ADMINISTRATIVE PANEL DECISION CIMCITIES LLC v. Party Night Inc. Case no. D2002-0613
1. The Parties The Complainant is CIMCITIES, LLC, a Delaware limited liability company, with principal place of business at 530 Means Street, N.W., Suite 200, Atlanta, Georgia 30318, United States of America.
The Respondent is Party Night, Inc. with address in Jan Luykenstraat 58, Amsterdam 1071 CS, The Netherlands.
2. The Domain Name The domain name that is subject of the dispute is , registered with Key Systems GmbH on March 18, 2002.
3. Procedural History The Complaint reached the World Intellectual Property Organization Arbitration and Mediation Center (the “WIPO Center”) by electronic mail on July 2, 2002, and in hardcopy on July 4, 2002. On July 2, 2002, the WIPO Center requested and received, on the same day, a Registrar Verification issued by Key-Systems GmbH. Payment of the administration fee was duly received. After Formal Compliance Review, verifying that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Uniform Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), a Notification of Complaint and Commencement of Administrative Proceeding to the parties and Key-Systems, GmbH, was issued on July 4, 2002. The Notification of Complaint and Commencement of Administrative Proceeding was on July 5, 2002, and was also sent to Respondent by post courier (express delivery). Although the express delivery was returned to the WIPO Center as undeliverable, there is evidence that the WIPO Center achieved actual notice to Respondent by e-mail.
In its Notification of Complaint and Commencement of Administrative Proceedings, the WIPO Center required that the response be filed by July 25, 2002. It also set July 5, 2002, as the date of commencement of this proceeding, pursuant to the Rules, paragraph 4(c).
The WIPO Center did not receive a response from Respondent. On July 26, 2002, the WIPO Center transmitted by e-mail a Notification of Respondent Default to both parties. Respondent has not responded in any way to communications from the WIPO Center or the Complainant.
On August 2, 2002, Complainant and Respondent were notified by the WIPO Center of the appointment of the undersigned sole panelist as the Administrative Panel (the “Panel”) in this matter. The WIPO Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the WIPO Center by August 16, 2002.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines. The Panel has also not found it necessary to request any further information from the parties. The Panel is of the opinion that the Complainant is in compliance with the relevant formal requirements, and that Respondent was properly notified in accordance with the Rules, paragraph 2(a). The proceedings have been conducted in English.
4. Factual Background Complainant alleges that it is owner and operator of a website, called “ACCESS ATLANTA®,” based on the ACCESS ATLANTA® mark, which provides interactive information about news, weather and topics of general interest to specific geographical areas via a global computer network. These services are provided through an Internet website associated with the domain name.
Complainant has provided a copy of the United States Patent and Trademark Office Certificate of Registration for the mark “ACCESS ATLANTA®” (the “Mark”). The Mark was federally registered on August 29, 1995, under the US. Registration No. 1,915,614. The Mark was originally owned by Cox Enterprises, Inc (a Delaware Corporation, established in 1400 Lake Hearn Drive, N.E., Atlanta, GA 30319). Complainant has provided sufficient evidence indicating that the Mark, the registration and the associated goodwill have been assigned from Cox Enterprises, Inc. to Cox Interactive Media, Inc. (“CIM”), and from CIM to CIMCITIES (Complaint, Exhibit E).
According to the Registrar’s verification response to WIPO, dated July 2, 2002, the domain name is owned by Party Night, Inc. The addresses listed for the registrant and the Administrative Contact are identical. A Network Solutions WHOIS database search indicates that the record of registration was created on March 18, 2002, and that the record was last updated on May 8, 2002 (Complaint, Exhibit B).
Complainant contends that when a website visitor mistypes Complainant’s domain name as , the visitor is automatically linked to the website “http://quotes.net”, containing links to a variety of generic search topics. Complainant further claims that if a visitor to the “http://quotes.net” website then hits the “BACK” or “HOME” browser buttons, a pop-up window appears containing content of the “http://yes-yes-yes.com/real-people.html” website. A WHOIS database search indicates that the domain name is registered by a certain John Zuccarini.
