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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Go Daddy Group, Inc. v. GlowHost.com, Inc.

Case No. D2009-0055

1. The Parties

The Complainant is The Go Daddy Group, Inc. of Scottsdale, Arizona, United States of America, internally represented.

The Respondent is GlowHost.com, Inc. of Stuart, Florida, United States, internally represented.

2. The Domain Name and Registrar

The disputed domain name <websitetonight.net> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 15, 2009 by email and on January 20 in hardcopy. On January 16, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On January 16 and 18, 2009, 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. On January 24, 2009, the Complainant filed with the Center an amendment to the Complaint.¹ The Center verified that the Complaint together with the amendment to 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 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2009. The Respondent filed a Response on February 17, 2009.

On January 29, 2009, the Complainant transmitted to the Center a request to file a supplemental filing. The Center acknowledged receipt of the Complainant`s request on January 30, 2009 and informed the Parties that consideration and/or admission of any supplemental filing, and/or any procedural steps that may be required as a result thereof, was at the sole discretion of the Panel, pursuant to paragraph 12 and general powers under paragraph 10 of the Rules.²

The Center appointed William R. Towns as the sole panelist in this matter on March 3, 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

The Complainant is the owner of a United States trademark registration for WEBSITE TONIGHT, issued by the United States Patent and Trademark Office (USPTO) on September 14, 2004, based on an application filed by the Complainant on October 7, 2003. The WEBSITE TONIGHT mark is used in connection with an Internet-based website creation tool that can be used to "click and build" a website with no knowledge of HTML required. The Complainant claims to have used the mark since as early as May 7, 2003. The Complainant also has submitted evidence of the registration of the corresponding domain name <websitetonight.com> on May 5, 2003, by Starfield Technologies, Inc. The Complainant is the parent company of Starfield Technologies, Inc.

The Complainant also is the parent company of the ICANN accredited registrars GoDaddy.com, Inc. and Wild West Domains, Inc., the latter being the involved registrar in this case. The Complainant through its affiliate Wild West Domains maintains a program for resellers of the Complainant`s products and services ("Go Daddy products"), including WEBSITE TONIGHT online website creation tools. Pursuant to a reseller agreement (the "Reseller Agreement"), participating resellers receive commissions for sales of Go Daddy products. The Reseller Agreement also contains general provisions including, among other things, the terms and conditions under which resellers may use the Complainant`s trademarks and product names.

The Respondent is a reseller of Go Daddy products under the Complainant`s Reseller Program. The Respondent is identified in current WhoIs records as the registrant of the disputed domain name <websitetonight.net>, which resolves to a website entitled "Website Tonight, the Official online web site builder that includes hosting and email". The Respondent`s website offers WEBSITE TONIGHT products, as well as domain name registration services, web hosting, and other related services.

The Complainant provided notice of this dispute to the Respondent by email on October 15, 2007, asserting that the Respondent`s use of the disputed domain name infringed on the Complainant`s rights in the WEBSITE TONIGHT mark. The Respondent replied to the Complainant, disputing the charge of infringement, and representing that a Wild West Domains representative, contacted at the time the Respondent`s reseller account was established, indicated that the use of the domain name would not be a problem. In addition, the Respondent represented that the disputed domain name had been registered for use with its reseller account prior in time to the Complainant`s registration of the WEBSITE TONIGHT mark.

According to the registrar`s current WhoIs database, the disputed domain name was created on August 9, 2007. It is asserted in the Complaint that the Respondent registered the domain name and joined the Complainant`s Reseller Program at that time. However, the Respondent has submitted a cache of historical WhoIs records maintained by Domain Tools, which reflect that the Respondent was the domain name registrant prior to August 9, 2007, and possibly as far back as May 21, 2003. The Panel has accessed historical records of the Respondent`s website on the Internet Archive ("www.archive.org"), which date back as far as July 2003.

5. Parties` Contentions

A. Complainant

The Complainant maintains that the disputed domain name is identical or confusingly similar to its WEBSITE TONIGHT mark, in which the Complainant asserts rights based on its registration with the USPTO on September 14, 2004, and use in commerce since as early as May 7, 2003. According to the Complainant, the Respondent registered the disputed domain name on August 9, 2007, and at that time became a reseller of the Complainant`s products and services.

