WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Sally Jensen v. D and D
Case No. D2003-0348
1. The Parties
The Complainant is Dr. Sally Jensen of Encinitas, California, United States of America, represented by The Trademark Group, APLC of United States of America.
The Respondent is D and D, C/O Martin Wise, of Los Angeles, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2003. On May 8, 2003, the Center transmitted by email to D a request for registrar verification in connection with the domain names at issue. On May 9, 2003, D 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 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 Respondent 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 Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on June 4, 2003.
The Center appointed Matthew D. Powers as the Sole Panelist in this matter on June 13, 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 service mark DISSERTATION DOCTOR for use in connection with "one on one teaching in the nature of coaching in the field of graduate education." This service mark is registered in the United States Patent and Trademark Office. The registration issued on March 27, 2001, and showed a first use in commerce on January 1, 1999. Complaint, Annex 3.
Respondent registered the domain names and on March 6, 2003. Complaint, Annex 1.
Respondent registered the domain names at issue shortly after WIPO issued a ruling transferring the domain names and to Complainant. See Dr. Sally Jensen v. BnB, WIPO Case No. D2002-1139. BnB, the Respondent in that case, was allegedly an agent of Respondent D and D. Complaint, p. 7.
Complainant alleges that Respondent had not made any use of the domain names at issue before March 27, 2001, the date Complainant�s service mark registration issued. Complainant further alleges that Respondent has not been commonly known by the name "Dissertation Doctors." Complaint, pp. 5-6.
The Panel notes that the domain names at issue do not presently resolve to a web page or pages. However, Complainant alleges that Respondent has used the domain names at issue to "offer[] to write book reports, essays, research papers, dissertations and term papers for others who are willing to pay a set fee and who then turn the work in as their own." Complaint, p. 6.
5. Parties� Contentions
A. Complainant
Complainant contends that Respondent has registered domain names that are identical or confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The domain names at issue differ from Complainant�s registered service mark by one letter in the case of and by an additional hyphen in the case of . Pluralized or hyphenated forms of marks have been found to be identical or confusingly similar to the marks in numerous cases. See, e.g., Medtronic, Inc. v. , WIPO Case No. D2001-1033 (finding confusingly similar to Medtronic); Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (finding identical to C-Com). Additionally, the domain names at issue are very similar to and , which were found to be confusingly similar to Complainant�s mark in a prior case. Dr. Sally Jensen v. BnB, WIPO Case No. D2002-1139. The Panel therefore finds that the domain names at issue are confusingly similar to Complainant�s mark.
B. Rights or Legitimate Interests
Because Complainant has alleged that Respondent has no rights or legitimate interests in respect of the domain names at issue, Respondent bears the burden of showing by concrete evidence that it has such rights or legitimate interests. See Policy, paragraph 4(c). Respondent has not done so. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the domain names at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iii) of the Policy indicates that registering a domain name "primarily for the purpose of disrupting the business of a competitor" constitutes evidence of bad faith. One form this disruptive purpose can take is the registration of a misspelling of a trademark. Dr. Sally Jensen v. BnB, WIPO Case No. D2002-1139 (citing The Vanguard Group v. Dotsan, WIPO Case No. D2002-0585). The disputed domain names are misspellings of Complainant�s mark.
Using a domain name to "intentionally attempt[] to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location" also demonstrates bad faith, according to paragraph 4(b)(iv) of the Policy. Respondent�s registration of a misspelling of Complainant�s mark creates this type of confusion. Dr. Sally Jensen v. BnB, WIPO Case No. D2002-1139 (quoting HSBC Holdings Plc v. Philip McCarthy MCG/First Direction Mortgages Limited, WIPO Case No. D2002-0644). By registering the domain names at issue, Respondent took impermissible advantage of the goodwill associated with Complainant�s mark.
Failure to perform a trademark search before registering a domain name can be an indicator of bad faith. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384; Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119. If Respondent had performed a trademark search prior to registering the domain names at issue, it would have discovered that Complainant had rights in the mark DISSERTATION DOCTOR. Therefore, either Respondent failed to perform a search before registering the domain names at issue, or it registered them despite finding a very similar registered mark. Either set of circumstances would demonstrate bad faith.
Finally, Respondent has not disputed Complainant�s allegation that Respondent "registered the names to undermine the prior WIPO decision" in which the domain names and were transferred to Complainant. See Dr. Sally Jensen v. BnB, WIPO Case No. D2002-1139.
In light of the above facts, the Panel finds that Respondent registered and used the domain names at issue in bad faith.
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 and be transferred to the Complainant.
Matthew D. Powers
Sole Panelist
Dated: June 30, 2003
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