The Panel has attempted to verify these contentions. When typing the domain name , the Panel was automatically transferred to a website “www.bunneyranch.com,” a website containing information identical to the “http://quotes.net” website. When clicking the “BACK” button, Panel was referred to a website called “http://www.rivernilecasino.com”, a website offering gambling game services. When clicking the “HOME” button, however, Panel was diverted back to the home page. A WHOIS search indicated that the domain-name was registered by a certain Mars Attack on March 2, 2002, and that the domain-name was registered by John & Kernick (In Trust), Kernick House, Howick Close, Waterfall Park, Midrand, Gauteng 1685, South Africa on March 13, 2002. Although the “www.bunneyranch.com” website is thus registered under the name of a different owner than the “www. accessaltanta.com” website, a WHOIS search indicates that the words “Mars Attack” occur in the administrative e-mail (firstname.lastname@example.org) of the owner of the “www.accessaltanta.com” website (Peter Carrington). Further, the Panel noticed that a link with the “www.yes-yes-yes.com” website still exists, since, when clicking the “BACK” button from the “www.bunneyranch.com” website, the URL “www.yes-yes-yes.com/” appears for a few seconds in the lower left-hand corner of the screen.
Complainant alleges that previously, on or about April 15, 2002, a mistyping of Complainant’s domain name as Respondent’s domain name, would automatically transfer visitors to the website “http://www.amatuervideos.nl”, which allegedly offered hard core pornography and links to hard core pornographic websites. If left open, or if a visitor attempted to close the window, a pop-up window enticing visitors to participate in “Casino On Net” gambling would appear. Complainant was unable to find a WHOIS listing for the domain name , but provided evidence that the domain name is registered to “Cupcake Party,” a known alias for John Zuccarini. The Panel could not verify these allegations, since, as explained above, visitors of the “www.accessaltanta.com” website are at the date of this decision automatically transferred to the “www.bunneyranch.com” website instead.
Complainant sent Respondent a cease and desist letter dated April 17, 2002, to the address then provided in the registrant contact information, and made a written demand that Respondent transfer the Domain Name to it (Complaint, Exhibit K). The letter was returned to Complainant as undeliverable. On May 5, 2002, Complainant re-sent the cease and desist letter to the email address the provided in the registrant contact information. This email remained without response. On June 3, 2002, Complainant sent a cease and desist letter to Respondent’s updated address and email provided in the registrant contact information. The letter was returned to Complainant as undeliverable, and no response was received to Complainant’s email.
The Service Agreement in effect between Respondent and Key-Systems GmbH subjects Respondent to Key-System GmbH’s dispute settlement policy, i.e., the Uniform Policy as adopted by ICANN on August 26, 1999, with implementing documents approved by ICANN on October 24, 1999. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration.
5. Parties’ Contentions I. Complainant Complainant contends that it has invested a substantial amount of time and resources to promote and advertise the Mark, the ACCESS ATLANTA® website, and associated computer services regionally and nationally. Complainant further claims that it has spent approximately $2.5 million to promote the ACCESS ATLANTA® website and Mark, and has, as a result, developed valuable goodwill and an outstanding reputation in the Mark. The Mark is allegedly famous, and is said to be viewed as a high quality mark and is claimed to be used exclusively by the Complainant, which contentions have not been evidenced by Complainant.
Complainant further contends that is has built the highest-ranked network of city sites in the US, reaching 29 percent of the total adult population and 41 percent of adult Internet users. Complainant refers to a business publication to evidence these numbers. Complainants’ network allegedly consists of 24 local sites in the top 50 US markets.
Complainant’s request for relief is based on the following contentions:
A. The domain name is confusingly similar to the ACCESS ATLANTA® Mark in which complainant has rights. Complainant establishes that the only difference between Complainants’ Mark and the corresponding domain name is the reversal of the letters “1” and “t”, so that an internet user may easily mistype the word “atlanta” as “altanta.”
B. Respondent has no rights or legitimate interests with respect to the domain name, for the following reasons: (1) Respondent has never been authorized by Complainant to use the Mark in any way, shape, or form, much less as part of the domain name ;
(2) Respondent does not demonstrate under Paragraph 4(c)(i) of the Policy that it has made any 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.
