WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CPP, Inc. v. Virtual Sky
Case No. D2006-0201
1. The Parties
The Complainant is CPP, Inc., Mountain View, California, United States of America, represented by Howard Rice Nemerovski Canady Falk & Rabkin, United States of America.
The Respondent is Virtual Sky, George Town, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February�14,�2006. On February�15,�2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 16,2006, Moniker Online Services, LLC 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 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 February�20,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March�12,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March�13,�2006.
The Center appointed Ross Carson as the sole panelist in this matter on March�16,�2006. 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 owns several active United States trademark registrations for marks used in connection with its assessment instruments and services. Complainant has cultivated good will in connection with its various marks during the last 50 years. Complainant owns two active United States trademark registrations for SKILLSONE (U.S. Reg. Nos. 2784592 and 2782294) for use, among other things, in connection with the provision of its assessment instruments and services via a global computer network, namely the Internet and the world wide web. Copies of Trademark Electronic Search System (“TESS”) printouts for Complainant’s SKILLSONE trademarks are attached as Exhibit E to the Complaint.
Additionally, Complainant owns or is the exclusive licensee of active United States trademark registrations for marks including, but not limited to MYERS-BRIGGS (U.S. Reg. Nos. 2525811, 2528223), MYERS-BRIGGS TYPE INDICATOR (U.S. Reg. Nos. 2525810, 2528222, 1786598, 1511760), MBTI (U. S. Reg. Nos. 2525809, 1817190, 1611241, 1444977), STRONG INTEREST INVENTORY (U.S. Reg. No. 2150106), FIRO (U.S. Reg. No. 2535140), FIRO-B (U.S. Reg. No. 2666375), and DAVIES-BLACK (U.S. Reg. Nos. 2027579). Complainant also has pending active trademark applications for trademarks including STRONG (U.S. Serial Nos. 78317202, 78317196, and 78317191) and CPI260 (U.S. Serial Nos. 76557476, 76556707, 76556706, 76556705, 76556704). Complainant uses all of these trademarks on its SkillsOne website and in connection with its assessment instruments and services. Copies of the TESS printouts for these trademarks are attached hereto as Exhibit F to the Complaint.
Complainant is the owner of the domain name created on April�4,�2000. Complainant owns and operates the SkillsOne website, which allows qualified users to purchase, administer, and score assessment instruments, print interpretive reports and communicate with their clients. Complainant’s well known assessment instruments, such as the Mbti, Strong, Tki, Firo-b and Cpi instruments are available through the SkillsOne website, and the names of these assessment instruments are prominently displayed on the SkillsOne website.
Complainant began operating its SkillsOne website on June�24,�2000, and has operated the website continuously since that date. As of the end of 2005, Complainant had registered over six thousand unique SkillsOne website customers, some of whom maintain multiple SkillsOne website accounts. As a result, Complainant has generated substantial good will in connection with its SkillsOne website and the assessment instruments and services it offers through it. Complainant’s assessment instruments have been used by millions of individuals in more that 50 countries to assist individuals and organizations grow and develop by improving performance and enhancing personal and intra-organizational understanding.
The SKILLSONE trademark is recognized and relied on by the assessment industry as identifying Complainant and its assessment instruments and services, and the SKILLSONE trademark distinguishes Complainant’s products and services from those of others. As a result, the SKILLSONE trademark has acquired substantial goodwill and is a valuable commercial asset.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Policy, Paragraph 4(a)(i)
As stated in paragraph 4 above, Complainant is the owner of two active United States registrations for the SKILLSONE mark, used in connection with the provision of CPP’s assessment instruments and services via a global computer network, namely the Internet and the world wide web.
On information and belief, Complainant submits that Respondent has not used the SKILLSONE or SKILLS1 marks in commerce or otherwise, except for its use in connection with its “www.” website. Complainant submits that Respondent, seeking to capitalize on the goodwill associated with Complainant, its SKILLSONE trademark, and its “www.” website, registered the domain name on or around June�20,�2004, and set up an Internet website. Complainant submits that Respondent’s domain name is confusingly similar to Complainant’s trademark SKILLLSONE. Respondent has merely replaced the term “One” with the numeral “1”. The replacement of a spelled-out number with the corresponding numeral does not make the marks sufficiently different so as to reduce customer confusion, especially where the two marks remain phonetically the same and interpretively identical. Thus, in Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June�21,�2000), the panel found that the domain name , with a zero in place of the letter “O”, was calculated to trade on the Complainant’s name by exploiting likely mistakes by users when entering the URL.
Complainant submits that the domain name in dispute is confusingly similar to the Complainant’s registered trademarks for SKILLSONE.
