|Entscheider||Barker, Sir Ian|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verio Inc. v Sunshinehh
Case No. D2003-0255
1. The Parties
The Complainant is Verio Inc. a Delaware corporation, Colorado, United States of America. It is represented by Mr. Peter F. Weinberg of Gibson Dunn & Crutcher, LLP of Denver, Colorado, United States of America.
The Respondent is Sunshinehh, China.
2. The Domain Name and Registrar
The disputed domain name <1verio.com> is registered with Network Solutions, Inc, ("the Registrar"). It was registered on January 20, 2003.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 3, 2003. On April 4, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name at issue. On April 2003, 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 for the administrative, billing and technical contact. The Center verified that the Complainant 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 May 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was May 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on May 26, 2003. An earlier notification to the Respondent on April 9, 2003, might not have been correctly sent to the Respondent. Accordingly, the Complaint was correctly resent on May 2, 2003.
The Center appointed the Honourable Sir Ian Barker QC as the Sole Panelist in this matter on June 19, 2003. 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 trademarks for the word VERIO. Complainant provides web hosting, Internet access, data centers and related Internet services, in the United States and throughout the world. Its trademarks are registered by United Sates, the United Kingdom, European Community, Japan and various Latin American countries. It has trademark applications pending in other countries. It also owns domain name registrations incorporating the word Verio.
The website hosted at <1verio.com> is targeted toward United States customers. The website includes "testimonials" from people in the United States, and provides contact information by telephone and fax to United States (New Jersey) area codes.
5. Parties Contentions
The disputed domain name is confusingly similar to the mark VERIO. VERIO is widely recognised in the marketplace. VERIO is conceptually strong because it is a coined word it was invented by Complainant and has no meaning other than to identify its services. VERIO has no dictionary definition.
VERIO is the dominant portion of the disputed domain name, <1verio.com>. The numeral "1" has no particular distinctiveness, especially when combined with a coined term such as VERIO. The dominant portion of the domain name is thus identical to the trademark VERIO.
The addition of "1" is especially insignificant in this case because Complainant uses its VERIO mark in combination with other terms to create combined marks. For example Complainant is the owner of United States Registration No. 2,665,508 for the mark VIAVERIO. In the unlikely event that anyone believes the "1" in <1verio.com> is significant, he/she will assume that it is another combined mark created by Complainant.
Previous WIPO decisions have found confusing similarity in similar cases, even where the trademark and disputed domain name were not as close as in the present case. See (Yahoo Inc. v. Internet Entertainment Group, D2000-1595) (<yahomo.com> confusingly similar to Yahoo!).
No Legitimate Interest in Respect of Domain Name
Respondent does not use the domain name in connection with a bona fide offering of goods or services. Respondent maintains a website at <1verio.com>, which advertises a dubious medicinal product. The website does not mention <1verio.com> anywhere at all; hence the domain name is not used in the offering of goods and services. The identical website is hosted at other domain names, such as <healthylivingforever.com>. The repetition of advertisements at a number of different websites cannot be evidence of bona fide offering of goods or services, otherwise any cybersquatter could easily avoid violating the UDRP by placing such advertisements at any domain name.
Further, the website may be illegal because it seems to indicate that the website owner is selling Human Growth Hormone (HGH), although that is not exactly clear. HGH is only available via prescription, and selling it without prescription is punishable under United States law. Apparently, these products are offered on the website for sale without prescription.
The Whois information shows that Respondent is not commonly known by 1verio or 1verio.com. Respondents use of <1verio.com> does not raise any issues of legitimate non-commercial or fair use.
Respondents bad faith registration and use of the disputed domain name is evidenced by (a) its providing false contact information therefore violating the UDRP; (b) failing to respond to Complainant after Complainant raised a legitimate dispute; and (c) offering a product that is possibly illegal.
The information Respondent provided to the registrar when it registered the disputed domain name is absurd on its face. The only name listed as the registrant, administrative contact, and technical contact is "sunshinehh." According to a nationwide telephone search, there is no "sunshinehh." The only mailing address provided is even worse: It is not even possible to attempt to construe it as a legitimate address. The only email address provided, firstname.lastname@example.org, is not operative, and attempts to send email to it bounce back.
Providing false contact information violates the Policy. See UDRP Section 2 ("you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate"). It also is evidence of bad faith under United States law. The United States Anticybersquatting Consumer Protection Act recognises that providing false contact information shows bad faith. United States law should apply to this dispute. Further, previous arbitration decisions have found that providing false identification information is evidence of bad faith. Carfax, Inc. d/b/a Carfax v. Auto Check USA, WIPO Case No. D2001-0929. Here, Respondents blatantly false information not only shows bad faith, it also shows a contempt for the UDRP and the entire domain name registration system.
Respondent has not offered any explanation for its activities, despite Complainants efforts to reach it by any means possible. Respondents Whois data does not provide any means of communication. Complainant has attempted to reach Respondent via the email address, telephone number, and fax number appearing on its website. If Respondent had any justification for the registering or using the disputed domain name, it could have provided it, thereby avoiding the risk and expense of this proceeding or other legal action.
Respondent appears to be using the domain name to advertise a deceptive, and perhaps illegal, product. It is not suggested that the Panel needs to determine if the product offered on Respondents website (Ultimate HGH 1000) is legal. Nevertheless, it is proper to notice the totality of the circumstances: Respondent is offering a medical product that makes extraordinary health claims on a website with false Whois information, appears to offer a product that can only be sold legally via prescription, and does not respond to legitimate inquiries.
Respondent has filed no response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- that 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
- that the Respondent has no legitimate rights or interests in respect of the domain names; and
- that the domain names have been registered and is being used by the Respondent in bad faith.
Identical or Confusingly Similar
The disputed domain name is clearly confusingly similar to the Complainants registered trademarks. The insertion of the numeral 1 before the trademark adds little. It could be an indication to the Internet browser that this is the first of a number of sites connected with the Complainant.
Legitimate Rights & Interest
The Complainant gave the Respondent no legitimate rights or interests in respect of the domain name. The fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, could demonstrate a Respondents rights or legitimate interests to a domain name. None of these has been demonstrated. The second criterion is therefore proved. The Respondent sells goods on a website accessed by the disputed domain name.
Bad Faith Registration
As to bad faith registration and use, the Panel considers this criterion proved for the reasons set out in the Complainants submissions, most of which the Panel accepts. The Respondent is elusive. It has not replied to the Complainants correspondence. It offers dubiously legal goods on a website accessed by the disputed domain name.
The facts that the Complainant has no trademark registration in China (where the Respondent may be domiciled) and has given no evidence of a business presence in that country is no help to the Respondent in this case. In some WIPO decisions, the lack of any presence by the Complainant in a distant country where a Respondent is situated can make an inference of bad faith registration difficult. However, the Respondent has shown awareness of the Complainants United States origins by its use of a website which is clearly aimed at United States Internet users. The alleged testimonials from United States citizens and a New Jersey telephone number all reinforce the inference of bad faith registration and use of the disputed domain name by the Respondent.
Finally, it should be noted that counsel for the Complainant submitted that this case should be determined under United States law. That is not correct. The case can only be determined under the terms of the Policy. National systems of law can be prayed in aid when, for example, questions of trademark law arise. Such systems can provide analogies applicable to a current situation. This present case is perfectly able to be decided under the terms of the Policy without reference to any national system of law.
For the foregoing reasons, the Panel decides:
(a) That the domain name <1verio.com> is confusingly similar to the trademark to which the Complainants has rights; and
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <1verio.com> be transferred to the Complainants.
Hon. Sir Ian Barker QC
Dated: June 24, 2003