WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paragon Gifts, Inc. v. Domain.Contact
Case No. D2004-0107
1. The Parties
The Complainant is Paragon Gifts, Inc., Westerly, Rhode Island, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Domain.Contact, Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name is registered with iH Inc. d/b/a DotR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2004 (e-mail) and February 13, 2004 (hardcopy). On February 12, 2004, the Center transmitted by e-mail to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain name at issue. On February 23, 2004, iH Inc. d/b/a DotR transmitted by e-mail 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 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 March 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2004.
The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on April 2, 2004. 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 following trademark registrations:
Mark
Reg. No.
Reg. Date
Class
1.
THE PARAGON
2,215,985
1/5/99
35
2.
PARAGONGIFTS.COM
2,483,217
8/28/01
35
The disputed domain name was registered on May 19, 2003.
5. Parties' Contentions
A. Complainant
A.1. Identity or Confusing Similarity
Complainant asserted the following:
1. Complainant sells a wide variety of gift and related products through a mail catalog and an on-line catalog. The trademark PARAGON has been used since 1971. The trademark PARAGON has been used since March 15, 2001.
2. Complainant has built up valuable good will in its marks THE PARAGON and PARAGONGIFTS.COM, as a result of its expenditure of considerable sums of money on advertising and promotional activity.
3. Complainant registered the domain name on July 25, 1997, and has operated a website at this Internet address since April 1999.
4. Complainant has established and implemented an affiliate program. An affiliate program is an agreement between two e-commerce websites whereby the owner of one e-commerce site (the "affiliate") advertises and provides a link to another e-commerce website. The affiliate is paid a commission for every sale that is made by someone the affiliate refers to the other e-commerce website.
5. Complainant's affiliate program permits owners of e-commerce websites to provide a link to Paragon's website in the form of a banner ad or text link. If a customer of the e-commerce site clicks on the link to Paragon's website and then purchases a product from Paragon's website, the affiliate can earn up to 10% of the merchandise value of the sale.
6. After having registered the disputed domain name, Respondent became an affiliate of Complainant, and began using said domain name to fraudulently obtain commissions from Complainant's affiliate program by instantaneously redirecting consumers who mistype Complainant's domain name by inserting a dash between the words PARAGON and GIFTS through a series of websites, to Complainant's website.
7. Respondent's domain name , is virtually identical to Complainant's registered mark PARAGONGIFTS.COM and domain name . The only difference between Complainant's registered mark PARAGONGIFTS.COM, Complainant's domain name and Respondent's domain name is the insertion of a dash between the words PARAGON and GIFTS.
8. Respondent's activity falls within the definition of typosquatting. The disputed domain name is confusingly similar to Complainant's mark PARAGONGIFTS.COM (and cites Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035 (October 24, 2001); Playboy Enterprises International, Inc. v. SAND Web Names For - Sale, WIPO Case No. D2001-0094 (April 3, 2001); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001); Telstra Corporation Ltd. v. Warren Bolton Consulting Pty, Ltd., WIPO Case No. D2000-1293 (November 21, 2000).
9. The disputed domain name encompasses the dominant portion of Complainant's mark THE PARAGON and thus is confusingly similar to it. (citing Quixtar Investments, Inc. v. Scott A. Smithberger and Quixtar-IBO, WIPO Case No. D2000-0138 (April 19, 2000); GA Modefine S.A. v. Mark O'Flynn, WIPO Case No. D2000-1424 (February 27, 2001)).
A.2. Respondent's lack of rights or legitimate interests in respect of the domain name
Complainant asserted the following:
1. Respondent has no rights or legitimate interest with respect to Complainant's marks THE PARAGON and PARAGONGIFTS.COM or the disputed domain name
2. The disputed domain name does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent.
3. Respondent did not, prior to notice of this dispute, use the disputed domain name or a trademark corresponding to the domain name, in connection with a bona fide offering of goods or services.
4. Respondent has not made a bona fide non-commercial, fair use of the disputed domain name .
5. Respondent is using the domain name to divert Internet traffic to its portal website that instantaneously redirects consumers to Complainant's website. Respondent does not maintain a website that contains a link to or advertisement for Paragon's online catalog (as Complainant's affiliates normally do) but, rather, collects commissions for each time a consumer mistypes the Complainant's domain name.
6. Use of a confusingly similar domain name to redirect Internet traffic to Complainant's website in order to receive a commission as part of Complainant's affiliate program is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use (and cites R, Inc. v. Mike Torres, et al., NAF Case No. 145209 (March 11, 2003); The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Case No. 124516 (November 4, 2002); The Sports Authority Michigan, Inc. v. Lajos Szabo, NAF Case No. 139694 (February 4, 2003); The Sports Authority Michigan, Inc. v. Domhold a/k/a D'Vaul L., NAF Case No. 135011 (January 9, 2003); Deluxe Corp. v. Dallas Internet, NAF Case No. 105216 (April 10, 2002)).
7. Complainant never authorized, licensed or otherwise permitted Respondent to use its marks THE PARAGON or PARAGONGIFTS.COM, or any confusingly similar variations thereof.
