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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GoDaddy.com, Inc. v. Swsnet

Case No. D2007-1352

1. The Parties

The Complainant is GoDaddy.com, Inc, Scottsdale, Arizona, of United States of America.

The Respondent is Swsnet, Dubai, of United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain names <cheaperdaddyreseller.com> and <cheaperdaddy.com> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2007. On September 13, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On September 13, 2007, Wild West Domains, Inc. 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”), 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 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2007.

The Center appointed James A. Barker as the sole panelist in this matter on October 24, 2007. 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

As the Respondent has submitted no Response, the following facts are not contested.

The Complainant owns a number of registered marks on the principal register of the USPTO. These include the marks GO DADDY, GO DADDY SOFTWARE and DADDY, registered in relation to (among other things) “registration, transfer and account management of services for domain names for identification of users on a global computer network”.

The Complainant is also the registrant of a number of domain names, including <godaddyreseller.com>, since January 22, 2005.

The Respondent registered the disputed domain name <cheaperdaddy.com> on March 23, 2007 and <cheaperdaddyreseller.com> on April 30, 2007.

The Complainant provides evidence that, in August, the Respondent’s websites offered for sale domain name registration and other products and services needed for an online presence. The disputed domain names also displayed a distorted image of the main component of the Go Daddy trademarked logo, mainly the Go Daddy Guy head – with an upset expression (the Complainant’s logo is depicted smiling).

The Complainant sent two emails to the Respondent, claiming infringement of its marks, and to notify the Respondent of the agreement between resellers and Wild West Domains not to infringe on any of the Complainant’s trademarks. Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The following contentions are redacted from the Complaint.

The disputed domain names are confusingly similar to the Complainant’s trademarks because they incorporate the dominant feature of the Complainant’s trademarks and add simple words. Additionally, the <cheaperdaddyreseller.com> domain name adds a generic word that describes a component of the Complainant’s service, the reseller program. There can be no doubt that “reseller” joined with the words “Daddy” creates confusing similarity between the disputed domain names and the Complainant’s trademarks.

The Respondent cannot assert any rights or legitimate interest in the disputed domain names. The Respondent is a reseller of the Complainant’s products. The disputed domain names are used for the reseller site to directly compete with the Complainant. The disputed domain names imply the Respondent offers cheaper products than the Complainant. The Respondent has no ability to demonstrate the use of the disputed domain names in connection with either a bona fide offering of good or a noncommercial use.

Likewise, the Respondent cannot contend their reseller business is commonly known by the disputed domain names. The Respondent did not register the disputed domain names until becoming a reseller. As such, the Respondent was fully aware of the Complainant’s trademarks and the Complainant’s solid reputation as a domain name registrar. The Respondent purposely chose the disputed domain names because of the inference that the sites may offer cheaper products than the Complainant or other resellers. Respondent’s use of the disputed domain names negates any claims of rights or legitimate interests.

The registration of the disputed domain names for the purpose of reselling the Complainant’s products demonstrates the Respondent registered the names primarily for the purpose of disrupting the business of its competitor, the Complainant. Such action meets the elements of the Policy, paragraph 4(b)(iii).

The Respondent’s use of the “Daddy” name together with the modified Go Daddy logo reveals the Respondent’s objective to intentionally attract users, for commercial gain, to Respondent’s reseller websites. Furthermore, the Respondent’s alteration of the Go Daddy logo evidences the clear intention of Respondent to confuse users as to the source and affiliation of the Respondent’s directly competing websites. The Respondent’s bad faith objectives are directly in violation of the Policy, paragraph 4(b)(iv).

B. Respondent

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

6. Discussion and Findings

The Complaint has the burden of proving all of the following, if it is to succeed, under paragraph 4(a) of the Policy:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names were registered in bad faith and are being used in bad faith.

Each of these three elements is discussed in turn below.

A. Identical or Confusingly Similar

The Complainant clearly has rights in a trademark – which paragraph 4(a)(i) of the Policy requires it to demonstrate as a first step.

The other element of this first step is that the Complainant must demonstrate that the disputed domain names are identical or confusingly similar to one of the marks in which it has rights. The disputed domain names are self-evidently not identical to the Complainant’s marks. The question then is whether they are confusingly similar. The test for this purpose is an objective one. Confusing similarity is assessed on a side-by-side comparison of the dominant textual element of the Complainant’s marks, with the disputed domain names.

The disputed domain names both incorporate the central element of the Complainant’s marks: the word “daddy”. They also incorporate the generic terms “reseller” and “cheaper”.

