1.1 The Complainant is Classmates Online, Inc., of Seattle, Washington, United States of America, represented internally.
1.2 The Respondent is Mary Lamb, of 111 Lamb Street Nairobi, Kenya.
2. The Domain Name and Registrar
2.1 The disputed domain name <classmatesmates.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2009. On June 2, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2009, the Registrar 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 (the “Policy” or “UDRP”), 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”).
3.2 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 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 2, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 13, 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.
4. Factual Background
4.1 The Complainant is a company incorporated under the laws of the State of Washington. It is the operator of the online social networking website that operates from the domain name <classmates.com>. The website has operated since 1995 and currently has over 40 million registered Internet users.
4.2 The Complainant is the owner of various trade marks that comprise or incorporate the terms “Classmates” or “Classmates.com”. Specific marks identified by the Complainant in its Complaint are:
(i) US trade mark registration No. 2,584,325 for the “typed drawing” CLASSMATES.COM in classes 35 and 38 filed on December 14, 1999; and
(ii) US trade mark registration No. 2,758,007 for the “typed drawing” CLASSMATES in classes 35, 41 and 42 filed on May 17, 2001.
4.3 Little is known about the Respondent. She appears to be an individual located in Kenya but whether this is the Respondent's true name and address is not clear.
4.4 The WhoIs record for the Domain Name records that it was registered February 12, 2006.
4.5 As at January 2009 the webpage operating from the Domain Name bore all the hallmarks of having been generated by a “domain name parking” or “pay per click” advertising site. The webpage displayed the Domain Name at the top, underneath which was to found the tag line “What you need, when you need it”. Below that were links to various “popular categories” of search that when clicked upon would display a page of sponsored search results. The categories of links were wide ranging in subject matter but included “Classmates Com”, “People search”, “Find Friends”, Find a Friend”, “Find Friend” and “Old friend”.
4.6 On January 26, 2009 the Complainant sent a “cease and desist” or “letter before action” to the Respondent by email. In the correspondence that followed the Respondent admitted that the Domain Name was similar to the Complainant's <classmates.com> domain name but denied that the Domain Name was being used to intentionally attract from commercial gain internet users by creating a likelihood of confusion. However, she offered to transfer the Domain Name to the Complainant in return for her “administrative costs”, which she stated to be “around $500”.
4.7 In correspondence a few weeks later the Respondent claimed to be “a professional lawyer”. She also stated that she was “willing to settle for $300”. Throughout this correspondence the Respondent used the email address “[email protected]”.
4.8 In or about May 2009 the format of the webpage operating from the Domain Name changed somewhat. As well as directly displaying sponsored listing (including those of the Complainant) the webpage displayed the text “this domain may be for sale by its owner!” and carried a link to a page on Sedo's website, through which it was possible to make an offer for the Domain Name.
4.9 No website is operating from the Domain Name as at the date of this decision.
5. Parties' Contentions
A. Complainant
5.1 The Complainant refers to its registered trade marks and the number of users of its services. It provides material that is said to show that the Complainant's business had a high level of recognition in the United States by late 2005 (i.e. just prior to the date upon which the Domain Name was registered).
5.2 The Complainant asserts that the Domain Name is confusingly similar to its CLASSMATES Marks asserting that the Respondent in this case is engaged in “typosquatting”. It claims that “it is highly unlikely that a computer user would purposefully type <classmatesmates.com> and expect to find a website that is not associated with the Complainant's services”.
5.3 The Complainant claims that the Respondent initially used the Domain Name to direct Internet traffic to “search engines and a series of pop-up advertisements” in order to generate click-through fees and to generate sales revenue. It asserts that such use does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name (citing Yahoo! Inc., et al v. Henry Chang, NAF Claim No. FA0306000162050.
5.4 On the issue of bad faith registration and use, it once again refers to the click-through fee generation use of the Domain Name. It denies that the Domain Name has been used in the sense of “classmate's mates” (as the Respondent at one stage seemed to claim in correspondence) and asserts that even if it were used in this manner it would infringe the Complainant's trade marks. There is also some discussion of the circumstances in which the inclusion of a mark in a domain name involves infringement of that mark.
5.5 The Complainant also refers to the Respondent's offers to sell the Domain Name to it and the Sedo page link which are said to evidence that the Respondent has sought to sell the Domain Name for a sum that exceeds her out of pocket expenses.
5.6 The Complainant also contends that it is “highly unlikely that the Respondent was unaware of the Complainant's business when she registered the [Domain Name]”.
B. Respondent
5.7 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 In the opinion of the Panel the most sensible reading of the Domain Name as the word “classmates” with the word “mates” repeated in combination with the “.com” TLD. In the circumstances, the Panel has little difficult in concluding that the Domain Name is confusingly similar to the Complainant's registered CLASSMATES and CLASSMATES.COM trade marks.
6.5 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Panel accepts that the Domain Name in this case was registered by the Respondent for use with a “domain name parking” or “pay per click” service and for possible sale at a profit. This is clear from the subsequent use of the Domain Name in connection with such services, and the offers for sale of the Domain Name to the Complainant and more generally through the Sedo website. As is discussed in greater detail below under the heading of bad faith, the Panel does not accept the Respondent's assertion that $500 represented “her” out of pocket expenses.
