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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kayak Software Corporation v. Stanley Pace and Micah Smurthwaite

Case No. D2010-1178

1. The Parties

Complainant is Kayak Software Corporation of Concord, Massachusetts, United States of America, represented by Clock Tower Law Group, United States of America.

Respondents are Stanley Pace of Flower Mound, Texas, United States of America and Micah Smurthwaite of Fairfield, California, United States of America.

2. The Domain Names and Registrar

The disputed domain name <sidetsep.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2010. On July 16, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On July 21, 2010, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information (i.e., Micah Smurthwaite) for the disputed domain name which differed from the named Respondent and contact information in the Complaint (i.e., Stanley Pace). The Center sent an email communication to Complainant on July 23, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 27, 2010 (naming both Respondents). The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on July 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2010. Respondent Micah Smurthwaite sent an email communication to the Center on August 5, 2010.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 6, 2010. 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

Complainant offers various electronic travel services via its trademark registrations for the mark SIDESTEP, globally, including in the United States where Respondents list their addresses of record. These registered marks include United States Registration Nos. 2646759 (issued 2002) and 3271022 (issued 2007); as well as European Registration No. 3850252 (issued 2005), and Canadian Registration No. TMA646695 (issued 2005), among others.

The disputed domain name <sidetsep.com> was registered on December 8, 2008. Respondents have no affiliation with Complainant. Rather, Respondents have provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing products and services for airlines and online travel agencies. Complainant has not authorized these links, nor the use of its trademarks therewith.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) <sidetsep.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondents have no rights or legitimate interests in the disputed domain name; and (iii) Respondents registered and are using the disputed domain name in bad faith.

B. Respondents

On August 5, 2010, the Center received the following email message from Respondent Micah Smurthwaite:

I received this WIPO in the mail [sic]. I do not own or control the registrant email address []. As I am not the true respondent, what can you do to help me remove my name from this claim? Certainly the registrar, Fabulous, has not verified the whois information. I will be contacting them directly, as well as ICANN.

This claim is particularly important to me as it is defamatory to a career built on fighting this exact behavior. I sign NDAs on a weekly basis confirming I will not disclose a company’s portfolio strategy. If a current, or potential, client thinks I am a cybersquatter it would cause irreparable harm to the multi-million dollar business I drive.

Thanks,

Micah Smurthwaite

Director, Business Development

[...]

The Center did not receive any communication from Respondent Stanley Pace regarding this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether <sidetsep.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name is exactly the same as Complainant’s registered trademark SIDESTEP, with the one change of two letters in the middle, a mistake easily made by web users quickly typing in a domain name.

Numerous UDRP panels have agreed that the deliberate and obvious misspelling of a mark constitutes “typosquatting”, and does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587 (transferring, inter alia, <ayhoo.com>, <chatyahoo.com>, <geocitie.com>); Dow Jones & Co., Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 (transferring <wallstreetjounal.com> and <wallstreetjournel.com>); and Xerox Corp. v. Stonybrook Investments, Ltd., WIPO Case No. D2001-0380 (transferring <zerox.com>).

This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.

No evidence has been presented to this Panel that might support a claim of Respondents’ rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondents have used the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainant or Complainant’s services.

Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondents’ lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondents have not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondents have provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing products and services for airlines and online travel agencies. Complainant has not authorized these links, nor the use of its trademarks therewith. Hence, Respondents are trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondents’ own commercial gain.

Finally, the email message from Respondent Micah Smurthwaite indicates that he does not “own or control” the disputed domain name although he is listed by the Registrar as the registrant of record. Falsifying contact information is a further indication of bad faith. See for example Chanel v. 1, WIPO Case No. D2003-0218 (transferring <chanelbiz.com>); Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (transferring <wachovai.com>, <wachvia.com>, and <wochovia.com>); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (transferring <knot.com>).

Therefore, this Panel finds that Respondents registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name <sidetsep.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: September 16, 2010

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