(3) Respondent is currently using the domain name to deceptively misdirect visitors to another website, “http://quotes.net”, owned by Respondent. Further, Complainant alleges that visitors to “http://quotes.net” are subjected to a pop-up advertisement for additional unrelated goods and services for which Respondent is presumably paid based on the number of visitors received. Complainant contends that such advertisement does not constitute bona fide goods and services.
(4) Respondent previously used the domain name to deceptively misdirect visitors to another unrelated website operating under the name “http://amatuervideos.nl”. This website neither contains nor in any way refers to goods or services related to the domain name . Rather, visitors to “http://amatuervideo.nl” are subjected to a pop-up window enticing visitors to participate in “Casino On Net” online gambling, for which Respondent is presumably paid based on the number of visitors received. Complainant contends that such use does not constitute bona fide goods or services.
(5) Respondent cannot establish rights in the domain name under Paragraph 4(c)(ii) of the Policy because Respondent (as an individual, business, or other organization) has never been commonly known by the domain name and has not acquired trademark or servicemark rights in the domain name. Complainant states that, to the best of its knowledge, Respondent has never been called by, affiliated with or commonly known by the phrase “ACCESS ALTANTA,” or any reasonably facsimile thereof, as an individual, a business or other organization.
(6) Respondent cannot establish rights in the domain name under Paragraph 4(c)(iii) of the Policy because Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark. Complainant contends that Respondent’s use of the domain name to divert potential visitors to unrelated websites that contain pornographic material and offer online gambling, and to serve advertisements to the unwitting visitors who have misspelled the domain name of Complainant’s website, presumably to collect revenue, does not constitute a legitimate noncommercial or fair use.
(7) Respondent’s activities not only mislead potential visitors to Complainant’s “www.accessatlanta.com” website for its own commercial gain, they also tarnish the reputation of Complainant’s mark by directing potential visitors to Complainant’s website to Respondent’s client’s advertising and to gambling and pornographic websites. Complainant also contends that there is no noncommercial or fair use since Respondent is taking advantage of consumers’ known disposition to misspell domain names to divert Internet traffic to websites that earn revenue from advertisers, as is purportedly the case here. Complainant further alleges that Respondent’s infringement of Complainant’s trademark rights is likely causing confusion among consumers, precluding a finding that Respondent has any legitimate interest in the domain name.
Complainant contends, based on allegations, that Respondent has no rights or legitimate interests in the domain name.
C. The domain name has been registered and used in bad faith. Complainant bases Respondent’s bad faith on the criteria set forth in Section 4(b)(iv) of the Policy. Accordingly, Respondent’s registration of a second-level domain name that is a misspelling which is confusingly similar to Complainants’ Mark, his use of the domain name to attract Internet users to websites that contain pornographic material and access to online gambling, and his implementation of a scheme of pop-up advertisements to misleadingly divert consumers, clearly establishes that Respondent has used and registered the domain name in bad faith.
Complainant contends that Respondents’ registration of a domain name that exploits the mis-typing of a trademark establishes bad faith under Section 4(b)(iv) of the Policy. Moreover, Respondent’s use of the domain name to subject internet users to a scheme of pop-up advertising establishes that Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s Mark. Complainant asserts that Respondent’s intent to divert visitors to websites containing pornographic material and access to online gambling further precludes a finding of good faith under Section 4(b)(iv) of the Policy.
Complainant alleges that Respondent is on constructive notice of Complainant’s well-known Mark, which was federally registered nearly seven years prior to Respondent’s registration and has been used to identify, advertise and promote Complainant’s accessatlanta.com website and computer services since as early as August 26, 1990. Respondent’s failure to make rudimentary efforts to discover its infringement of Complainant’s legal rights prior to registering the domain name is, contends the Complainant, additional evidence of Respondent’s bad faith.
Complainant concludes that it is manifest that Respondent is intentionally attempting to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on its website or location. Respondent has used the domain name to trade on the goodwill and tarnish the reputation of Complainant’s ACCESS ATLANTA® website, taking advantage of any mistyped searches for the “www.accessatlanta.com” website, and profiting from its own sales and sales of advertising from links to other sites. Complainant believes that these circumstances constitute evidence of Respondent’s registration and use of the domain name in bad faith per paragraph 4(b)(iv) of the Policy.
The Complainant has therefore requested that the Panel transfer the domain name to the Complainant.
