MediaWhiz Holdings, Inc. v. Domain Admin, PrivacyProtect.org / Domain Manager, MediaWiz Services Pvt Ltd
Case No. D2009-1227
1. The Parties
The Complainant is MediaWhiz Holdings, Inc. of New York, United States of America, represented by Klein Zelman Rothermel LLP, United States of America.
The Respondent is Domain Admin, PrivacyProtect.org / Domain Manager, MediaWiz Services Pvt Ltd of Moergestel, the Netherlands, and Mumbai, India, respectively, represented by John Berryhill, PhD., Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <mediawiz.biz> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2009. On September 16, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On September 17, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on September 22, 2009. The Center has verified that the Amended Complaint satisfies 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”).
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 September 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 14, 2009. The Response was filed with the Center on October 13, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on October 23, 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
A. The Complainant
The Complainant is a United States (“U.S.” or “U.S.A.”) company and the owner of a registration in the U.S.A. for the trade mark MEDIA WHIZ & Design registered since March 7, 2006 in International Class 35 in respect of “online direct marketing services”, with a claimed first use in commerce on January 1, 2002 (“the Trade Mark”).
The Complainant is also the applicant in respect of various word and device trade mark applications in the U.S.A. in International Class 35 comprising the wording MEDIA WHIZ, and asserts common law and U.S. statutory rights in respect of such pending trade marks.
The Complainant is also the owner of the domain name <mediawhiz.com> registered since November 22, 1999 (“the Complainant's Domain Name”).
B. The Respondent
The Respondent is an Indian company.
The disputed domain name was registered on November 12, 2001.
5. Parties' Contentions
A. The Complainant
The following facts are alleged by the Complainant in the Complaint.
The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant is one of the best known and most successful companies within the online advertising and marketing industry. The Complainant's advertising network currently consists of over 30,000 online publishers and 3,000 advertisers. In addition to the U.S.A., the Complainant markets and provides its services in other countries, including England and Germany.
The Trade Mark is merely suggestive of the products and services offered. As such, the Trade Mark is entitled to protection.
The disputed domain name is, according to Complainant, being used, among other things, to market Internet marketing services similar to those provided by the Complainant, and is confusingly similar to the Trade Mark.
“Mediawiz” is phonetically identical to the Trade Mark, because it merely omits the silent “h” that is present in the Trade Mark. It is likely that an individual might unintentionally type in the disputed domain name, or be directed to the disputed domain name as a result of an Internet search, even though that individual is actually seeking the services offered under the Trade Mark.
Based upon the foregoing, just as individuals (correctly) expect to reach a website offering products, information or services provided by or authorised by the Complainant via the Complainant's Domain Name, it is, in Complainant's opinion, highly likely that individuals will be confused into believing that the disputed domain name is also owned and operated by the Complainant. The possibility of confusion is even greater considering that there is no contact information (e.g. telephone number, physical address, email address, facsimile number, etc.) available on the website to which the disputed domain name resolves (“the Website”). As a result, the disputed domain name is confusingly similar to the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant states that it clearly has rights in the well-known Trade Mark and that the Respondent lacks such rights in the disputed domain name. A review of the Website produces head-scratching results. First, there is no contact information provided on the Website. Second, a description of the “company” allegedly associated with the Website reads as follows:
“MediaWiz Interactive is the Web Publishing Division of MediaWiz Services Private Limited. Which privately held company registered with the Registrar of Companies in India since 1995. It is headed by advertising and management professionals and backed by excellent creative, production and technical teams.
Initially an in-house division of the company formed to manage and promote sites belonging to us, MediaWiz.Biz or MediaWiz Interactive has grown to be one of the big boys on the web scene in India.”
