oxado.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Future Media Architects, Inc. v. Oxado SARL

Case No. D2006-0729

1. The Parties

The Complainant is Future Media Architects, Inc., Alexandria, Virginia, United States of America, represented by Kenyon & Kenyon, United States of America.

The Respondent is Oxado SARL, Paris, France, represented by Jacques Caron.

2. The Domain Name and Registrar

The disputed domain name <oxado.com> is registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2006. On June 11, 2006, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain names at issue. On June 14, 2006, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 15, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2006. The Response was filed with the Center on June 20, 2006.

The Center appointed William R. Towns, Richard A. Horning and David E. Sorkin as panelists in this matter on July 17, 2006. The Panel finds that it was properly constituted. Each member of 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 an internet development company that operates a search engine website at “www.oxide.com”. The search engine uses meta search technology allowing users to simultaneously search a number of leading third party search engines. The Complainant launched its search engine in December 2002.

The Complainant is the owner of the registered trademark OXIDE, which the Complainant uses in relation to its search engine and other computer services. The Complainant’s OXIDE mark was registered by the United States Patent & Trademark Office (USPTO) on August 31, 2004, and the registration reflects the Complainant’s first use of the mark in commerce in December 2002.

The Respondent operates a contextual advertising engine and website at “www.oxado.com”, the disputed domain name, through a wholly owned subsidiary, Oxado Europe Limited. The Respondent began offering contextual ad services in June 2005. The Respondent registered the disputed domain name on February 17, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is almost identical, and therefore confusingly similar to its OXIDE mark. The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name because the Respondent had actual or constructive notice of the Complainant’s mark prior to the Respondent’s use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. The Complainant further asserts that the Respondent is not commonly known by the disputed domain name.

The Complainant contends that the Respondent registered the domain name in bad faith for use in connection with identical services to those provided by the Complainant, in an effort to profit from and exploit the goodwill amassed in the Complainant’s OXIDE mark. The Complainant concludes that the Respondent is intentionally using the mark to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, sponsorship or endorsement of the Respondent’s website.

B. Respondent

The Respondent does not dispute that the Complainant has rights in its OXIDE mark, but contends that the disputed domain name is neither identical nor confusingly similar to the Complainant’s mark. The Respondent argues that the domain name does not incorporate the Complainant’s mark, and cannot be derived by any common misspelling of the Complainant’s mark or through any predictable mistyping of the Complainant’s mark on any keyboard. The Respondent asserts that, while the disputed domain name differs from the Complainant’s mark by only two letters, that difference constitutes 40% of the mark, which, according to the Respondent, represents quite a difference. Even assuming that the Respondent operates a search engine in competition with the Complainant, which the Respondent specifically denies, the Respondent argues this is irrelevant to the question of confusingly similarity under paragraph 4(a)(i) of the Policy.

The Respondent maintains that it has established rights and legitimate interests in the disputed domain name. The Respondent notes that it has used the domain name in connection with its offering of contextual ad services since June 2005, well in advance of its receipt of any notice of this dispute, thus using the domain name in connection with a bona fide offering of services.¹ The Respondent further asserts that its registered business name is Oxado SARL, and that is has always been known by the disputed domain name – i.e., “Oxado”.²

The Respondent denies any bad faith. The Respondent asserts that it was not aware of the Complainant’s website when it registered the disputed domain name, and denies any intent to trade on the Complainant’s mark. The Respondent further asserts that it does not compete directly with the Complainant. According to the Respondent, the search feature on its website– as reflected by the leading text “Check out our advertisers” – is meant only for prospective affiliates to find out what advertisers the Respondent has for their websites, and only shows advertiser listings.

Finally, the Respondent contends that the Complaint was brought in bad faith, and requests the Panel to make a finding of reverse domain name hijacking.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

It is well settled under paragraph 4(a)(i) of the Policy that the question of identity or confusingly similarity is evaluated solely based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Café, WIPO Case No. D2000-0068.

The Complainant argues that the disputed domain name is confusingly similar, relying on Panel decisions establishing that the addition of words or letters to a mark in a domain name does not dispel the confusing similarity of the domain name under the Policy. While there are indeed numerous decisions so holding, these decisions are inapposite in this case, which involves a five letter domain name – <oxado.com> – which neither incorporates the Complainant’s five letter mark – OXIDE – or adds words or letters to the mark.

