WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

New Dream Network, LLC v. Chen Tianyi

Case No. D2013-0077

1. The Parties

The Complainant is New Dream Network, LLC of Brea, California, United States of America, represented by Intellectual Property Law Offices of Joel Voelzke, APC, United States of America.

The Respondent is Chen Tianyi of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <dreamyhost.com> is registered with Threadbot.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2013. On January 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2013, 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”).

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 January 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2013.

The Center appointed Ian Blackshaw as the sole panelist in this matter on February 21, 2013. 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 has been in the website hosting business since about 1997, and has built a large and successful website hosting and domain name registration business, under the service name of “DreamHost”, which is located on the Internet at “www.dreamhost.com”.

The Complainant’s has registered the name DREAMHOST as a trademark in the United States, Europe, as a Community Trade Mark registration, Canada, Australia, and New Zealand.

Copies of these registrations have been provided to the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed domain name is confusingly similar to the Complainant’s trademark DREAMHOST, because it incorporates the Complainant’s trademark almost exactly, and is nearly identical in sight, sound, and meaning to the Complainant’s trademark.

The disputed domain name is confusingly similar to the Complainant’s trademark DREAMHOST for the additional reason that it is only a single letter namely, “y” which is added to the Complainant’s trademark and also offers and/or advertises the same services as those offered by the Complainant.

ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name

According to the website “www.webhosting.info”, the Complainant’s services offered under its registered trademark DREAMHOST is now the 10th largest website hosting company in the world, with over 1.2 million domains hosted. Evidence of this has been provided to the Panel.

According to the WhoIs information for the disputed domain name, the disputed domain name was registered for the first time on September 24, 2012, of which, again, evidence has been provided to the Panel. Such registration was long after the Complainant had built a successful domain name registration business at its domain name <dreamhost.com>.

The Respondent has “parked” the disputed domain name and is, apparently, generating “pay per click” revenue by advertising website hosting services of the Complainant’s competitors, and other related services, for example, cloud and co-location services. Evidence of this has also been provided to the Panel.

It is contended by the Complainant that it would be difficult to imagine that the Respondent registered the disputed domain name in 2012, and put up an English language website either directly or through domain parking that advertises the website hosting, being completely unaware of the Complainant’s approximately 15-year old and highly successful website hosting and domain name registration business and services at “www.dreamhost.com”.

Furthermore, the Respondent’s page at the website of the disputed domain name includes what would appear to be links to particular website hosting companies including “Yahoo WebHosting,” and to “Dreamhost” which is the Complainant’s service. However, clicking on the “Dreamhost” link does not direct a user to the Complainant’s website or other related site. Rather, clicking on the “Dreamhost” link brings the user back to simply a refreshed version of the same home page at the website comprising the disputed domain name, but, this time, with no mention of “Dreamhost.” Again, evidence of this has been provided in the case file to the Panel.

iii. The disputed domain name was registered and is being used in bad faith

The acts described in paragraph ii above constitute an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the <dreamhost.com> domain name and the DREAMHOST registered trademark, and generating revenue by trading on the fame of the Complainant’s services offered under its registered trademark DREAMHOST.

Registering and parking a domain that incorporates another’s famous name or trademark constitutes bad faith registration and use of that domain. See HillaryRodham Clinton v. Michele Dinoia a/k/a SZK.com, NAF Claim No. FA0502000414641 (Nat. Arb.Forum March 18, 2005); Atlanta Lawn Tennis Association, Inc. v. Modern WebDevelopment, NAF Claim No. FA0310000203203 (Nat. Arb. Forum December 1, 2003) (use of another’s trademark to gather traffic to a generic search engine constitutes bad faith registration); Webadviso v. Bank of America, 93 U.S.P.Q.2d 1932, 1933-34 (S.D.N.Y. 2010) (granting summary judgment to declaratory judgment (DJ) defendant in cybersquatting case where the DJ plaintiff was a “domainer” who parked the domains <bofaml.com> and <mlbofa.com> into domain name parking services; DJ defendant was likely to succeed on its cybersquatting counter claim; DJ plaintiff was not entitled to discovery because it had shown nothing to indicate that discovery would change the outcome of the case).

Furthermore, the Respondent’s above-described use on his website of the Complainant’s DREAMHOST registered trademark, including a link labeled “Dreamhost”, which does not actually take the user to the Complainant’s “www.dreamhost.com” website, but instead takes the user to more advertising by the Complainant’s competitors, constitutes a trademark infringement and also a clear attempt to divert Internet users, who are attempting to reach the Complainant’s services, to a competing service for the purpose of generating monetary gain for the Respondent.

As additional evidence of the Respondent’s bad faith in registering the disputed domain name, the Respondent has engaged in serial and systematic “typosquatting” and/or “cybersquatting” acts with respect to other domain names and famous trademarks for financial gain. According to the reverse WhoIs search results included in the case file, the Respondent has registered at least 156 domain names, including the following domain names, which are listed next to the domain name of the corresponding legitimate commercial website or famous trademark.

Other “typosquatting” or “cybersquatting” committed by the Respondent using the email address “[…]@yahoo.com”:

Domain names registered by the Respondent corresponding to a third-party trademark owner:

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(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 has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates virtually in its entirety the Complainant’s well-known registered trademark DREAMHOST, save and except the addition of the letter “y” between the word “dream” and the word “host”. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information for the Complainant and its services marketed under its well-known registered trademark DREAMHOST.

Furthermore, in the view of the Panel, the addition of the said letter “y” in the disputed domain name, as mentioned above, does not provide any distinguishing feature for trademark purposes. But may have been included intentionally for so-called “typosquatting” purposes with the aim of misleading consumers and Internet users who are seeking information about the Complainant and its services.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known registered trademark DREAMHOST, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and commercial use of the same prior to the registration by the Complainant of the disputed domain name.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known registered trademark DREAMHOST. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known trademark DREAMHOST, which the Panel considers was not by chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services. Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known registered trademark DREAMHOST and also the valuable goodwill that the Complainant has established in this trademark through prior commercial use, as evidenced above, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name and using it to offer hosting services of competitors of the Complainant, is trading unfairly on the Complainant’s valuable goodwill established in its well-known registered trademark DREAMHOST.

By registering and using the disputed domain name incorporating the well-known registered trademark DREAMHOST, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name, which incorporates the Complainant’s well-known registered trademark DREAMHOST, by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant’s trademark and its services in the field of web hosting over a prior period of time.

Also, the Panel finds that the Respondent’s use of the disputed domain name by redirecting Internet users interested in the Complainant’s services to its own website for presumed commercial gain (as mentioned by the Complainant above), not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dreamyhost.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: February 23, 2013