The Complainant denies that the Respondent has rights or legitimate interests in the disputed domain name. The Complainant asserts that the Complainant`s Reseller Agreement does not permit the use of domain names appropriating the Complainant`s trademarks, and that the Respondent is making an unauthorized and infringing use of the dispute domain name to compete directly with the Complainant and its affiliates in the offering of Go Daddy products, including WEBSITE TONIGHT products. The Complainant asserts that such use does not constitute a bona fide use under the Policy, and that the Respondent is not making any legitimate noncommercial or fair use of the domain name.

The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent, as a reseller of Go Daddy products, had knowledge of the Complainant`s WEBSITE TONIGHT mark. The Complainant asserts that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant`s business, and is using the disputed domain name intentionally to attract Internet users, for commercial gain, to the Respondent`s website.

B. Respondent

The Respondent asserts that it originally registered the disputed domain name on May 21, 2003 for use as a reseller of Go Daddy products. According to the Respondent, a Go Daddy account representative verbally indicated that the Respondent`s registration of the domain name would not be a problem. The Respondent does not recall the identity of the Go Daddy account representative.

The Respondent maintains that it has rights or legitimate interests in the disputed domain name by virtue of its registration prior in time to the Complainant`s trademark registration of WEBSITE TONIGHT. The Respondent denies that it is in direct competition with the Complainant, and instead argues that it is generating substantial income for the Complainant. According to the Respondent, no actual sales are made on its website. Further, the Respondent maintains that no misrepresentations are made on the Respondent`s website regarding the source of the WEBSITE TONIGHT products. The Respondent claims that it has invested significant capital and "sweat equity" into the <websitetonight.net> domain name.

The Respondent denies any bad faith, and claims to have had no knowledge of the Complainant`s rights in the WEBSITE TONIGHT mark prior to receiving notice of the dispute from the Complainant on October 15, 2007. The Respondent denies registering the disputed domain name in order to sell it, to prevent the Complainant from registering a domain name reflecting it mark, or to create confusion with the Complainant`s mark as to the source, sponsorship, affiliation or endorsement of the Respondent`s website.

The Respondent asserts that it has never sold any products not directly offered by the Complainant to its resellers. Further, the Respondent maintains that most if not all of the Complainant`s resellers engage in similar usages and practices regarding the Complainant`s WEBSITE TONIGHT mark, including but not limited to confusingly similar domain names. The Respondent asserts that it is the only reseller to have registered and used such a domain name prior to the Complainant`s registration of the WEBSITE TONIGHT mark.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the domain name <websitetonight.net> is identical to the Complainant`s WEBSITE TONIGHT mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The addition of the gTLD .net is not material to the question of identity or confusing similarity. Id.

The Complainant has established rights in the WEBSITE TONIGHT mark. At a minimum, the Complainant`s mark is entitled to a presumption of validity by virtue of its registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Paragraph 4(a)(i) embodies no requirement that a complainant`s trademark rights must have arisen before the disputed domain name was registered. It is the consensus view of WIPO Panelists that a complainant can have rights in a trademark or service mark even where those rights first arose after the registration of the disputed domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. Iogen, WIPO Case No. D2003-0544; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The Complainant maintains that the Respondent is not authorized under the Reseller Agreement to register a domain name reflecting the Complainant`s WEBSITE TONIGHT mark. Nevertheless, the record reflects the Respondent`s registration of a domain name that is identical to the Complainant`s mark, and use of the domain name to attract Internet users to the Respondent`s website, where Go Daddy products including WEBSITE TONIGHT products are offered, with no disclosure that the Respondent is a reseller of the Complainant`s products.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent`s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Panel has found nothing in the Reseller Agreement provided by the Complainant that authorizes the Respondent to appropriate the Complainant`s mark for use as a domain name. While earlier versions of the Reseller Agreement have not been provided, at least one panel has reached this same conclusion based on the Reseller Agreement that presumably would have been in effect at or near the time the Respondent alleges it initially registered the disputed domain name. See Go Daddy Software, Inc. v. Hostnut.com, Inc., WIPO Case No. D2004-0981.

The Respondent`s unsubstantiated claim that a Go Daddy account representative saw no problem with the Respondent`s registration of the disputed domain name is not a sufficient predicate on which to base a claim of rights or legitimate interests under paragraph 4(c) of the Policy. To the contrary, based on the criteria set out for distributors or resellers of trademarked products set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Respondent has failed to demonstrate use or demonstrable preparations prior to notice of this dispute to use the disputed domain name in connection with a bona fide offering of goods or services. The Oki Data panel observed that the following circumstances must be present in order for an offering of goods or services to be bona fide for purposes of paragraph 4(c)(i):

(i) the respondent must actually be offering the Complainant`s goods or services at issue. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.