Respondent has no Rights or Legitimate Interests in respect of the Domain Name
Policy, Paragraph 4(a)(ii)
Complainant states that Respondent has no United States trademark registrations for either the trademark SKILLSONE or SKILLS1. The Respondent is not affiliated in any way with the Complainant and the Respondent has never been authorized by the Complainant to use the SKILLSONE trademark or any trademark confusingly similar thereto.
On information and belief, Respondent has not used the SKILLSONE or SKILLS1 marks in commerce or otherwise, except for its use in connection with its “www.” website.
Complainant states that on or around June 20,2004, Respondent registered the domain name . Complainant submits that Respondent has “parked” its domain name with Internet advertising publisher DomainSponsor. As the “www.” website source code indicates, when a user enters the domain name the user is redirected to an Internet website operated by DomainSponsor. The “www.” website source code is attached as Exhibit G to the Complaint. Summaries of O, I and Domain S, which show the interrelationship among these entities, are attached as Exhibit H to the Complaint.
Complainant further states that DomainSponsor enables Respondent to forward its domain name directly to a landing page with relevant links and advertisements. On information and belief DomainSponsor has generated the relevant links and advertisements for the “www.” website by appropriating content from Complainant’s “www.” website, namely the trademarked names of Complainant’s proprietary assessment instruments. Specifically, the “www.” website displays hyperlinks named “Mbti” and “Strong,” which are two of Respondent’s best known trademarked assessment instruments. A printout of the redirected “www.” website is attached as Exhibit I to the Complaint. Each time a visitor clicks on a link or ad on the “www.” website, Respondent gets credited with a per-click payment. A copy of the DomainSponsor user terms and Frequently Asked Questions are attached as Exhibit J to the Complaint.
Complainant states that when a user of Respondent’s “www.” website clicks on one of the hyperlinks, such as the MBTI or STRONG hyperlinks, the user is presented with a collection of additional sponsored links. These sponsored links also relate to assessment instruments and services, and in fact, some link to websites operated by Complainant’s licensees. A printout of the sponsored links, which a user sees after selecting the “Mbti” link on the “www.” website, is attached as Exhibit K to the Complaint.
On information and belief, Complainant submits that Respondent has not used the SKILLSONE or SKILLS1 marks in commerce or otherwise, except for its use in connection with its “www.” website.
Complainant further submits that Respondent’s lack of legitimate rights in the SKILLSONE or SKILLS1 marks is reinforced by its similar history of misuse of other domain names. Thus, in Charleston Alexander Jewelers, Inc. v. Virtual Sky, FA0504000452231 (Nat. Arb. Forum, May�19,�2005), the panel found that Respondent’s use of the domain name – which was confusingly similar to Complainant’s WHERE THE DIAMONDS ARE mark – to operate a website that featured sponsored links to competing jewelers was not a use in connection with a bona fide offering of goods or services under the Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii) See also Rose Displays, Ltd. v. domain, support d/b/a Virtual Sky, FA0508000537465 (Nat. Arb. Forum, October�4,�2005) and A Retired Collection, LLC v. Virtual Sky, FA0508000535461 (Nat. Arb. Forum, September�27,�2005).
Registered and Used in Bad Faith
Policy, Paragraph 4(a)(iii)
Bad Faith Registration
Complainant submits that Respondent’s registration of the domain name on June�20,�2004, with actual or constructive knowledge of Complainant’s rights in the SKILLSONE trademarks, based on Complainant’s active trademark registrations for SKILLSONE and its active Internet website located at “www.” is sufficient to evidence Respondent’s bad faith registration of the domain name in dispute. See Charleston Alexander Jewelers, Inc. v. Virtual Sky, FA0504000452231 (Nat. Arb. Forum, May�19,�2005) (“Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s superior rights is tantamount to bad faith registration and use pursuant to Policy Paragraph 4(a)(iii)”).
Respondent “www.” website contains links named “Mbti” and “Strong”, the names of two of Complainant’s best-known assessment instruments. As noted Complainant holds active United States trademark registrations for MBTI, STRONG INTEREST INVENTORY, and Complainant has a pending United States trademark registrations for STRONG to be used in connection with its assessment instruments and services. Respondent’s website also contains links to licensees of Complainant’s assessment instruments. Based on the apparent link between Complainant’s trademarks and the content of Respondent’s “www.” website, it is undeniable that Respondent had actual knowledge of Complainant’s rights in the SKILLSONE trademarks.