A.3. Bad faith registration and use
Complainant submitted the following arguments:
1. Respondent has registered the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to Respondent's website, 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 of a product or service on the Respondent's website.
2. Respondent has registered and is using a domain name confusingly similar to Complainant's marks for commercial gain, by re-directing Internet users who insert a dash between PARAGON and GIFTS, to Complainant's website. As a member of Complainant's affiliate program Respondent is making a profit from every Internet user it re-directs that purchases a product from Complainant. Such a conduct constitutes bad faith registration and use (and cites The Sports Authority Michigan, Inc. v. Internet Hosting, supra; The Sports Authority Michigan, Inc. v. Lajos Szabo, supra; The Sports Authority Michigan, Inc. v. Domhold a/k/a D'Vaul L., supra; Deluxe Corp. v. Dallas Internet, supra).
3. The mere act of "Typo squatting," or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of bad faith registration and use (citing R, Inc. v. Mike Torres, et al., supra; National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011 (January 21, 2003); Medline, Inc. v. Domain Active Pty., Ltd., NAF Case No. 139718 (February 6, 2003).
4. Based on the fact that Respondent is a member of Complainant's affiliate program, it can be inferred that Respondent had actual knowledge of Complainant's rights in its registered marks THE PARAGON and PARAGONGIFTS.COM when it registered the disputed domain name (and cites The Sports Authority Michigan, Inc. v. Domhold Co. a/k/a D'Vaul L., see supra; citing, in turn Digi Int'l v. DDI Sys., NAF Case No. 124506 (October 24, 2002)).
5. Respondent's bad faith registration and use of the disputed domain name is further evidenced by Respondent's registration of twelve other domain names comprising misspellings of the name of at least one other well-known mail order and on-line catalog ROSS-SIMONS: , , , , , , , , , , , and (citing Inter-IKEA Systems B.V v. Technology Education Center., WIPO Case No. D2000-0522 (August 7, 2000); Bell-Phillip Television Productions v. Make A. Aford (Tim Wenk), WIPO Case No. D2000-0180 (May 2, 2000)).
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are at present:
"(i) the domain name in question 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 in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith."
As the Respondent has failed to submit a response to the Complaint, the Panel may choose to accept as true all of the allegations supported by evidence made by the Complainant. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487, (August 12, 2002); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, (February 29, 2000).
A. Identical or Confusingly Similar
Complainant has submitted evidence proving ownership or the trademarks THE PARAGON and PARAGONGIFTS.COM.
The disputed domain name is confusingly similar to Complainant's trademark PARAGONGIFTS.COM. It is almost identical to the said trademark, but for the addition of a dash between the words PARAGON and GIFTS, which does not grant distinctiveness to the former, when compared to the latter.
Paraphrasing AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447 (December 23, 2000), this Panel finds that but for the addition of a dash to the contested domain name, said domain name would be identical to Complainant's trademark PARAGONGIFTS.COM. It clearly is similar. It is also confusing.
Respondent's behavior falls under the definition of typosquatting: taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom (Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716 (October 30, 2003), citing, in turn, VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446, (January 31, 2001)); (see also Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035 (October 24, 2001) (finding confusingly similar to RED BULL); Playboy Enterprises International, Inc. v. SAND Web Names For - Sale, WIPO Case No. D2001-0094 (April 3, 2001) (finding confusingly similar to PLAYBOY); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (finding confusingly similar to NETWIZARDS); Telstra Corporation Ltd. v. Warren Bolton Consulting Pty, Ltd., WIPO Case No. D2000-1293 (November 21, 2000) (finding confusingly similar to BIG PONDS)).
According to 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, (August 10, 2000), "`typosquatting,' is a practice that has been condemned and been found to be confusingly similar to the marks which they mimic."
The contested domain name is also confusingly similar to Complainant's trademark THE PARAGON, because it encompasses the dominant portion of said trademark. See Quixtar Investments, Inc. v. Scott A. Smithberger and Quixtar-IBO, WIPO Case No. D2000-0138 (April 19, 2000) ([b]ecause the domain name incorporates in its entirety this distinctive mark, the Panel finds that the domain name is confusingly similar to the mark QUIXTAR); GA Modefine S.A. v. Mark O'Flynn, WIPO Case No. D2000-1424 (February 27, 2001) ([t]he distinctive part of the Complainant's trademark, ARMANI, constitutes the core element of the Domain Name. It is indeed obvious that although the Respondent's Domain Name is composed out of the word "Armani" and the (descriptive) word "boutique," the first of these terms is incontestably the principal part of the Domain Name).
In light of the above, the Panel finds that the domain name is confusingly similar to the trademarks THE PARAGON and PARAGONGIFTS.COM in which Complainant has rights. The first requirement of the Policy has been met.
B. Rights or Legitimate Interests
The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:
"(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 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." (Policy, paragraph 4(c)).
Complainant has not granted Respondent any sort of authorization or license to use the trademarks THE PARAGON and PARAGONGIFTS.COM.
