The Complainant is Iweb Group Inc., Montreal, Canada, represented by Brouillette & Partners LLP, Canada.
The Respondent is Domain Source, Redding, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <iwebservers.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2008. On May 27, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 27, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to further emails from the Center, the registrar confirmed on June 13, 2008 that the disputed domain name would remain locked subject to these proceedings. The Center then verified that 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 June 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on July 14, 2008. 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 following facts are not contested.
The Complainant, Iweb Group Inc., is a company incorporated in Canada. The Complainant has registered marks in the United States of America and Canada for IWEB, with a first filing date in 2000 (for one of its Canadian registered marks) and 2004 (for its mark registered in the United States of America). Its mark is registered in relation to Internet related services, including hosting and server services. It was first used in commerce in 1998 by the Complainant’s wholly owned subsidiary. Since December 1998 the Complainant has operated websites at “www.iwebgroup.com” and “www.iweb-hosting.com”.
The Respondent provided no direct evidence of the nature of its business. The Complainant provided evidence from what is apparently the Respondent’s regular website at “www.domainsource.com”. On that site, the Respondent describes itself as “a reputable corporation that has been specializing in the sale and resale of domain names, registration transfers and web hosting services since 1999”.
The Respondent has been a prior unsuccessful respondent in proceedings under the Policy. See The Betty Ford Center at Eisenhower v. Domain Source, Inc.,WIPO Case No. D2007-0901. In that case, like this one, the Respondent filed no reply to the complaint against it.
The disputed domain name was first registered on September 28, 2002 (as shown by the “creation date” in the Whois record.)
As indicated in the case file, at the date the Complaint was notified on June 16, 2008, the disputed domain name reverted to a website offering various computer products for sale, including servers that apparently are competing products with the Complainant’s. The website was prominently titled “iwebServers.com”, alongside a logo of a flattened arrow wrapped around a globe.
The Complainant provides evidence that, on April 3, 2008, the disputed domain name reverted to a “portal” or “landing” website, containing various links titled e.g. “Dedicated Linux Hosting”, “Servers”, “Apache Training”, and “Velocity Servers”.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name wholly incorporates its mark together with a term which is related to the Complainant’s goods and services. As such, the Complainant submits that the disputed domain name is confusingly similar to its mark.
The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trademark for IWEB; has not been authorized by the Complainant to use that mark; and has not used it in relation to any type of services or products. Rather, the disputed domain name has been used to misleadingly divert Internet users to the Complainant’s competitors.
Finally, the Complainant claims that the disputed domain name was registered, and has been used, in bad faith. The Respondent registered the disputed domain name long after the Complainant’s mark was in use. Since the Respondent, according to its website, also provides hosting services, the Respondent would have known of the Complainant’s mark. The Complainant also notes that the website at the disputed domain name contains a link back to the Respondent’s regular website, at which the disputed domain name is offered for sale.
The Complainant provides evidence of having written a “cease and desist” letter to the Respondent on March 20, 2008. The Complainant received no reply. The Complainant provided evidence that, although the Respondent did not reply to its “cease and desist” letter, the nature of the Respondent’s website was later modified: from the “landing” website to a website apparently offering servers for sale.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed, 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 was registered and is being used in bad faith.
These three elements are discussed in turn below.
A. Identical or Confusingly Similar
The disputed domain name wholly incorporates the Complainant’s mark. While it is a mark that arguably includes two generic words (the personal pronoun “I” and “web”), there no evidence that the combination is itself generic. As such, the disputed domain name is more likely to create confusion with the Complainant’s mark, at the very least in the minds of those Internet users who recognize it.
For those Internet users, that confusion is also likely to be accentuated by the addition of the term “server”, since that term directly relates to the goods and services offered by the Complainant. It is well-established that a domain name which wholly incorporates a trademark may be confusingly similar to that trademark for the purposes of the Policy, despite the addition of common or generic words. (See, for example: Wal-Mart Stores, Inc v. Wallsucks & Walmarket Puerto Rico,
WIPO Case No. D2000-0477; Dr. Grandel GmbH v. Drg Randel Inc.,
WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493; Playboy Enterprises International, Inc. v. Hector Rodriguez,
WIPO Case No. D2000-1016. The case cited by the Complainant contained a similar finding: Roust Trading Limited v AMG LLC,
WIPO Case No. D2007-1857.)
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
The Complainant provided evidence that, before the Respondent received a “cease and desist” letter from the Complainant, the Respondent used the disputed domain name in connection with a “portal” or “landing” website. The disputed domain name appeared to have no objective connection with that website. That website contained a miscellany of links, most relating to servers. On the face of it however, none of those links self-evidently demonstrated any relationship with the mark IWEB.
Why then did the Respondent register and use that mark, together with a generic term that directly relates to the Complainant’s business? The Respondent gave no answer to this question. In the absence of such a reply, unless there are exceptional circumstances, it is open to the Panel to draw a negative inference against the Respondent, under paragraph 14(b) of the Rules.
The use of a domain name in connection with a “portal” or “landing” website does not, in itself, lead to the inference that there is a lack of a right or legitimate interest. But its use for that purpose suggests that the Respondent was seeking to attract Internet users because of the independent value of the mark. The evidence before the Panel indicates that the mark only has value in connection with the Complainant’s business. There is no evidence that the Respondent has any independent connection with that mark. As such, the evidence suggests that the Respondent registered and used the disputed domain name to exploit its value as a mark of the Complainant.
Where a domain name linking to a portal website is based on the trademark value of a complainant’s mark, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally do constitute abusive cybersquatting. See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings,
WIPO Case No. D2007-1562, and the cases cited in those ones. The Panel in this case makes a similar finding.
For these reasons, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel also finds that the Respondent registered and has used the disputed domain name in bad faith, under paragraph 4(b)(iv) of the Policy. That paragraph provides that there is evidence of bad faith where the Respondent:
“by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] web site…”
The evidence outlined above suggests that this was what the Respondent has sought to do. The disputed domain name is confusingly similar to the Complainant’s mark. There is no evidence that the Respondent has any independent stake in it. There is no evidence that the Respondent has a right or legitimate interest in it. The Respondent chose to make no response to the Complaint. The disputed domain name was registered well after the Complainant’s first use of its mark in commerce, and after the effective date of registration of its mark in Canada.
This conclusion is reinforced by the Respondent’s conduct. As evidenced in the Complaint, after receiving a “cease and desist” letter from the Complainant dated March 20, 2008, the Respondent altered its website. The altered website then gave the appearance that it concerned the sale of servers, and included the title “iwebServers.com” alongside a logo of a flattened arrow wrapped around a globe. None of this conduct removes the bad faith otherwise indicated before the Complainant’s “cease and desist” letter was sent. Rather, if the Respondent was confident that its conduct was legitimate, it might be expected that it would make little or no change after receiving such a letter.
As such, the Panel finds that the Complainant has established that the disputed domain name was registered and has been used in bad faith.
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, <iwebservers.com>, be transferred to the Complainant.
James A. Barker Sole Panelist
Dated: July 28, 2008
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