6.7 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a third party complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,
WIPO Case No. D2007-0267).
6.8 Similarly there is nothing per se illegitimate in dealing in domain names. However, if there is an intention by reason of the sale or threatened sale of the domain name to take advantage of the third party's rights and reputation in a trade mark represented in that domain name, then that is quite a different matter.
6.9 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainant's marks in mind, and has it deliberately used it to take unfair advantage of the reputation of those marks? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use, and a separate assessment of the question of rights and legitimate interests adds very little.
6.10 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the unequivocal answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 The Complainant contends that when the Respondent registered the Domain Name, it is highly unlikely that the Respondent was unaware of the Complainant's business and with a view to “pay per click” revenue generation. The Panel agrees but this requires some explanation.
6.12. It appears clear in this case from the use made of the Domain Name that the Domain Name was registered with a view to taking advantage of “domain name parking” or “pay per click” services pages in order to generate revenue for the Respondent. It is now well-known how these sorts of “domain name parking” or “pay per click” service pages operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to those sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,
WIPO Case No. D2007-1143).
6.13 The generation of revenue from domain name parking activities is not necessarily use in bad faith under the Policy. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (see, for example, Express Scripts, Inc., supra.).
6.14 Sometimes that knowledge and intent can be inferred from the size of the reputation of the relevant complainant's mark, the territories to which it extends and the location of the respondent. Notwithstanding the size of the Complainant, this is somewhat difficult in this case. The Complainant has brought forward evidence of a significant reputation in the United States at the time of registration, but has not provided any evidence that its reputation extended or extends outside of the United States. Given that the Respondent would prima facie appear to be based in Kenya, it is difficult to infer from the Complainant's United States reputation alone that the Respondent must have been aware of the Complainant's business.
6.15 It may be that the Respondent is not based in Kenya at all. The Panel notes for example that “she” conducted negotiations from what appears to be a Czech email address. However, the Complainant has not suggested that the Respondent's contact details are false, nor would the existence of a Czech connection resolve the difficulty described.
6.16 Another way in which knowledge and intent can be inferred is from the content and nature of the sponsored links appearing on the “pay per click” page. Given the way in which these web pages operates, and for the reasons that are explained in the Owens Corningcase supra, where a “pay per click” web page displays links that are connected with the complainant's business and are not explicable by reference to any descriptive or generic term incorporated within the domain name, this of itself can provide prima facie evidence of a registrant's knowledge of a complainant's trade mark and an intent to take advantage of the reputation of that mark.
6.17 However, again in this case the position is not so straight forward. As has already been described, the Domain Name can most sensibly be read as including the word “classmates”. It is, therefore, not particularly surprising that the domain name parking page software in this case produced links that were connected with finding old friends or social networking. That this also included links to the Complainant and its competitors is also inconclusive. Therefore, this is not a case where the links displayed by themselves provide prima facie evidence of the respondent's knowledge of the complainant's mark and the burden of proof passes to the respondent to provide an innocent explanation for their appearance.
6.18 Nevertheless, the Panel is in little doubt that the Domain Name was registered with the Complainant in mind and in order to take unfair advantage of the reputation of the Complainant's mark. The reason for this lies in the Domain Name itself. There is no obvious legitimate reason why someone would want to register a domain name that comprises the words “class”, “mates” and “mates” in combination. The Panel agrees that the Respondent's suggestion that this is a reference to “Classmates' mates” is implausible. It is in any event not backed up by any evidence filed in these proceedings. A more obvious explanation is that this is (as the Complainant has alleged) a case of “typosquatting”; i.e. that the Domain Name was registered with a view to taking advantage of the fact that those who intended to type in the domain name <classmates.com> might accidentally or inadvertently repeat the word “mates”. Since the domain name <classmates.com> is the domain name from which the Complainant operates its business, it follows that is was with the Complainant in mind that the Domain Name was registered. When this fact is combined with the subsequent pay per click use of the Domain Name, it is clear that the Respondent has been engaged in activity that falls within the scope of paragraph 4(b)(iv) of the Policy.
6.19 This is sufficient to support a finding of bad faith. There is also at least one other factor that points in this direction. That is the offers for sale of the Domain Name and in particular the first offer to sell the Domain Name to the Complaint for $500 combined with a claim that this represented the Respondent's “administrative costs”. It is inherently unlikely that the Respondent's “administrative costs” would have been that high and in the absence of any evidence from the Respondent to the contrary, the Panel rejects this suggestion. It appears instead to be a somewhat contrived justification for demanding a sum of money whereby the Respondent would make a profit (albeit a modest one) from her registration. This conclusion seems to be borne out by the Respondent's subsequent offer to sell the Domain Name for $300 dollars.
6.20 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.21 In coming to its conclusion in this case, the Panel has not given any weight to the Complainant's claims that the Respondent's use of the Domain Name involved acts of trade mark infringement. For reasons that are set out in greater detail in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza,WIPO Case No. D2003-0372 and 1066 Housing Association Ltd. v. Mr. D. Morgan,
WIPO Case No. D2007-1461, the Panel does not consider this to be of relevance to the question of whether there has been abusive registration under the Policy.
7. Decision
7.1 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, <classmatesmates.com> be transferred to the Complainant.
Matthew S. Harris Sole Panelist
Dated: July 14, 2009
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