WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc.
Case No. D2003-0283
1. The Parties
The Complainant is Washington Mutual, Inc., Seattle, Washington, United States of America, represented by Perkins Coie, LLP, United States of America.
The Respondents are:
(1) Phayze Inc., Paris, France; ("Respondent 1")
(2) Peter Carrington, Fort Lauderdale, Florida, United States of America; ("Respondent 2")
(3) Party Night Inc., Amsterdam, Netherlands ("Respondent 3").
2. The Domain Names and Registrar
Respondent 1 has registered the following domain names:
Respondent 2 has registered the following domain name:
Respondent 3 has registered the following domain names:
Registrars
The domain names , and are registered with Internet Domain Registry Ltd (dba R).
The domain names , , and are registered with Key-Systems GmbH dba ("the Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2003. On April 11, 2003, the Center transmitted by email to the Registrars a request for registrar verification in connection with the domain names at issue. On April 16, 2003, and May 11, 2003, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contact.
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 Respondents of the Complaint, and the proceedings commenced on May 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2003. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on June 10, 2003.
The Center appointed Wolter Wefers Bettink 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
Complainant is the owner of the trademarks WAMU and WASHINGTON MUTUAL, registered in various countries (among which the United States, Canada and Australia) for various goods and services (see e.g. for WAMU US trademark registration no. 2,483,253 and 2,315,782 and for WASHINGTON MUTUAL US trademark registration no. 2,318,138 and 2,332,955).
The domain name was registered on August 12, 2002, by Respondent 1.
The domain name was registered on October 27, 2002, by Respondent 1.
The domain name was registered on March 28, 2002, by Respondent 2.
The domain name was registered on December 14, 2002, by Respondent 3.
The domain name was registered on March 19, 2003, by Respondent 3.
The domain names and were registered on March 15, 2003, by Respondent 3.
When Complainant discovered that Respondent 1 had registered the domain names and , Complainant sent a Cease and Desist Letter to Respondent 1 on December 19, 2002, to the address provided in the WHOIS database. This letter was returned as undeliverable.
When Complainant discovered that Respondents 2 and 3 had registered the domain names , , , and Cease and Desist Letters were sent by Complainant to Respondents 2 and 3 on March 31, 2003, to the email addresses provided by them to the respective registrars upon registration of the domain names. Complainant received no response.
5. Applicable Rules
Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.
Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent�s rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.
6. Parties� Contentions
A. Complainant
Complainant is a publicly-held Fortune 500 financial services holding company with assets totaling more than USD 216 billion and with more than 2500 offices across the United States. For more than a century, Complainant has provided a diversified line of products and services to consumers and small to mid-sized businesses, including consumer and commercial banking services, mortgage banking, securities brokerage and a variety of other financial services. Complainant is the largest home mortgage originator and servicer in the United States.
From at least 1983 Complainant has used the WAMU trademark in connection with many goods and services, including banking services, credit cards and mortgage services. Complainant holds trademark rights to the trademark WAMU in various countries. Since at least 1917 Complainant has used the trademark WASHINGTON MUTUAL in connection with, inter alia, banking services, credit cards and commercial lending services. Complainant holds rights to the trademark WASHINGTON MUTUAL in many countries. In addition, Complainant has pending trademark applications for the above-mentioned trademarks in several countries, as well as for the trademark WAMU HOME LOANS and has extensive common-law rights to the latter mark by virtue of its continuous use since at least July 2001.
The domain names , and are virtually identical and confusingly similar to Complainant's WAMU HOME LOANS mark. Each of these is a misspelling of this mark, in each case varying from the correct spelling by only one letter.
All the domain names at issue, with the exception of , are confusingly similar to Complainant's WAMU mark, as they incorporate the primary, distinctive elements of Complainant's trademarks. The addition of the descriptive, if slightly misspelled, 'home loans' term does nothing to reduce the confusing similarity of three of the domain names; the other three merely add descriptive financial terms.
Complainant states that Respondents have no rights or legitimate interests in the domain names at issue. Respondents have registered thousands of domain names that incorporate misspellings of famous trademarks. Respondents direct Internet traffic to pornographic websites and/or to websites that directly compete with the legitimate mark holders. These uses of the domain names at issue are not legitimate. Respondents have made no other use of the domain names at issue. In addition, Respondents are recidivist typosquatters. A significant number of other WIPO panels have determined that these same Respondents, using typosquatted domain names for similar purposes, had no rights or legitimate interests in those domain names (Respondent 1 in at least four UDRP decisions; Respondents 2 and 3 in more than 15 UDRP decisions).