While not entirely clear, the “us” in the above description apparently refers to MediaWiz Services Private Limited. It is clear, however, that the company responsible for the Internet marketing services that are described on the Website began as an “in-house” operation and, as such, did not provide services to the consuming public. The Complainant claims that according to a recent review of the Website, however, the Respondent is currently claiming that its Internet marketing services are available to the consuming public on an international basis. Based upon the foregoing, the Respondent appears to be using the goodwill associated with the Trade Mark to attract users to the Website, and to then use the Website as a gateway to other websites, several of which offer services that compete with the Complainant, while others are not operational. As a result, the disputed domain name is not being used in connection with a bona fide offering of goods and services. Such non-use is evidence that the Respondent has no rights or legitimate interests in the domain name.
Because the Trade Mark is used as a trade name, according to the Complainant, the Trade Mark is an essential part of the Complainant's identity and success. The Complainant has not licensed or authorised the Respondent to use the Trade Mark, or a phonetically identical mark, in any domain name. As a result, any confusion created by the Respondent's use of the disputed domain name tarnishes the Complainant's reputation and causes direct harm to the Complainant's legitimate business. Further, the Respondent's recent attempts to market the goods and services offered in connection with the disputed domain name within the U.S., as evidenced by the appearance of “MediaWiz” on the attendee list for the 2009 Affiliate Summit East recently in New York, New York, demonstrates that the Respondent is engaging in activities that are infringing the Complainant's statutorily protected rights in the Trade Mark.
Based upon the foregoing, the Complainant asserts that the disputed domain name is not being used by the Respondent in connection with a bona fide offering of goods and services, but in a manner that is intended to confuse consumers and unfairly compete with the Complainant. Therefore, the Respondent should be found to have no rights or legitimate interest in the disputed domain name.
The disputed domain name was registered and is being used in bad faith
The Respondent's use of the disputed domain name to create confusion with the Trade Mark and to divert customers from the Complainant's Website, for the Respondent's own commercial gain, constitutes evidence of bad faith registration and use of the disputed domain name. By creating a likelihood of confusion with the Trade Mark by improperly capitalising on the name recognition and goodwill of the Trade Mark in an attempt to divert Internet traffic to the Website (and ultimately to the websites whose links appear on the Website), the Complainant holds that the Respondent should be found to have registered and be using the disputed domain name in bad faith.
Further, a review of the Website reveals that there is no actual contact information provided anywhere on the Website. In fact, a consumer wishing to contact the owner of the Website by email is provided only with a message submittal form – not an actual email address for the company. Further, instead of being directed to a telephone number, a consumer who clicks on the “Call Now” link underlined at the top of the homepage of the website is sent to the same message submittal form.
In addition, many of the links contained on the Website direct consumers to other websites. These links are used to redirect traffic originally drawn to the Website because of the disputed domain name to other websites offering goods and services under trade marks that do not incorporate the word “mediawiz”. These websites are owned by EMM.IN. EMM.IN is according to the Complainant the parent company of the Respondent. Based upon the foregoing, it appears the disputed domain name is being used in bad faith to attract consumers looking for the Complainant's services and then to direct such consumers to EMM.IN websites that offer products and services that, in some cases, compete with the Complainant.
In addition, the Respondent has used a privacy service to shield its identity when it registered the disputed domain name. In an effort to resolve this matter amicably, the Complainant attempted to contact the owner/operator of the Website prior to filing this Complaint. The Complainant, however, encountered difficulty in contacting the company due to its efforts to conceal its contact information. The Respondent's efforts to hide its true identity and avoid being contacted regarding the disputed domain name should according to the Complainant be taken as evidence that the disputed domain name was registered and is being used in bad faith.
As a result of the Complainant's status in the online marketing and advertising industry, the Respondent likely had knowledge, or should have had knowledge, of the Trade Mark when it registered the disputed domain name and commenced use of a confusingly similar mark as part of the disputed domain name. By registering the disputed domain name with knowledge of the Trade Mark for the purpose of diverting Internet traffic to its own site for commercial gain, and then further shielding its identity to avoid accountability for its unauthorised activity, the Respondent registered and then used the disputed domain name in bad faith.
