WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman
Case No. D2006-0517
1. The Parties
The Complainant is A, Inc., Seattle, Washington, United States of America, represented by Klarquist Sparkman, LLP, United States of America.
The Respondent is Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, Houston, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names , , and are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2006. On April 26, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On April�26,�2006, Go Daddy Software transmitted by email to the Center its verification response confirming the registrant information and providing the contact details for the administrative, billing, and technical contacts. 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 May 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was May�22,�2006. The Response was filed with the Center May 22, 2006. The Complainant submitted an unsolicited Reply on May 31, 2006. By email directed to the Center on June 2, 2006, the Respondent objected to the Complainant’s Reply.
The Center appointed William R. Towns, Louis E. Condon and Anders Janson as panelists in this matter on June 16, 2006. The Panel finds that it was properly constituted. Each member of 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
The Complainant is the world’s largest online bookseller and a well known Internet retailer. The Complainant sells books and offers a wide range of other goods and services at its “www.a” website under its AMAZON and AMAZON.COM marks (collectively referred to as “the AMAZON marks”), which have been registered in the United States as well as more than 40 countries and political communities worldwide. The Complainant has used the AMAZON marks to distinguish its goods and services since as early as 1995. The first of the Complainant’s numerous U.S. registrations for its AMAZON marks (“AMAZON.COM”) issued on July 15, 1997.
The Respondent registered the disputed domain names on various dates on or after August�20,�2002.1 The disputed domain names and currently direct Internet traffic to page addresses in the Complainant’s “www.a” website. The domain name directs Internet traffic to a portal website featuring sponsored links related to online shopping. At various times in the past, all disputed domain names have been directed to portal websites featuring sponsored links, including links offering books and DVDs for sale. In some instances the websites indicated that the domain names were for sale.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to its AMAZON marks, and reflect a form of cybersquatting commonly referred to as “typosquatting”. The Complainant alleges that the true registrant of the disputed domain names is Steven Newman, whom the Complainant characterizes as a “recidivist cybersquatter”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. In support of its position, the Complainant notes that the Respondent has not been commonly known by any of the disputed domain names, and that the Respondent has made no legitimate use of the domain names. While the Respondent was at one time a member of the Complainant’s Associate program, the operating agreement for that program expressly prohibits the kind of typosquatting engaged in by the Respondent.
Finally, the Complainant maintains that the disputed domain names were registered and are being used in bad faith by the Respondent, in an attempt to trade on the fame and goodwill of the Complainant’s AMAZON marks, developed through the Complainant’s long history and worldwide use of its AMAZON marks, and the registrations obtained for the marks in over 40 countries. According to the Complainant, the Respondent was well aware of the Complainant and its marks, as evidenced by the Respondent’s enrollment in the Complainant’s Associate program. The Complainant asserts that the Respondent knowingly violated the terms of that program by engaging in typosquatting, and that the Respondent has a history of cybersquatting or typosquatting with regards to other famous or well known marks. For all of the foregoing reasons, the Complainant urges that the disputed domain names should be transferred.
B. Respondent
The Respondent2 denies that the disputed domain names and are confusingly similar to the Complainant’s marks. The Respondent argues that the domain names cannot be considered misspellings of the Complainant’s marks that would constitute “typosquatting” for purposes of the Policy, because it is unlikely that Internet users seeking the Complainant’s website would mistype two identical non-consecutive letters in the name. Nor is confusion likely, according to the Respondent, given that there are hundreds of other companies who use “Amazon” as a trademark.
The Respondent claims rights in the disputed domain names by virtue of using the domain names in relation to the Complainant’s affiliate program. According to the Respondent, the Complainant’s acceptance of the Respondent as an affiliate constituted authorization for the Respondent to use the disputed domain names to hyperlink to the Complainant’s website. In addition, the Respondent claims to have spent countless hours conducting search engine optimization to develop Internet traffic related to the Complainant’s business model.
The Respondent further contends that the disputed domain names have never been used in bad faith. According to the Respondent, the domain names were registered for general use, later used to attract traffic to the Complainant’s website to generate sales, and it was only after the Respondent was removed from the Complainant’s affiliate program that the domain names were parked to take advantage of the traffic the Respondent had established for the A affiliate program.
