “On-line wholesale and retail stores services featuring general merchandise”. Complainant registered the service mark OVERSTOCK.COM on the Principal Register of the USPTO, registration number 2939764, dated April 12, 2005, in IC 35, covering, inter alia, online wholesale and resale store services featuring general consumer merchandise. Complainant has registered OVERSTOCK.COM YOUR ONLINE OUTLET on the Principal Register of the USPTO, registration number 3069011, dated March 14, 2006, in IC 35. Complainant has registered the OVERSTOCK.COM service mark on the trademark register of Canada.
Complainant operates a commercial Internet website at “”. At that website Complainant specializes in and offers for sale discount “closeout” brand name merchandise, including home goods, electronics, jewelry, apparel, and audio-visual entertainment products. Complainant is a publicly traded company listed on the NASDAQ stock exchange, with gross revenues in 2007 of approximately USD 760 million.
According to the Registrar's verification response, Respondent is the registrant of the disputed domain name . According to that response, the record of registration of the disputed domain name was created on September 14, 2008.
Respondent has used the disputed domain name to direct Internet users to a parking page showing sponsored links. Sponsored links on a printout of Respondent's parking page furnished by Complainant include “Office Depot® Sales”, “Overstock Shoes” and “Overstock Dot Com”.
Complainant has provided evidence that Respondent previously registered several domain names incorporating the trademarks of third parties, including , and ( WhoIs database printouts and USPTO TESS printouts, Complaint, Annexes 8-12).
As indicated in Procedural History, supra, Respondent indicated its intention to transfer the disputed domain name to Complainant. Complainant indicated that, “Had my circumstances not caused me to be away from my business for so long, I certainly would have corrected this situation much earlier”.
The Registration Agreement in effect between Respondent and GoD, Inc., subjects Respondent to dispute settlement under the Policy. 5. Parties' Contentions A. Complainant
Complainant alleges that it has rights in the service mark OVERSTOCK.COM and that the disputed domain name, , is identical or confusingly similar to that mark. Complainant argues that for purposes of comparison between the disputed domain name and the service mark, the top-level domain identifiers “.com” and “.me” should be ignored.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that it has not authorized Respondent to use its mark in any way, that Respondent has not been commonly known by the disputed domain name, and that Respondent's use of the disputed domain name in connection with a “link farm” does not establish rights or legitimate interests.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant alleges that Respondent has engaged in a pattern of registering the domain names of third parties to prevent them from registering their trademarks as domain names. Complainant argues that Respondent knew of Complainant's service mark when it registered the disputed domain name, and deliberately sought to take advantage of Internet user confusion by suggesting that Complainant was the source, sponsor, affiliate or endorser of Respondent's website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to administrative proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent transmitted an email to the Center that effectively confirms receipt of notification of the Complaint and commencement of the administrative proceeding. The Panel is satisfied that Respondent received adequate notification of this proceeding and had a reasonable opportunity to respond. A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the service mark OVERSTOCK.COM on the Principal Register of the USPTO. Such registration establishes a presumption of rights in the service mark. Respondent has not contested those rights. The Panel determines that Complainant has rights in the service mark OVERSTOCK.COM.1
The disputed domain name, , substitutes the “.com” portion of Complainant's mark with the top-level domain identifier “.me”. Complainant argues that the top-level domain identifiers “.com” and “.me” should be ignored in comparing the service mark to the disputed domain name, relying upon the rule ordinarily followed by panels in comparing trademarks to domain names under the Policy. Following the ordinary practice, the disputed domain name would be deemed identical to Complainant's service mark because the second-level portion of the disputed domain name (i.e., “overstock”) would be identical to Complainant's service mark. However, “.com” is part of Complainant's service mark registered at the USPTO. In this circumstance, “.com” is not functioning as a generic top level domain (gTLD) identifier. It is serving a trademark function as part of Complainant's brand name. Therefore, the Panel may not disregard the “.com” portion of Complainant's mark in comparing the disputed domain name and the service mark.
Nonetheless, the Panel considers that the disputed domain name is confusingly similar to Complainant's OVERSTOCK.COM service mark. The dominant part of Complainant's mark and the dominant part of the disputed domain name are identical. The visual impression of Complainant's mark and the disputed domain name are very similar. The meaning of the dominant part of Complainant's service mark and the disputed domain name are the same.2 Finally, the sound of the dominant part of Complainant's service mark and the disputed domain name are the same. The Panel considers that Respondent, by identically adopting the dominant part of Complainant's service mark, and by modifying the final syllable in the disputed domain name, has not sufficiently altered the mark in the disputed domain name to avoid Internet user confusion. The Panel determines that the disputed domain name is confusingly similar to Complainant's service mark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its OVERSTOCK.COM service mark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent is using the disputed domain name and Complainant's service mark to direct Internet users to a web portal providing links to services competitive with those of Complainant (as well as to unrelated services and goods). Respondent is acting solely as a conduit to third party offers of services and goods, and is presumably receiving some form of compensation for click-throughs to such third party offers. Complainant is merely taking advantage of the goodwill associated with Complainant's mark to offer services and goods of third parties, including competitors of Complainant. The only evident purpose for using Complainant's service mark is to draw Internet users to Respondent's website. This does not constitute a bona fide offering of services or goods within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881.
Respondent's use of the disputed domain name is plainly not “noncommercial”, and it is not “fair use” in any generally accepted sense of that term as a matter of trademark law. Respondent is not using Complainant's mark for comparative advertisement, or to fairly describe products or services, or for other generally accepted fair use purposes. Respondent is merely using Complainant's mark to misleadingly attract Internet users to its website.
The Panel determines Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “[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 [respondent has] engaged in a pattern of such conduct; and “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent's] website or location or of a product or service on your website or location” (Policy, paragraphs 4(b)(ii) and (iv)).
Complainant has provided substantial evidence that Respondent registered several domain names that are similar to trademarks of third parties (see Factual Background, supra). This indicates that Respondent has engaged in a pattern of registering the trademarks of third parties in order to prevent them from registering corresponding domain names, within the meaning of paragraph 4(b)(ii) of the Policy.
Furthermore, Respondent has used the disputed domain name, which is confusingly similar to Complainant's service mark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent's website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent's website. Complainant's commercial website is widely known among Internet users, and it is reasonable to infer that Respondent registered the disputed domain name with the specific intention of taking advantage of the goodwill established by Complainant in its service mark. Respondent's website not only incorporates the dominant part of Complainant's service mark, but, also, the content on Respondent's website refers to and links to third parties offering services and goods competitive with those of Complainant. Respondent is presumably receiving some form of compensation for click-throughs to such third party competitors. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning 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.
Frederick M. Abbott
Sole Panelist
Dated: March 12, 2009
1 The Panel notes that Complainant initially registered the OVERSTOCK.COM mark on the Supplemental Register at the USPTO. Since the mark was subsequently registered on the Principal Register, and since Respondent's registration of the disputed domain name post-dated Complainant's Principal Register registration, there is no need for the panel to address the legal effect of the Supplemental Register registration. Compare, e.g., Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet,WIPO Case No. D2007-0875.
2 Although words frequently have more than one meaning, in this particular case the term “overstock” has a limited range of common usages.
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