B. The Respondent
The following facts are alleged by the Respondent in the Response.
The Complainant knows and admits the disputed domain name has been registered since November 2001, and has asserted a trade mark registered in 2006.
The Respondent's certificate of incorporation is dated 1995 (and has been exhibited to the Response). Indian company names are searchable online at “www.mca.gov.in” and the Respondent's history of use of the disputed domain name is available via “www.archive.org” and the WhoIs history for the disputed domain name is available via “www.domaintools.com”.
The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The disputed domain name is not confusingly similar to the Trade Mark, which is a graphical logo mark applied for in 2005 and issued in 2006. The claimed date of first use of the Trade Mark is 2002, bearing in mind that dates of first use are not examined or verified by the USPTO. The earliest date of demonstrable rights in respect of the Trade Mark is the issue date in 2006.
The Complainant's pending trade mark applications referred to in the Complaint were filed in 2009 and have not been examined. The ability to file trade mark applications is not a demonstration of rights in and to a trade mark.
Internet archive records for the Complainant's Domain Name show that, as late as October 2001, the Complainant's Domain Name resolved to a “site not uploaded” web page, and as late as May 2002, the website consisted of not much more than the Trade Mark and a promise of things to come.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
Perhaps what is the closest to an “absolute defence” under the Policy is the fact the Respondent is commonly known by the disputed domain name or a close equivalent thereof.
The Complainant quotes from the Website that the Respondent was formed as MediaWiz Services Pvt. Ltd. in 1995. One might think this would provide a basis for the Complainant to investigate the circumstances further, as the quoted statement is entirely accurate and independently verifiable at the “www.mca.gov.in” website of the Government of India.
The evidence in this case, including the evidence provided by the Complainant, strongly indicates that both of the circumstances under paragraphs 4(c)(i) and 4(c)(ii) of the Policy are present.
It is readily apparent that the Complainant was correctly informed by the Website that the Respondent was formed in 1995, while the Complainant's earliest alleged date of any activity is that it registered a domain name in 1999.
Among other things also apparent on inspection of the Website is the notation that the Respondent also owns and operates <mediawiz.co.in> and <mediawiz.in>, also readily verifiable as registered by the Respondent.
The Respondent has exhibited samples of use of the Respondent's name in 1996 in respect of an advertisement for Indian made craft products in Germany, in 1997 in respect of a trade show brochure, and in 1998 in respect of an art exhibition.
The Respondent also, through a d/b/a “MediaWiz USA Inc.” maintained a contact address in Fremont, California in June 2002.
The Disputed Domain Name was registered and is being used in bad faith
The Complainant has not shown evidence of a legally enforceable right pre-dating the Respondent's registration of the disputed domain name. The Respondent has quoted from the “frequently-asked questions” section of the Center's website:
“Consensus view: Normally speaking, when a domain name is registered before a trade mark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.”
The Complainant's allegations that the Respondent has provided no contact information and is attempting to hide its identity by use of a privacy service are nonsense.
The Complaint itself demonstrates the Complainant was aware the disputed domain name was registered prior to the alleged date of first use of the Trade Mark. The Complainant admits knowing the Respondent claimed, truly and correctly, to have been formed in 1995.
The Respondent asserts that the filing of the Complaint was abusive and that the conduct of the Complainant constitutes reverse domain name hijacking.
6. Discussion and Findings
As a starting premise, the Panel would suggest that the Complainant's case is not helped by, in its own admission, the fact that the Trade Mark is merely suggestive of the services offered by the Complainant. The Panel considers that the wording component of the Trade Mark, namely the words “media whiz”, when used in respect of online marketing services, is not particularly distinctive. It is therefore possible that, in order to obtain registration of the Trade Mark, the Complainant has adopted a form of wording using a deliberate misspelling of the word “wiz” (an abbreviation for the word “wizard”, with connotations of being an expert), and has combined the wording MEDIA WHIZ with a distinctive graphic logo.