Complainant states that Respondents registered and are using the domain names at issue in bad faith.
Respondents registered and are intentionally using the domain names at issue to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant's marks as to source, sponsorship or affiliation of the website. By using the domain names at issue Respondents are attempting to capitalize on and profit from initial confusion created by the domain names and the websites associated with them. In addition to the pornographic content, Respondents direct Internet users to websites that offer services that compete directly with those offered by Complainant.
Respondents have registered and are using their domain names to direct Internet users to a website displaying pornographic content - a common indicia of bad faith. There is a serious potential that the explicit images and material on this site will tarnish the reputation of Complainant, a further indicia of bad faith.
Respondents have provided false registration information to the Registrars thereby breaching their registration agreements. This action supports the conclusion of bad faith.
Respondents have registered and are using the domain names at issue primarily for the purpose of disrupting Complainant's business. Respondents have engaged in a pattern of conduct which prevents trademark owners using their trademarks as domain names by the registration of many confusingly similar domain names. Complainant states that Respondents are merely aliases for Mr. Zuccarini, a notorious typosquatter who has been the Respondent in more than 50 UDRP decisions, in which various panels have specifically condemned Mr. Zuccarini's behavior.
B. Respondents
As Respondents have not submitted a Response to the Center, Complainant's contentions are uncontested.
7. Procedural aspects
a. Due process
Where, as in this case, Respondents do not submit a Response and the file does not contain any communication from Respondents, the rules of due process require the Panel to verify as much as possible that Respondents are aware of the present proceedings. The Panel is satisfied, on the basis of the file documents, that this is the case. The Panel therefore assumes that Respondents have received these documents, but have chosen not to respond.
b. Multiple Respondents
As a rule, under the Policy and the Rules a case cannot be brought against multiple respondents. Article 3(c) of the Rules specifically provides that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. However, situations may arise in which multiple domain name holders should be equated with one domain name holder for the purpose of this provision, so that a complaint against more than one domain name holder should be allowed. Such a situation arises here.
As the Respondents have elected not to respond, they have not contradicted, inter alia, the assertion of Complainant that, in fact they are aliases of or acting as representatives for, Mr. Zuccarini. By virtue of Rule 14(b) the Panel is entitled to draw such inferences as it deems appropriate from the failure to respond to this assertion. In view of the evidence that Complainant has provided of its assertion in relation to Mr. Zuccarini and taking into account the record of prior UDRP decisions in relation to Mr. Zuccarini, the Panel accepts Complainant's assertion that the registrants of the Domain Names are to be regarded as one and the same in the context of this proceeding. (See also America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918).
The Panel therefore allows the Complaint in relation to all Respondents.
8. Discussion and Findings
Complainant must provide evidence of all elements of Paragraph 4 (a) of the Policy. Since the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a Response from Respondents, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.
A. Trademark rights
Complainant has provided sufficient evidence of its rights to the trademarks WAMU and WASHINGTON MUTUAL and of the fact that these are well-known.
B. Identical or Confusingly Similar
The domain name is clearly confusingly similar to Complainant's trademark WASHINGTON MUTUAL. The domain name is a misspelling of Complainant's trademark WASHINGTON MUTUAL, varying from the correct spelling by only one letter. A slight difference in spelling between a trademark and a domain name does not reduce the confusing similarity. See also Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323, (); Encyclopedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol, WIPO Case No. D2000-0330 (, , , ).
, ,
These domain names are clearly confusingly similar to Complainant's trademark WAMU. The domain names incorporate the trademark WAMU with the addition of the slightly misspelled word "acountonline" and the words "appraisals" and "loan services" as well as the suffix .com (which indicates that the domain name is registered in the .com gTLD). It is clear that the well-known and distinctive trademark WAMU is the most prominent element in these combinations, and this may lead the public to believe that these domain names are somehow connected to the WAMU trademark. The ability of the slightly misspelled word "acountonline" and the words "appraisals" and "loan services" to distinguish the domain names from Complainant's trademark is limited. (See also Daimler Chrysler A.G. v. James Cruz, WIPO Case No. D2000-1554, (); Yahoo! Inc. v. Casino Yahoo, Inc., Jon Maranda, WIPO Case No. D2000-0660 (); Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing and Logistics Corporation, WIPO Case No. D2000-0464 () and NAF Case No. FA0095464 ).