(ii) the respondent must use the site to sell only the trademarked goods: otherwise it could be using the trademark to bait other Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774. (Use of Nikon-related domain names to sell Nikon and competitive cameras was not a legitimate use);

(iii) the site must accurately disclose the registrant`s relationship with the trademark owner. See R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official United States website for Quaife.)

(iv) the respondent must not be allowed to corner the market in domain names that reflect the trade mark.

It is evident from even a cursory glance at the Respondent`s website that the third criterion of Oki Data has not been met. The Respondent`s website does not in any manner disclose the Respondent`s relationship with the Complainant, and the circumstances of the Respondent`s use of the disputed domain name with a website offering Go Daddy products would likely create confusion as to whether the website is owned or operated by the Complainant. Such consumer confusion more likely than not would be exacerbated by the title of the Respondent`s website: "Website Tonight, the Official online web site builder that includes hosting and email".

There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. Further, under the circumstances of this case, the Respondent cannot credibly claim to be making a legitimate noncommercial or fair use of the domain name within the contemplation of paragraph 4(c)(iii) of the Policy. See Covanta Energy Corporation v. Anthony Mitchell, WIPO Case No. D2007-0185 (respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy).

To the extent that the Respondent claims rights or legitimate interests based on the registration or use of the disputed domain name prior in time to the Complainant`s registration of its WEBSITE TONIGHT mark, the record reflects that the Respondent clearly was aware of the Complainant when it registered the disputed domain name. Further, as discussed in the following section, the Panel is persuaded by the circumstances surrounding the domain name registration that the Respondent`s aim was to take advantage of the Complainant`s existing or prospective rights in the WEBSITE TONIGHT mark. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent`s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the respondent`s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is "to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another". Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

There is evidence in the record of the Respondent`s registration of the disputed domain name as early as May 21, 2003, and as noted earlier, records of the Respondent`s website can be found on the Internet Archive dating back as far as July 2003. As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name would not be in bad faith. In certain situations, however, when the respondent is aware of the complainant and the circumstances indicate that the aim of the registration was to take advantage of potential complainant rights, bad faith can be found. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, supra.

In this instance, the Respondent registered the disputed domain name for use as a reseller of Go Daddy products. It is clear that the Respondent was aware that one of these products was the website creation tool being marketed by the Complainant under the WEBSITE TONIGHT designation. The Panel is persuaded from the record that the Respondent is sufficiently familiar with product branding to have appreciated that the Complainant was then using or intended to use WEBSITE TONIGHT as a trademark for this product. It may be fairly inferred from surrounding circumstances that the Respondent registered the disputed domain name in order to exploit and profit from the Complainant`s rights or prospective rights in the WEBSITE TONIGHT mark, as a means of diverting Internet users to the Respondent`s website.

The Panel finds that the Respondent`s registration of the disputed domain name with knowledge of the Complainant`s rights or prospective rights in the WEBSITE TONIGHT mark is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551. The Panel rejects the Respondent`s claim not to have been aware of the Complainant`s rights in the WEBSITE TONIGHT mark until receiving notice of this dispute in October 2007 as pretextual. The Respondent`s deliberate appropriation of the Complainant`s mark for use as a domain name with the Respondent`s website, and the Respondent failure to accurately disclose its relationship to the Complainant, are further indications of bad faith.

In view of the foregoing, and based on the totality of circumstances in the record, the Panel concludes that the Respondent registered the disputed domain name in a bad faith attempt to exploit and profit from the Complainant`s rights in the mark. The Panel further concludes that the Respondent has used the domain name in bad faith in an intentional attempt to attract Internet users to the Respondent`s website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name <websitetonight.net> be transferred to the Complainant.

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Willam R. Towns
Sole Panelist

Dated: March 17, 2009

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¹ The Complaint initially named Matt Lundstrom as the Respondent. Mr. Lundstrom is shown as the Respondent`s administrative contact in the registrar`s WhoIs records.

² The Complainant`s supplemental submission consists of a replacement for Annex 4 to the Complaint, which is a WhoIs printout for the domain name <websitetonight.com>, and the Wild West Reseller Agreement, identified in the Complaint as Annex 6 but inadvertently omitted. Both are accessible online. The Complainant also provided an optional email address for the Respondent.