sidetsep.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sidestep, Inc. v. parked temp

Case No. D2007-0551

1. The Parties

The Complainant is Sidestep, Inc., Santa Clara, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.

The Respondent is parked temp, Guiyang, China.

2. The Domain Name and Registrar

The disputed Domain Name <sidetsep.com> is registered with Moniker Online Services, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2007. On April 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2007, the Registrar transmitted by email to the Center its verification response correcting the listing of the registrant and providing contact details. The Center furnished this information to the Complainant, which filed an amendment to the Complaint on May 2, 2007. Further communications with the Registrar indicated additional changes in the registrant of record. As a result, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on May 12, 2007. The Center verified that the Complaint, together with the second 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 on May 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2007.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 26, 2007. 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 SideStep, Inc. is a Delaware corporation with its principal place of business in Santa Clara, California, United States of America. Since October 2000, the Complainant has provided online comparative shopping and links to reservations websites for air travel, hotels, car rentals, cruises, and vacation packages. The Complainant provides these services by means of a proprietary search engine accessed by a downloadable “Sidestep” toolbar; it also now makes such searches available directly on its website, currently located at “www.sidestep.com”. The Complainant’s services entail agreements with a wide variety of airlines, hotel and car rental chains, online travel reservations systems, and other service providers.

The Complainant’s website indicates that more than 6 million users employ its services each month. The “Sidestep” search engine has been widely publicized online and in other advertising, and also through numerous media reports and industry awards reported in the Complaint or on the Complainant’s website. Such mentions include “Best 100 Products of the Year, 2006”, PC World; Webby Awards, Official Honoree, 2006; “Best of the Web”, Forbes magazine (2003, 2005, and 2006); “Best of the Web, 2005”, Business Week Online; and “50 Coolest Websites”, TIME magazine (2003, 2005). The first pages of results for a Google search on “sidestep” display numerous results that relate to the Complainant.

The Complainant holds the following registered trademarks in the United States of America, Canada, and the European Union:

The Complainant applied for the first of these marks, in the United States of America, on October 5, 2000, at about the time it launched its “Sidestep” search engine.

According to the Registrar’s WHOIS database, the Domain Name was registered on September 20, 2004. At the time the Complaint was filed, the WHOIS database showed Moniker Privacy Services as the registrant. Based on correspondence with the Registrar and the Registrar’s website at “www.moniker.com”, it appears that this is the name of a private domain registration service offered by the Registrar, not the real party in interest. The Registrar’s website describes the service as follows:

“Moniker offers domain whois privacy to protect your personal information. Ou domain privacy services acts as an iron curtain between you and the outside world. Instead of your information being available in the public whois lookup, these prying eyes will be directed to Moniker Privacy Services to protect your identity and your privacy.”

“Because we’re an ICANN Accredited Domain Registrar, you have the security of knowing that our domain whois privacy is compliant with all ICANN Whois Accuracy Guidelines. Moniker Privacy Services becomes the domain contact and filters through the spam so the only emails you receive are legitimate business correspondence (i.e. legal matters, sales inquiries, etc).”

As indicated in the Procedural History recited above, the Registrar changed the name of the listed registrant after receiving notice of this Complaint. However, the name provided as that of the registrant, “parked temp”, is evidently fictitious, and there has been no response to the Center from the listed contact person in China.

The Domain Name resolves to an advertising directory website headed “Welcome to sidetsep.com”. The landing page has links to several categories of goods and services, including “Cruise”, “Hotel”, and “Cheap Flight” under the general heading of “Vacations”. Other featured categories include “Home”, “Technology”, “Health and Beauty”, and “Personal Finance”. Clicking on one of these category links takes the website visitor to a search results page with a “Sponsored links” caption followed by links to a variety of third-party advertisers. Some of these appear to be direct competitors of the Complainant (e.g., “www.cheapflights.com”, “www.travelzoo.com”).

The Complainant furnished a printout from this website dated April 11, 2007 displaying “Sponsored Links” to a number of adult websites advertising “webcam sex” and similar material.

There is no information on the website to which the Domain Name resolves indicating the source of the website. There is a “Terms of Use” page with legal terms and disclaimers – including a choice of forum clause selecting the courts of King County, Washington to resolve any legal disputes – but these terms never once identify the operator of the website other than as “we”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its registered SIDESTEP mark, and that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant argues that the Respondent’s use of the Domain Name to advertise pornography and competing travel services reinforces the inference that the Respondent registered and used the Domain Name in bad faith, in an attempt to mislead Internet users for commercial gain. As the Domain Name varies from the Complainant’s mark only by inverting two letters to form a name that does not correspond to a dictionary word, the Complainant characterizes the Respondent’s conduct as “typosquatting”, again supporting an inference of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed Domain Name, the Complainant must demonstrate each of the following:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant indisputably holds the registered trademark SIDESTEP. The Domain Name differs only in inverting the adjacent letters “s” and “t”, forming a name that is not a dictionary word but that is visually similar to the mark and could easily result from a typographical error when inputting the mark into an Internet browser.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s mark for purposes of the first UDRP element.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(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.”