, ,
These domain names are clearly confusingly similar to Complainant's trademark WAMU. The domain names incorporate Complainant's trademark WAMU with the generic addition of the descriptive, slightly misspelled, term 'home loans' and the suffix .com (which indicates that the domain names are registered in the .com gTLD). It is clear that in this combination the well-known and distinctive trademark WAMU stands out so that the public is led to believe that the domain name is somehow connected to the WAMU trademark. The addition of the slightly misspelled term "home loans" does nothing to reduce the confusing similarity (see the cases referred to above).
C. Rights or Legitimate Interests
Under Paragraph 4 (c) of the Policy, a Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Paragraph 4 (a) (ii) of the Policy, inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial 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."
It is clear that Complainant has not given consent, license or any authorization to Respondents for use or registration of these domain names.
Respondents' use of the domain names to provide links to other websites (among which explicit pornographic websites) cannot be considered to concern a bona fide offering of goods nor a legitimate non-commercial or fair use of the domain name, if only because this use tarnishes the reputation of the well-known trademarks of Complainant.
Moreover, Respondents' domain names are essentially misspellings of domain names which include Complainant's trademarks. Respondents are thus trading on Complainant's goodwill by entrapping Internet users and directing them to websites not related to Complainant, among which the above-mentioned explicit pornographic websites.
Furthermore, there is sufficient evidence that all Respondents are engaged in a pattern of registering domain names incorporating misspellings of trademarks and directing Internet traffic to pornographic websites. In various decisions panels have held that similar use of domain names by Respondents did not create a legitimate interest in the domain names at issue. See for Respondent 1: WIPO Case No. D2002-0861 (misspelling of Ameriquest Mortgage); WIPO Case No. D2002-0851 (misspelling of Ultimate Electronics); WIPO Case No. D2002-0636 (misspellings of Voicestream); WIPO Case No. D2002-0441 (misspelling of Sharebuilder).
See for Respondents 2 and 3: NAF 114350 (Respondent 3 only) (misspelling of Neiman Marcus); NAF 115040 (misspelling of MBNA Net Access); NAF 115078 (misspelling of Anthem Prescription); NAF 116794 (misspelling of Jackson Hewitt); NAF 118314 (misspellings of AOL Mail et al); NAF 118311 (misspelling of Bank of America); NAF 135620 (misspelling of Billings Gazette); WIPO Case No. D2002-0613 (misspelling of Access Atlanta); WIPO Case No. D2002-0732 (misspelling of Sears); WIPO Case No. D2002-0756 (misspelling of Chrysler); WIPO Case No. D2002-0775 (Respondent 2 only) (misspelling of Wal-Mart Credit Card); WIPO Case No. D2002-0897 (misspelling of Big 5 Sporting Goods); WIPO Case No. D2002-0931 (misspelling of AT&T Broadband); WIPO Case No. D2002-1090 (misspelling of B&H Photo); WIPO Case No. D2002-1131 (misspelling of Summit racing).
In the light of the foregoing, the Panel finds that Respondents have no rights or legitimate interests in the domain names at issue.
D. Registered and Used in Bad Faith
Complainant is among others, relying on Paragraph 4b (iv), which provides that sufficient evidence of bad faith may consist of:
"By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."
The Panel finds that Complainant has provided sufficient evidence in this regard. It is clear that Respondents, by registering and using the domain names at issue, have created the (incorrect) impression of association with Complainant thereby creating a likelihood of confusion with Complainant's trademarks. This shows that Respondents have intentionally used the goodwill of Complainant's trademarks to create traffic to the websites operating under the domain names at issue. (See also e.g. Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413.)
Moreover, these domain names direct Internet users to other websites (among which those displaying explicit pornographic content), which tarnishes Complainant's reputation, and can be considered as bad faith.
The bad faith of Respondents also follows from the fact that they have engaged in a pattern of registering domain names incorporating misspellings of trademarks. The Panel finds that Complainant has provided sufficient evidence thereof.
A further circumstance which indicates the bad faith of Respondents is the fact that Respondents have not responded to any of Complainant�s communications and have not submitted a Response in this case. All communications sent to Respondents have been returned as undeliverable. Providing false registration data to the Registrars also is indicative of bad faith.
The Panel therefore concludes that there is sufficient evidence that Respondents' registrations and their use of the domain names at issue are in bad faith.
9. Decision
For all the foregoing reasons, the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain names at issue from Respondents to Complainant. Accordingly, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, orders that the domain names , , , , , and be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: July 3, 2003
Full & Egal Universal Law Academy