In the Panel's view, given the lack of distinctiveness of the wording “media whiz”, perhaps it is not surprising that an entity in another country where English is widely spoken would choose to incorporate under the name “MediaWiz” and conduct business offering similar services to those offered by the Complainant predominantly in the U.S. market.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of the disputed domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
The deletion of the silent letter “h” used in the Trade Mark does not serve to distinguish the disputed domain name in any way. In the present circumstances, the deletion of the letter “h” should be disregarded in determining the question of confusing similarity.
Although the Trade Mark is a composite word and device mark, the Panel finds that the predominant feature of the Trade Mark is the wording MEDIA WHIZ. The Panel therefore finds that the disputed domain name is not identical with, but is confusingly similar to, the Trade Mark.
Indeed, one of the cases referred to by the Respondent in the Response is supportive of this conclusion (Hero v. The Heroic Sandwich, WIPO Case No. D2008-0779). There is a long line of authorities under the Policy in which it has been held that graphic or stylised elements should be disregarded in determining the question of confusing similarity, as such elements cannot be reproduced in a domain name.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed 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 trade mark 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, on the basis of the evidence included in both the Complaint and the Response, that this is clearly a case where the Respondent has rights or legitimate interests in the disputed domain name under paragraphs 4(c)(i) and 4(c)(ii) of the Policy.
The Complainant's allegations of non-use by the Respondent of the disputed domain name are, on the facts, not sustainable.
Insofar as the Respondent may have commenced (or, indeed, re-commenced) use of its name in the U.S. market, the Complainant is, of course, free to assert its rights in the Trade Mark in the U.S. courts against the Respondent.
On the evidence available to the Panel, however, the Panel has no hesitation in finding that the Respondent, which has been commonly known as “MediaWiz Services Private Limited” since 1995 in at least the Indian marketplace, has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant's allegations that the Respondent has used the disputed domain name to create confusion with the Trade Mark and to divert customers from the Complainant's Website, for the Respondent's own commercial gain, are not sustainable.
The evidence shows that the Respondent was incorporated under the name “MediaWiz” in India in 1995 and has been consistently using its name since that date. In addition to the registration of the disputed domain name, which pre-dates by several years the date of commencement of active use by the Complainant of the Trade Mark, the Respondent has registered and used for many years country level domain names comprising the wording “MediaWiz” in India.
On the facts, the Respondent could not have known of the Complainant's non-existent rights in the Trade Mark at the time the Respondent registered the disputed domain name and, indeed, for many years afterwards (PrintForBusiness B.V. v LBS Horticulture, WIPO Case No. D2001-1182).
The Panel finds the assertions of the Complainant that the Respondent has attempted to shield its identity by failing to provide contact information and by using a privacy service are also not supported by the evidence.
D. Reverse Domain Name Hijacking
“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (Rohl, LLC v. ROHL SA,WIPO Case No. D2006-0645).
Indeed, this is not a case where the Complainant simply failed to conduct reasonable investigations. The facts of this case suggest that it should have been apparent to the Complainant, on the basis of its own investigations, that it could not reasonably succeed in bringing a complaint under the Policy, particularly given the lack of distinctiveness of the words “Media Wiz” when used in respect of marketing services, and the likelihood that other traders in countries where English is commonly spoken and used in business, such as India, might choose to use such a name in respect of their legitimate business.
Faced with evidence immediately apparent on the home page of the Website that the Respondent, MediaWiz Services Private Limited, had been established under the name “MediaWiz” since 1995, and knowing that its rights in respect of the name “Media Whiz” went back to, at the earliest, 2002, the Complainant nonetheless chose to commence this proceeding in circumstances where its odds of success, should the Respondent choose to contest the proceeding, were miniscule.
For these reasons the Panel finds that the Complainant has engaged in reverse domain name hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Sebastian Hughes Sole Panelist
Dated: October 28, 2009
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