The Complainant states without contradiction that it has never authorized the Respondent to use the SIDESTEP mark (or a misspelled variation) in a domain name or on a website. The website to which the Domain Name resolves is commercial, and there is no evidence in the record of an entity that is known by the name “Sidetsep” or that goods or services are labeled with that name.

Using the Domain Name in connection with the advertising of third-party goods and services would not be a bona fide commercial use if it appeared more likely than not that the Domain Name was selected in order to mislead Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark. The evidence warrants the conclusion that this is the case. The trademark registrations indicate that the SIDESTEP mark has been used in commerce since November 2000, nearly four years before the Domain Name was registered. The mark has been associated from the beginning with a specialized kind of Internet search engine that quickly became popular and attracted substantial attention online as well as in print media. Millions of consumers, business travelers, and travel agents use the SIDESTEP service each month.

Based on its website, the Complainant’s service is international but emphasizes the English-speaking North American travel market. Although the inadequately identified Respondent shows a Chinese contact address, the advertising on the website to which the Domain Name resolves appears to be entirely in English and focused on the North American market. The website’s Terms of Use are in English and specify that disputes are to be presented to the courts of King County, Washington (Seattle and environs). The Domain Name is not an English word or phrase but rather a slightly misspelled variation of the SIDESTEP mark. Thus, it is unlikely that the Domain Name only coincidentally resembles the Complainant’s mark. In these circumstances, where the evidence suggests that the Respondent uses a Domain Name similar to the Complainant’s mark to divert Internet users to its own commercial website, it does not appear that the Domain Name is used in connection with a bona fide offering of goods or services.

The Respondent has not come forward to assert any rights or legitimate interests in the Domain Name. In the absence of contrary evidence, the Panel is entitled to draw a negative inference from the Respondent’s default, namely that the Respondent has no such rights or legitimate interests (see Rules, paragraph 14(b)).

The Panel concludes, therefore, that the Complainant has satisfied the second UDRP element.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith. One of these, Paragraph 4(b)(iv), fits the evidence in this proceeding:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

As discussed above, the Complainant’s registered SIDESTEP mark is well established, particularly in the North American markets that appear to be targeted in the advertising displayed on the website to which the Domain Name resolves, and this was the case by the time the Domain Name was registered in September 2004. The Respondent has not contested the Complainant’s reasonable inference that the Domain Name was deliberately selected to mislead Internet users for commercial gain.

There is no evidence in the record suggesting that the Respondent has a right or legitimate interest in using the Domain Name for commercial or noncommercial purposes. Instead, the slight misspelling of the Complainant’s mark appears to represent an instance of “typosquatting”, where a domain name is comprised of a common misspelling of a trademark, particularly where the misspelling is itself nonsensical and therefore unlikely to be explained as merely a coincidental use of a similar common word or phrase. The object is presumably to divert Internet users seeking a website relating to the trademark holder or its goods and services, which conforms to the circumstances described in Paragraph 4(b)(iv) of the Policy. As the Complainant observes, UDRP panels have frequently found such “typosquatting” to be evidence of bad faith. See, e.g., Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043.

The Panel finds additional indicia of bad faith in this case. While the use of a private domain registration service may represent a legitimate effort to avoid spam and other unwelcome contacts, using it to avoid responsibility for trademark infringement or other illegal acts does not reflect good faith. When presented with a UDRP complaint, the real party in interest that ordered and paid for the Domain Name should be willing to be identified and respond to the claims, if it indeed registered the Domain Name in good faith. The registration agreement expressly prohibits illegal use of the Domain Name and obliges the registrant to submit to UDRP proceedings. To facilitate UDRP proceedings and the resolution of other legal claims, ICANN’s Registrar Accreditation Agreement requires ICANN-accredited registrars to maintain a WHOIS service that includes the name and postal address of the registered name holder. The registration agreement of this Registrar, as of other ICANN-accredited registrars, accordingly requires “true, current, complete and accurate information” about the identity of the registrant. “parked temp”, the name given as the registrant here, is clearly not a natural or legal person, and there has been no response to the Center’s communications directed to the contact addresses listed for the registrant. This evasive conduct, which runs counter to the letter and spirit of the registration agreement, warrants an inference of bad faith.

The Panel concludes, therefore, that the Complainant has established bad-faith registration and use of the Domain Name for UDRP purposes.

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 <sidetsep.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist

Dated: July 5, 2007