Respondent’s Bad Faith Use
The Complainant submits that Respondent has evidenced its bad faith use of the domain name in dispute to divert Internet users looking for Complainant’s “www.” website. Financial incentives have motivated Respondent’s bad faith use of the domain name, as Respondent receives compensation in the form of click-through revenue for each mislead user who clicks on a sponsored link on Respondent’s website. Respondent is involved in “typosquatting”, the practice of using a domain name which incorporates a deliberate misspelling of a well known trademark or domain names to divert Internet users looking for the well known trademark or domain name. “Typosquatting” is inherently parasitic and has been recognized as evidence of bad faith with regard to Paragraph 4(a)(iii) of the Policy. Complainant further submits that Respondent’s bad faith use of the domain name in dispute is compounded by its inclusion of content on the “www.” website that relates to Complainant’s proprietary assessment instruments and services. Specifically, Respondent includes links that are named Mbti and Strong on its “www.” website. Mbti and Strong are two of Complainant’s well established assessment instruments and trademarks. Complainant further submits that the bad faith motivations of “typosquatting” are compounded when the website operator includes website content related to the original trademark.
Complainant submits that the Respondent is using the confusingly similar domain name to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks and domain name as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under Paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Reply results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true.
Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403 (June�27,�2000)
A. Identical or Confusingly Similar
Pursuant to Paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which the Complainant has rights.
The Complainant has established that it is registered as the owner of two active United States trademark registrations on the principal register for the trademark SKILLSONE, U.S. Registration Nos. 2784592 and 2782294 for use, among other things, in connection with the provision of assessment instruments and services via a global computer network, namely the Internet and world wide web.
The domain name in dispute is identical to Complainant’s registered trademark SKILLSONE in sound and idea suggested by the trademark, but differs in appearance by the substitution of the numeral “1” for the word “one”, which is the suffix found in Complainant’s registered trademark. The replacement of the word “one” with the numeral “1”, found in the domain name in dispute, results in a confusingly similar use of the Complainant’s trademark SKILLSONE. Respondent is involved in “typosquatting”; the practice of using a domain name misspelling of Complainant’s well known trademark. In Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June�21,�2000), the Panel found that the domain name , with a “Zero” in place of the letter “O” was calculated to trade on the Complainant’s name by exploiting likely mistakes by users of the URL.
The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered trademark for SKILLSONE.
B. Rights or Legitimate Interests
Pursuant to Paragraph 4(a)(ii) of the Policy Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has no United States trademark registration for either of the trademarks SKILLSONE of SKILLS1. The Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the SKILLSONE trademark or any trademark confusingly similar thereto.
The domain name in dispute is parked with DomainSponsor and the Internet user entering is redirected to an Internet website operated by DomainSponsor. The redirected website shows “S” in large font, and presents users with a collection of links, including links named “Mbti” and “Strong,” two of Respondent’s best-known assessment instruments. Both DomainSponsor and Respondent receive click-through revenue when a visitor clicks on one of the redirected website’s sponsored links.
UDRP decisions have consistently found that registrants that “park” their domain name using DomainSponsor or other redirecting services have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (September�7,�2003). Similarly, in Pioneer Hi-Bred International Inc. v. Henry Chan, FA0304000154119 (Nat. Arb. Forum, May�12,�2003), the panel found that the:
“Evidence indicates that Respondent uses Complainant’s famous PIONEER mark in the domain name to attract Internet users to its website, which is located at . As stated, Complainant’s research indicates that DomainS is a company that pays commissions to domain name registrants for revenues generated from searches and pop-up advertisements. Respondent’s unauthorized use of Complainant’s mark in its domain name in order to accumulate commissions from DomainS fails to constitute a legitimate use of the domain name. Thus, Respondent is not using the domain name in connection with a bona fide offering of goods or services under Policy Paragraph 4(c)(i) nor is Respondent making a legitimate noncommercial or fair use of the domain name pursuant to Policy Paragraph 4 (c)(iii).”
It is difficult for a Complainant to prove the negative that the Respondent does not have any rights or legitimate interests in a domain name in dispute. The Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to Paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for Complainant to make a prima facie showing that Respondent does not have any rights or legitimate interests in the domain name in dispute. The Respondent did not file a Reply and avail itself of the benefits of Paragraph 4(c) of the Policy.
The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
The Panel finds that the circumstances of this case indicate that the Respondent registered the domain name in dispute with actual knowledge of Complainant’s United States trademark registrations for SKILLSONE which had been registered and widely used in the United States and other countries in association with the provision of its assessment instruments and services via a global computer network, namely, the Internet and world wide web. The Complainant has established that Respondent registered the domain name in dispute in bad faith.
Respondent is involved in “typosquatting”; the practice of using a domain name which is a misspelling of the Complainant’s trademark for SKILLSONE and Complainant’s domain name . The domain name in dispute is parked with DomainS which directs Internet users to a web page with links and advertisements appropriating content from Complainant’s “” website. The “” website displays hyperlinks named “Mbti” and “Strong” which are two of Complainant’s best known trademarked assessment instruments. The Respondent and DomainSponsor obtain click through revenue for each misled user who clicks on a sponsored link of the parked website. Respondent is using the confusingly similar domain name to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademark and domain name as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under Paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: March�28,�2006
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