Respondent is an affiliate of Complainant. Respondent derives revenue from users that are referred by Respondent to Complainant. However, Respondent is attracting traffic by creating confusion among Complainant's customers, by using a domain name that is confusingly similar to Complainant's trademarks, and re-directing such traffic to Complainant's site for a profit. Such use cannot be deemed a bona fide offering of goods or services. (R, Inc. v. Mike Torres, et al., NAF Case No. 145209 (March 11, 2003); The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Case No. 124516 (November 4, 2002) (affiliates use of and domain names to re-direct internet users to Complainant's website in order to receive commissions was not a bona fide offering of goods or services or a legitimate non-commercial or fair use); The Sports Authority Michigan, Inc. v. Lajos Szabo, NAF Case No. 139694 (February 4, 2003) (Respondent's use of domain name to re-direct internet users to Complainant's website, while earning a commission from Complainant's affiliate program, was not a bona fide offering of goods or services or a legitimate non-commercial or fair use); The Sports Authority Michigan, Inc. v. Domhold a/k/a D'Vaul L., NAF Case No. 135011 (January 9, 2003) (affiliate's use of domain names containing mis-spellings of Complainant's mark THE SPORTS AUTHORITY to re-direct Internet users to complainant's website was not a bona fide offering of goods or services or a legitimate non-commercial or fair use); Deluxe Corp. v. Dallas Internet, NAF Case No. 105216 (April 10, 2002) (finding Respondent has no rights or legitimate interests pursuant to domain name and to receive a commission from Complainant through its affiliate program)).
No evidence has been presented before this Panel, showing that Respondent has been commonly known by the domain name .
The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted 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.
Respondent intentionally attempts (and apparently succeeds at doing so) to attract, Internet users, in order to re-direct them to Complainant's website for commercial gain, thereby making a profit from every Internet user it re-directs that purchases a product from Complainant. Such a conduct has been held by previous Panels to constitute bad faith registration and use (see Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. S WIPO Case No. D2003-1028 (March 17, 2004) (using intentionally to attract, for commercial gain, Internauts to Respondent's on-line location by creating a likelihood of confusion with Complainants' mark as to the source of Respondent's on-line location, and re-directing said traffic to Complainant's site for commercial gain falls squarely within the circumstances contemplated in the Policy, paragraph 4(b)(iv); The Sports Authority Michigan, Inc. v. Internet Hosting, supra, (affiliates use of and domain names to re-direct internet uses to Complainant's website when Respondent received a commission pursuant to Complainant's affiliate program, constituted registration and use of such domain names); The Sports Authority Michigan, Inc. v. Lajos Szabo, supra, (Respondent's use of to garner commercial gain from Complainant's affiliate program constitutes bad faith registration and use); The Sports Authority Michigan, Inc. v. Domhold a/k/a D'Vaul L., supra, (Respondent's use of domain names containing misspellings of complainant's mark THE SPORTS AUTHORITY to redirect Internet users to Complainant's website where Respondent's was an affiliate of Complaint constituted bad faith registration and use); Deluxe Corp. v. Dallas Internet, supra, (finding Respondent registered and used the domain name in bad faith by redirecting its users to Complainant's domain name, thus receiving a commission from Complainant's through its affiliate program)).
Complainant has shown that Respondent is conducting a typosquatting practice, i.e., taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom (see Point 6A supra). Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name (see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623, (January 18, 2001); America Online, Inc. v. Intellectual-A, Inc., WIPO Case No. D2000-1043, (December 14, 2000); Link Clicks Inc. d/b/a Ad Here and v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2000-1547, (January 12, 2001); Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594, (January 19, 2001); Club Méditerranée S.A. v. Clubmedical, WIPO Case No. D2000-1428, (January 25, 2001); Yahoo! Inc. and GeoCities v. Data Art Corp. et al.,see supra; AT&T Corp. v. Global Net 2000, Inc., supra; R, Inc. v. Mike Torres, et al., supra; National Association of Professional Baseball Leagues v. Zuccarini, supra; Medline, Inc. v. Domain Active Pty., Ltd., NAF Case No. 139718 (February 6, 2003)).
Considering that Respondent is an affiliate of Complainant, Respondent knew or should have known of Complainants rights to its trademarks, which is an indicator of bad faith (Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. S, supra, in that Respondent's use of the disputed domain name since about June 2003 to redirect traffic to Complainants' website in order to siphon profits to Smart Biz was clearly done with knowledge of Complainants' rights in the mark STAPLES; The Sports Authority Michigan, Inc. v. Domhold Co. a/k/a D'Vaul L., see supra, Registration of domain names that infringe on Complainant's rights, despite actual knowledge of Complainant's mark, is evidence of bad faith registration pursuant to Policy, paragraph 4(a)(iii); citing, in turn Digi Int'l v. DDI Sys., NAF Case No. 124506 (October 24, 2002)).
Complainant has thus established that the disputed domain name has been registered and is being used in bad faith. The third requirement of the Policy has therefore been fulfilled.
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 be transferred to the Complainant.
Kiyoshi I. Tsuru
Sole Panelist
Dated: April 20, 2004
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