Upon direct comparison, the disputed domain name clearly is not identical to the Complainant’s mark. While the Panel finds some similarities between the disputed domain name and the Complainant’s mark, the Panel cannot conclude, based on a comparison of the Complainant’s mark and the disputed domain name, that confusing similarity has been established. The Complainant also mistakenly argues for confusing similarity on the grounds that the Respondent operates a search engine in direct competition with the Complainant. As noted above, use factors that are germane to a “likelihood of confusion” analysis under traditional trademark law are not considerations when determining “confusing similarity” under paragraph 4(a)(i) of the Policy.

There are a number of Panel decisions that have found confusing similarity under paragraph 4(a)(i) based on evidence of “typosquatting” – a form of cybersquatting in which a respondent registers and uses a domain name that is a common misspelling or predictable mistyping of a distinctive mark in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website. See Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035. In this case, however, the Complainant has presented no evidence that the disputed domain name is either a common misspelling or a predictable mistyping of the Complainant’s mark, as was the case in Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150 (<qachovia.com>, <wachpvia.com>, and <wscpovia.com> confusingly similar to WACHOVIA due to common mistyping on standard “qwerty” keyboard).

In view of the foregoing, the Panel finds that the Complainant has failed to meet its burden under paragraph 4(a)(i) to demonstrate that the disputed domain name and the Complainant’s mark, when directly compared, are confusingly similar.

B. Rights or Legitimate Interests

Under Paragraph 4(a)(ii), the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Once the Complainant makes a prima facie showing under Paragraph 4(a)(ii), the Respondent may establish rights to or legitimate interests in the disputed domain names under Paragraph 4(c) by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 concludes that the Complainant has failed to meet its burden under paragraph 4(a)(ii) to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. In asserting that the Respondent lacks rights or legitimate interests in the disputed domain name, the Complainant notes that it registered its OXIDE mark prior to the Respondent’s registration and use of the disputed domain name. Given the prior registration of the mark, the Complainant contends that the Respondent had actual or constructive notice of the Complainant’s rights in the mark, and thus cannot claim to have used or have made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

The Complainant’s argument fails to correctly apply paragraph 4(c)(i), which provides that a respondent may establish rights or legitimate interests in a domain name by demonstrating its use in connection with a bona fide offering of goods or service prior to the respondent’s receipt of any notice of the dispute. Even assuming that the Respondent in this case had actual knowledge of the Complainant’s mark prior to registering the domain name, the Respondent’s awareness of the Complainant’s mark standing alone would not constitute notice to the Respondent of the dispute for purposes of paragraph 4(c)(i).

To the extent the Complainant relies on the decision in Oakley, Inc. v. Kenneth Watson, WIPO Case No. D2000-1658, in support of its construction of paragraph 4(c)(i), such reliance is misplaced. While the Panel in that case concluded that the respondent had actual or constructive knowledge of the complainant’s mark, the Panel also found that the respondent had never used the disputed domain name in connection with an offering of goods or services, and that the respondent had registered the disputed domain name in bad faith.

In this case, there is no evidence that the Respondent had any notice of this dispute before the Center formally notified the Respondent of the Complaint on June 16, 2006. It is undisputed that the Respondent launched its contextual ad website in June 2005. Thus, the record demonstrates the Respondent’s use of the disputed domain name in connection a bona fide offering of goods or services prior to any notice of the dispute, establishing rights or legitimate interests in the domain name under paragraph 4(c)(i) of the Policy.

Accordingly, the Panel finds that the Complainant has failed to meet its burden under paragraph 4(a)(ii) to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

In view of the Panel’s determination that the Complainant has failed to meet its burden under paragraphs 4(a)(i) and 4(a)(ii) of the Policy, the Panel finds it unnecessary to address the question of bad faith registration and use under paragraph 4(a)(iii).

E. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In the Panel’s opinion, the Respondent has not made the necessary showing to prevail on its claim of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: July 31, 2006

¹ According to the Respondent, prior to any notice of the dispute,the Respondent developed its contextual advertising engine and website, registered 10,000 affiliates, and was displaying more than 150 million contextual advertising banners every month. These services, according to the Respondent, generated revenues exceeding 600,000 euros in less than a year.

² According to the Respondent, the name “Oxado” is shown on a majority of its contextual banners (more than 150 million a month) on its affiliates’ websites.