WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

New Dream Network, LLC v. Basit Lodhi

Case No. D2013-0718

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 Basit Lodhi of Karachi, Sindh, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <deemhost.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2013. On April 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 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 April 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2013.

The Center appointed Daniel Kraus as the sole panelist in this matter on June 4, 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.

On June 21, 2013, the Center informed the parties that, due to exceptional circumstances, it had been necessary for the Panel to extend the due date for the decision to June 25, 2013, in accordance with its general powers UDRP Rules 10.

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.

According to <webhosting.info>, Complainant’s DREAMHOST service is now the 10th largest website hosting company in the world, with over 1.2 million domain names hosted.

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 Respondent’s disputed domain name <deemhost.com> is confusingly similar to Complainant’s DREAMHOST trademark and “DreamHost” name because they incorporate Complainant’s trademark almost exactly, and are nearly identical in sight and sound to Complainant’s trademark. That trademark is registered as a trademark in the United States of America, Europe (Community Trademark registration), Canada, Australia, and New Zealand. Copies of those registrations are attached as Annexes 2-7.

The Respondent’s disputed domain name <deemhost.com> is confusingly similar to Complainant’s domain for the additional reason that it is only two letters removed from Complainant’s disputed domain name <deemhost.com>, and offers and/or advertises the same services as offered by Complainant, namely, website hosting and domain name registration.

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

According to the WhoIs information the disputed domain name <deemhost.com> , was registered for the first time on March 6, 2012, which was long after Complainant had built a successful reputation for its domain name registration business at its domain <dreamhost.com>, and long after Complainant had registered its DREAMHOST trademark in the English speaking jurisdictions of the United States of America, Europe, and Canada.

The Respondent’s website is written in fractured English, full of grammatical errors, meaning that English is not the author’s first language, and that the domain owner has therefore specifically and intentionally targeted English speaking countries for attracting customers.

It would be difficult to imagine that the Respondent registered the disputed domain name <deemhost.com> in 2012, and put up an English language website offering website hosting services, being completely unaware of Complainant’s approximately 15-year old and highly successful English language website hosting and domain name registration business at <dreamhost.com>.

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

According to the Complainant, the Respondent chose a color scheme for its competing website that is nearly identical to the color scheme used by the Complainant. The acts described constitute intentionally an attempt to attract, for commercial gain, Internet customers to the Respondent’s website by creating a likelihood of confusion with the disputed domain name <deemhost.com> and the DREAMHOST trademark, and generating revenue by trading on the fame of the Complainant’s DREAMHOST service. service.

As additional evidence of the Respondent’s bad faith in registering and using the disputed domain name , the Complainant contends that the Respondent registered another domain, <globalcouri.com>, which has been identified as being a “fraudulent website” used to conduct an Internet scam. In sum, according to the Complainant, the Respondent is an Internet criminal using the Internet to conduct fraud rather than a legitimate enterprise, the disputed domain name <deemhost.com> representing merely one of its deceptive businesses.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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 however, the disputed domain name does not incorporate in its entirety the Complainant’s well-known registered trademark DREAMHOST. The domain name is shorter by one letter, an “r” missing and an “a” being replaced by an “e”. The second part of the word (“host”) is however the same and the phonetic pronunciation is, in this Panel’s view, confusingly similar. Besides, the colors and the presentation of the Respondent’s website to which leads the disputed domain name have been copied from the colors and presentation of the Complainant’s website. These circumstances, in the view of the Panel, are 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 change of letters may have been undertaken 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 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 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 confusingly similar to 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.

Besides, in the absence of any explanation to the contrary by the Respondent, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name, which is confusingly similar to 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 <deemhost.com> be transferred to the Complainant.

Daniel Kraus
Sole Panelist
Date: June 25, 2013