II. Respondent Respondent has not submitted any response to Complainant’s contentions.
6. Discussion and Findings Paragraph 4(a) of the Policy requires that three elements be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration. These elements are as follows:
(i) respondent’s “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;”
(ii) respondent has “no rights or legitimate interests in respect of the domain name;” and
(iii) respondent’s “domain name has been registered and is being used in bad faith.”
Each of these three elements must be proven by a complainant to obtain relief. Paragraph 4(b) of the Policy provides nonexclusive criteria for evidencing bad faith registration and use of a domain name. Paragraph 4(c) of the Policy provides nonexclusive criteria for demonstrating a registrant’s right or legitimate interests in an domain name.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, Paragraph 14(a)), and the Panel may draw such inferences from the Respondent’s default as the Panel finds appropriate (Rules, Paragraph 14(a)).
Although the URLs to which the accessaltanta.com web address refers are different at the moment than those described in the Complaint, this does not have any affect on the Panel’s decision. If this were not so, then abusive website registrants could evade a Panel’s jurisdiction by simply changing the URL’s to which the website referred. Moreover, as described above, it seems that there may be some connection between the new URLs and the registrant of the “www.accessaltanta.com” website. Thus, the Panel decides that the fact that website visitors are currently automatically diverted to a website containing casino games officially registered by another entity, and using other domain-names, but analogous to the web-traffic diversion mechanisms on which the Complaint is based, does not affect the Panel’s competence to decide in the case at hand.
The Panel finds as follows:
A. The domain name is confusingly similar to the ACCESS ATLANTA® mark, in which Complainant has rights. Complainant has provided substantive evidence that it is the legitimate holder of the ACCESS ATLANTA® mark. The Mark was registered on August 29, 1995, by Cox Enterprises, Inc., and was assigned to Complainant on March 24, 2000. The Panel determines that Complainant’s rights in the service mark arose prior to the Respondent’s registration, on March 18, 2002. Respondent has registered the domain name . The domain name is identical to Complainant’s Mark, except that (1) the domain name adds the generic top level domain name “.com,” (2) the domain name employs lower case letters, while the trademark is generally used with capital letters, and (3) the domain name inverts the “l” and the “t.”
The addition of the generic top-level domain name (gTLD) “.com” is without legal significance from the standpoint of comparing to ACCESS ATLANTA® since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services. The fact that the mark ACCESS ATLANTA® utilizes capitals, is of little relevance since the domain name based on the service mark is in small letters.
The Panels finds that is both verbally and visually confusingly similar to . Visitors viewing the term will likely be confused with the term . The Panel determines that the disputed domain name is confusing similar to in the sense of paragraph 4(a)(i) of the Policy.
B. Respondent has no legitimate interest in the domain name . 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 demonstrate 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.”
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Panel is unaware of any evidence showing Respondent’s use of the disputed domain names, or any names corresponding to the domain names, in connection with any bona fide offering of goods or services. There is no evidence demonstrating that Respondent has ever been commonly known by the disputed domain names. No evidence has been forwarded to the Panel establishing that Respondent is making a legitimate noncommercial or fair use of the domain name. By using a domain name deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services.
In fact, website visitors typing the disputed domain name are automatically transferred to a site containing gambling game services, that are not linked whatsoever with the disputed domain name. The Panel finds that, even if it has not been proven that Respondent receives compensation for diverting website visitors to other sites, the Respondent’s practices tarnish a legally protected service mark and cannot be considered fair.
Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
C. Respondent’s domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances may, “in particular but without limitation,” be evidence of bad faith (Policy, Paragraph 4(b)). Among these circumstances are that a respondent “by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location.” (Policy, Paragraph 4 (b)(iv)).
The Panel takes the view that there can be no doubt that the domain name has been abusively construed to divert website visitors to sites offering gambling games services. Although there is no hard evidence, though a serious likelihood, that Respondent obtains commercial compensation for redirecting website visitors, the Panel decides that by registration of the domain name , Respondent has acted with bad faith because it positively and directly harms Complainant’s goodwill and trademark.
Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
7. Decision The Panel decides that Respondent has engaged in abusive registration of the domain name within the meaning of Paragraph 4(a) of the Policy. The Panel orders that the domain name be transferred to the Complainant.