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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EarthLink, Inc. v. Keith Blatz

Case No. D2007-1288

1. The Parties

The Complainant is EarthLink, Inc., of Atlanta, Georgia, United States of America, represented by The Gigalaw Firm, United States of America.

The Respondent is Keith Blatz, of Raleigh, North Carolina, United States of America.

2. The Domain Names and Registrar

The disputed domain names <earthlinkwifi.com> and <earthlinkwifi.net> (collectively, the “Disputed Domain Names”) are registered with Schlund + Partner AG, (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2007. On September 3, 2007, the Center transmitted to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 5, 2007 the Registrar transmitted to the Center its verification response confirming that 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 7, 2007. In accordance with paragraph 5(a) of the Rules, the due date for a response was September 27, 2007. Respondent did not submit a response. Accordingly, on October 1, 2007, the Center notified the Respondent of its default.

On October 10, 2007, the Center appointed Steven Auvil as the sole panelist in this matter. 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 paragraph 7 of the Rules.

4. Factual Background

Complainant is an Internet Service Provider and the owner of the EARTHLINK mark. Complainant owns numerous trademark registrations and applications in at least six countries or geographic regions that consist of or include the EARLTHINK mark for Internet services, including U.S. Registration No. 2,556,818 registered on April 2, 2002, for the mark: EARTHLINK.

A business unit of Complainant, EarthLink Municipal Networks, formed in October 4, 2005, offers Internet services to municipalities and utilities seeking to build citywide broadband wireless networks, commonly known as “WiFi” or “Wi-Fi” services. Prior to Respondent’s registration of the Disputed Domain Names, Complainant had made numerous public announcements about and had received significant media coverage of its WiFi services. Significant among those announcements and media coverage was a Request for Proposal to the City of San Francisco to build a citywide wireless municipal network, jointly submitted by Google and Complainant on February 21, 2006.

The Disputed Domain Names were registered with the Registrar on February 23, 2006, and February 25, 2006, respectively, just days after the venture between Google and Complainant was announced. Complainant also provided evidence that the Disputed Domain Names both link to web sites containing links to other web sites promoting and/or offering Internet services. This is still the case as of the date of this decision.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends that the Disputed Domain Names are confusingly similar to its EARTHLINK trademarks.

In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, that Respondent was not authorized by Complainant to use the EARTHLINK mark, and that Respondent is using the EARTHLINK mark for commercial gain.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith because Respondent registered and is using the Disputed Domain Names in order to attract Internet users to a web site containing links to other web sites promoting and/or offering third party Internet services.

Complainant is seeking transfer of the Disputed Domain Names to Complainant.

B. Respondent

Respondent did not respond to Complainant’s contentions.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision are governed by the terms of the Policy.

To obtain relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interest in the Disputed Domain Names; and

(3) that the Disputed Domain Names have been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed allegations for which there is support, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Names registered by Respondent are confusingly similar to Complainant’s EARTHLINK mark.

This Panel finds that the Disputed Domain Names are substantially identical or confusingly similar to Complainant’s EARTHLINK word mark because each of them fully incorporates that mark. See, PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Moreover, the addition of the term “wifi” as a suffix to the mark does not obviate the confusing similarity between the Disputed Domain Names and Complainant’s EARTHLINK mark. See, e.g., America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with widely-known mark still found confusingly similar to that mark). Further, the word “wifi” is “associated with Complainant and its business, strengthening rather than weakening the confusing similarity. See, e.g., Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (concluding that when an additional word is “associated with the Complainant and its renowned activities” the additional word strengthens rather than weakens the confusing similarity).

For these reasons, the Panel concludes that both of the Disputed Domain Names are confusingly similar to the EARTHLINK mark, a widely-known trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:

(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;

(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Names. Respondent has not submitted any arguments or evidence in rebuttal.

Nothing in the record suggests that Respondent is commonly known by either of the Disputed Domain Names or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, either of the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. Moreover, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Names without intent for commercial gain to misleadingly divert customers or to tarnish Complainant’s EARTHLINK mark. Indeed, Respondent registered the Disputed Domain Names nearly 12 years after Complainant was founded and established rights in its EARTHLINK mark through extensive trademark use and registration.

Moreover, Complainant provided evidence that the Disputed Domain Names both link to websites containing hyperlinks to other websites promoting and/or offering Internet services. This is still the case as of the date of this decision. Previous WIPO UDRP panels have found that the use of a domain name in connection with an Internet website that merely lists hyperlinks to third party websites, including those offering goods and services that are in direct competition with a complainant’s products, is not a bona fide offering of services and is not a legitimate non-commercial or fair use of the disputed domain name. See, e.g., My Diamond Place, Ltd. v. Domains Ventures, WIPO Case No. D2005-1276 (“Complainant has also provided evidence that the Respondent has directed the disputed domain name to a website offering, among other things, advertising and sponsored links for products and retailers that are in direct competition with the Complainant’s products. The Panel is of the opinion in this case that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.”); Disney Enters., Inc. v. Dot Stop, NAF Case No. FA 145227 (finding that a respondent’s diversionary use of complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods and/or services nor a legitimate noncommercial or fair use of the disputed domain names).

In short, there is no evidence of record from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Names. Comparei Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm” / “JCR co.”, WIPO Case No. D2000-1397 (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant).

For these reasons, in accordance with paragraph 4(a)(ii) of the Policy, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Complainant also argues that Respondent registered and used the Disputed Domain Names in bad faith. The unrebutted evidence in this case demonstrates that Respondent has registered and used, and is presently using, Complainant’s widely recognized EARTHLINK mark in the Disputed Domain Names in bad faith. According to paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s trademark by attracting Internet users to a website for commercial gain. See, e.g., COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082 (finding bad faith where the respondent linked the disputed domain name to another website respecting which the respondent presumably received a portion of the advertising revenue in consideration of directing traffic to that website).

Here, it is apparent from the evidence submitted by Complainant that Respondent has used the Disputed Domain Names to attract Internet customers to a web page offering users an opportunity to click on links to a variety of websites offering, among other things, Internet services. Moreover, the Panel notes that the Disputed Domain Names were registered just days after a significant announcement and media coverage in regard to a response to the City of San Francisco’s Request for Proposal to build a citywide wireless municipal network, jointly submitted by Google and Complainant on February 21, 2006.

The Panel finds, based on the unrebutted evidence, that Respondent registered and used the Disputed Domain Names containing the EARTHLINK mark in bad faith in order to attract traffic to its website for commercial gain. Compare, Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); See also, Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000) (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.”)

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

7. Decision

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 names <earthlinkwifi.com> and <earthlinkwifi.net> be transferred to Complainant.

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Steven Auvil
Sole Panelist

Dated: November 2, 2007