Complainant is Wild West Domains, Inc. (“Complainant”) of the State of Arizona, United States of America (“United States”), internally represented.
Respondent is Vincent Ho (“Respondent”), an individual from the State of California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <wildwidewest.com> (the “Disputed Domain Name”). The registrar is the Complainant Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2009. On September 24, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Disputed Domain Name. On September 25, 2009, Wild West Domains, Inc. transmitted by email to the Center its verification response confirm that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirement 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 Respondent of the Complaint, and the proceedings commenced on September 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for the response was October 19, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2009.
The Center appointed Richard W. Page as the sole panelist (the “Panel”) in this matter on October 27, 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
Complainant is the owner of at least three registered trademarks relating to the WILD WEST and WILD WEST DOMAINS trademarks (the “WILD WEST Marks”). Complainant uses the WILD WEST Marks in connection with the registration, transfer and account management services of domain names for identification of users on a global computer network. The WILD WEST Marks are also used in relation to website hosting, design, email, SSL certificates, shopping carts, traffic building software and other products and services needed to build and maintain Internet websites.
Complainant is an affiliate company of GoDaddy.com, Inc., the world's largest domain name registrar. The WILD WEST Marks are well-known because GoDaddy, together with its affiliate companies, manages more than 35 million domain names, with more than 6.5 million customers around the world.
5. Parties' Contentions
A. Complainant's contentions
Complainant contends that it has registrations of the WILD WEST Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the WILD WEST Marks.
Complainant argues that the Disputed Domain Name is confusingly similar to the WILD WEST Marks, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the dominant feature of the WILD WEST Marks with the addition of a non-distinctive term.
The Disputed Domain Name <wildwidewest.com> is confusingly similar to the WILD WEST Marks because it incorporates the dominant features of the WILD WEST Marks and adds only a simple word. The addition of a simple word does not sufficiently differentiate the Disputed Domain Name from the WILD WEST Marks pursuant to Policy, paragraph 4(a)(i). The Disputed Domain Name and the WILD WEST Marks continue to share the dominant features of “wild” and “west” with the Disputed Domain Name only adding the word “wide.”
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Name under paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) because he is not commonly known under the Disputed Domain Name. While Respondent has a connection with Complainant as a reseller, Respondent has not received any license or consent, express or implied, to use the WILD WEST Marks in a domain name or in any other manner.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(iii) because he is not making a legitimate noncommercial or fair use of the Disputed Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.
Complainant further alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent is a reseller of Complainant's products. The Disputed Domain Name is used for the resale site to directly compete with Complainant by offering identical services. Complainant first used the WILD WEST Marks in commerce on July 14, 2002, more than two years prior to Respondent's registration of the Disputed Domain Name.
Respondent became a reseller of Complainant and registered the Disputed Doman Name on August 6, 2004. Respondent's website offers domain name registration as well as website hosting, design, email, SSL certificates, shopping carts, traffic building software and other products and services needed to build and maintain Internet websites. Complainant further alleges that Respondent's use of the Disputed Domain Name violates the terms of the Wild West Reseller Agreement, which expressly prohibits resellers from infringing on any of Complainant's trademarks. Therefore, any use of the Disputed Domain Name cannot be considered bona fide or legitimate for purposes of this proceeding.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii).
Complainant asserts that it became aware of Respondent's Disputed Domain Name in July 2009. Immediately after discovering the website, Complainant notified the Respondent via email that the Disputed Domain Name was infringing one or more of the WILD WEST Marks and was in violation of the Wild West Reseller Agreement. Respondent failed to issue any response to the two notices sent alleging potential infringement of the WILD WEST Marks.
Complainant further asserts that Respondent was fully aware of the WILD WEST Marks and Complainant's positive reputation as a domain name registrar, when Respondent registered his website through Complainant as registrar and while he served as a Wild West Domains reseller. Respondent's use of the Disputed Domain Name negates any potential claims of rights or legitimate interests.
Complainant further asserts that Respondent has not made a legitimate non-commercial or fair use of the Disputed Domain Name, as the website offers domain names for sale. Such activity is undisputedly commercial.
Complainant alleges that Respondent's bad faith in the registration and use of the Disputed Domain Name is shown by the lack of any disclaimer disclosing Respondent's relationship to Complainant and by his failure to meaningfully respond to Complainant's notice letters regarding this dispute. Complainant alleges that Respondent has actual knowledge of the WILD WEST Marks because he is a reseller of Complainant's services. By registering the Disputed Domain Name for the purpose of making a profit from the Disputed Domain Name and offering a website that confuses users, while it directly competes with Complainant's services, Respondent has satisfied the elements of bad faith outlined in the Policy paragraphs 4(b)(iii) and (iv), which read as follows:
(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [Respondent's] web site or location or of a product.
B. Respondent's contentions
Respondent has chosen not to respond or otherwise contest the allegations of Complainant as set forth in this proceeding.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie,
WIPO Case No. D2000-1772 (April 10, 2001), n. 3.
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has registrations of the WILD WEST Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the WILD WEST Marks. Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
Respondent has chosen not to contest the assertions by Complainant that it has valid registrations of the WILD WEST Marks. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.
Identity or Confusing Similarity
Complainant argues that the Disputed Domain Name is confusingly similar to the WILD WEST Marks, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the dominant features of the WILD WEST Marks with the addition of a non-distinctive term as described above.
Respondent has chosen not to contest the assertions by Complainant that the Disputed Domain Name is confusingly similar to the WILD WEST Marks.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark.
The Panel notes that the entirety of the dominant features of the WILD WEST Marks is included in the Disputed Domain Name.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the WILD WEST Marks pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270 (June 6, 2000).
Despite his relationship with Complainant as a reseller, Respondent has no permission from Complainant for the use of the WILD WEST Marks.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant has sustained its burden of coming forward with proof that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has chosen not to contest the assertions by Complainant that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Registered and Used in Bad Faith.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). Complainant claims that both paragraphs 4(b)(iii) and (iv) of the Policy have been violated by Respondent.
The Policy paragraph 4(b)(iv) sets forth the following criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your [Respondent's] web site or location or of a product
Complainant asserts that it became aware of Respondent's Disputed Domain Name in July 2009. Immediately after discovering the website, Complainant notified Respondent via email that the Disputed Domain Name was infringing one or more of the WILD WEST Marks and was in violation of the Wild West Reseller Agreement. Respondent failed to issue any response to the two notices sent alleging potential infringement of the WILD WEST Marks. Respondent failed to claim any legitimate interest in the Disputed Domain Name.
Complainant further asserts that Respondent was fully aware of the WILD WEST Marks and Complainant's positive reputation as a domain name registrar, when Respondent registered his website through Complainant as registrar and while he served as a Wild West Domains reseller. Respondent's use of the Disputed Domain Name negates any potential claims of rights or legitimate interests.
Respondent has chosen not to contest the assertions by Complaint that he has registered and used the Disputed Domain Name in bad faith.
After a review of the evidence available in this proceeding, the Panel finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Panel concludes (a) that the Disputed Domain Name <wildwidewest.com> is confusingly similar to Complainant's registered WILD WEST Marks, (b) that Respondent has no rights or legitimate interests in the Disputed Domain Name and (c) that Respondent registered and used the Disputed Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <wildwidewest.com> be transferred to Complainant.
Richard W. Page Sole Panelist
Dated: November 11, 2009
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