The Complainant’s DADDY mark obviously comprises a common and generic term, although it is apparently arbitrary and distinctive when used as a mark in connection with the offering of registrar services by the Complainant. The Complainant refers to a number of previous cases under the Policy, which found that the addition of a generic term to a mark is not sufficient to avoid a finding of confusing similarity. (For example, the Complainant refers to Hammond Suddards Edge v. Westwood Guardian Ltd., WIPO Case No. D2000-1235; WestJet Air Ctr., Inc. v. W. Jets LLC, NAF Case No. FA 96882.) But it is arguable that those cases concerned marks, including a combined mark, that were more distinctive than the textual component of the Complainant’s mark in this case (the word “Daddy”). As determined in those cases, the combination of a common, generic term, with a sufficiently distinctive mark, is unlikely to distinguish the domain name from the mark.

However, panels have found that the same principle does not necessarily extend to the addition of a common, generic term to a mark which itself contains a common, generic term, unless the mark is distinguishable as such. See, for example, Digital City, Inc. v. Smalldomain, WIPO Case No. D2000-1283; Virgin Enterprises Limited v. Internet Domains, WIPO Case No. D2001-1008; Grand Bay Management Company v. Allegory Investments, WIPO Case No. D2001-0874. The first two cases involved the addition of a generic noun to a mark which also comprised a generic noun. The latter case involved the addition of a noun to a mark which, in its context, the panel found was adjectival. All of these cases were decided in favor of the respondents.

The latter case involved the disputed domain name <casinograndbay.com>. Essentially, the panel found that the word “casino” directed the mind to a specific activity, and was the main focus of the domain name. The terms comprising the complainant’s mark (“Grand Bay”) were merely descriptive, and essentially adjectival. And so, the panel found in the then respondent’s favor.

For similar reasons in that case¹, the Panel in this case makes a finding for the Complainant. This is for the following reasons.

Both the terms “cheaper” and “reseller”, as incorporated in the disputed domain names, are used adjectivally with the term “daddy”. The use of those terms as adjectives naturally directs attention at the noun “daddy”, which they modify. (And it is evident that this was the Respondent’s intention.)

Further, those particular adjectives are readily associated with the Complainant. The term ‘reseller’ has a particular association with the Complainant’s business. The Complainant operates a reseller scheme. The Respondent, among others, is a reseller of the Complainant’s products (particularly domain names) under the Complainant’s reseller program. The term ‘cheaper’ is a simple generic word, which does little to distinguish the Complainant’s mark. It is a term that might naturally be associated with the Complainant’s business. And it does not appear to the Panel that the term ‘daddy’ would commonly or naturally be associated with a business. In this context, the addition of these words serves to increase the likelihood of confusion with the Complainant’s mark.

The Complainant also operates in a defined and particular market – the market concerning the sale of domain names. While it may not seem likely that Internet users at large would be confused by the disputed domain names, it does seem more likely that users in the market in which the Complainant operates would be confused. This is because it seems to the Panel that (although the Complainant did not provide substantial evidence of it) the Complainant is relatively well-known in its field. The Policy does not require a finding that the disputed domain names would be confusing to the world at large. It is enough if there is a likelihood of confusion in a particular market. (Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112.)

Finally, although it is not determinative, it is relevant that the Respondent has submitted no response, nor made any other communication in connection with this case. As such, the Complainant’s arguments on this ground (as with the others) have not been contested. While this does not of course discharge the Complainant from proving its case, it does mean that the Complainant’s case is relatively stronger.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent uses the disputed domain names in connection with websites that directly compete with the Complainant. The Respondent is a reseller of the Complainant’s products. In certain circumstances, the majority of previous panels have found that a reseller may use a complainant’s trademark in a domain name. Those circumstances relevantly include that the Respondent uses its site to sell only the trademarked goods and the site accurately discloses the registrant’s relationship with the trademark owner. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, item 2.3.) These circumstances are not present in this case. The ‘goods’ (domain name registrations, and related services) are by nature not ‘trademarked’, in the sense that the mark is either applied to them or used in connection with them. Neither does the Respondent’s website disclose its relationship with the Complainant.

Paragraph 4(c) of the Policy describes other circumstances in which a Respondent might demonstrate a right or legitimate interest. However, the Respondent has demonstrated none of them.

The Complainant has set out a prima facie case which the Respondent has declined to answer. In these circumstances, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The essence of bad faith is that the Respondent knew of the Complainant’s mark when it registered the disputed domain names, and sought to exploit that mark or otherwise seek an unfair advantage by registering a confusingly similar domain name. The evidence in this case clearly points in this direction.

As noted above, the disputed domain names are, on balance, likely to be confusingly similar to the Complainant’s mark, at least in the market in which both the Complainant and Respondent operate. It is also clear that the Respondent registered and has used them to promote its own role as a reseller. As a reseller of the Complainant’s products, the Respondent was obviously aware of the Complainant’s mark. The evidence of the Respondent’s website suggests that it consciously chose the disputed domain names because of their potential association with the Complainant, and sought to commercially benefit from that association.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

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, <cheaperdaddy.com> and <cheaperdaddyreseller.com>, be transferred to the Complainant.

James A. Barker
Sole Panelist

Dated: November 7, 2007