Finally, the Respondent asserts that the Complainant has attempted to reverse hijack the disputed domain names by refusing to pay Respondent sums allegedly owed under the Complainant’s affiliate program ($486.99) unless the Respondent agreed to transfer the disputed domain names to the Complainant.
6. Procedural Issues
A. The Identity of the Respondent
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. As noted above, the record in this case reflects that each of the disputed domain names initially was registered to Steven Newman. Current Whois records reflect that is registered to Steven Newman, while is registered to Pluto Newman, and is registered to Jill Wasserstein.
The Complainant asserts that Steven Newman is the true registrant of the disputed domain names, and that this Complaint is properly brought pursuant to paragraph 3(c) of the Rules. The Complainant correctly observes that in correspondence relating to this domain name dispute, Steven Newman has held himself out as the owner of all three domain names, asserting of a right of control over the domain names and claiming entitlement to revenues allegedly generated from the use of the domain names in connection with the Complainant’s Associate program. In addition, the contact information provided for Steven Newman and Jill Wasserstein in the Response is identical.
While the Response alleges that Steven Newman, Jill Wasserstein and Pluto Newman are acting in individual capacities in relation to the disputed domain names, no evidence has been submitted to support that assertion. The Complainant has made a substantial showing that Pluto Newman is a fictitious name and that Jill Wasserstein, if not an alias, is acting in concert with Steven Newman. At least one other Panel has so concluded based on similar circumstances. See Harry and David v. Jill Wasserstein, WIPO Case No. D2005-1332 (“[a] reasonable person would suspect that Jill Wasserstein and [Steven] Newman are either the same person or acting in concert”). Given the foregoing, the Panel finds that this Complaint is properly brought pursuant to paragraph 3(c) of the Rules. 3
B. Supplemental Submissions
The Panel must determine as a preliminary matter whether the Complainant’s unsolicited Reply should be considered. No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of supplemental submissions by either party to the administrative proceeding without leave from the Panel. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties.
The Complainant asserts that panels routinely accept unsolicited supplemental pleadings, but the Policy, the Rules and relevant panel decisions demonstrate a strong preference for single submissions by the parties absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427.
The Panel finds no such exceptional circumstances to be present here. The Complainant’s Reply consists merely of argument. Accordingly, the Complainant’s Reply will not be considered by the Panel in reaching its decision.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No.�D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No.�D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs�169 and 170. Paragraph�15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph�4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph�4(i).
Paragraph�4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph�4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph�4(a) of the Policy, a number of panels have concluded that paragraph�4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270.
B. Identical or Confusingly Similar
The Panel concludes that the disputed domain names are confusingly similar to Complainant’s AMAZON mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in its AMAZON mark through registration and use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. In fact, given the Complainant’s extensive and worldwide use of its AMAZON marks, and the registrations obtained for the marks in over 40 countries – all of which has been meticulously documented by the Complainant – the Complainant’s mark appears beyond question to be highly distinctive, if not famous.
The disputed domain names differ from the Complainant’s mark only by the change of a single letter in the domain name – the substitution of the letter “h” for the letter “n” – and the change of the same letter twice in the domain names and – the substitution the letter “q” and “s”, respectively, for the letter “a”. Significantly, all of the substituted letters are proximately located to the original letters on a standard “qwerty” keyboard, and the domain names are predictable mistypings of the Complainant’s mark. The Respondent’s registration of domain names that constitute common mistypings of the Complainant’s mark appears to be deliberate – a practice known as “typosquatting”.4 Given the foregoing, the Panel finds that the disputed domain names and the Complainant’s mark, when directly compared, are confusingly similar. See Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150 (, , and confusingly similar to WACHOVIA due to common mistyping on standard “qwerty” keyboard).5
C. Rights or Legitimate Interests
The circumstances of this case are strongly evocative of “typosquatting”, a form of cybersquatting in which a respondent registers and uses a domain name in order to take advantage of typographical errors made by internet users seeking the complainant’s commercial website. See Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No.�D2001-1035. The record reflects that the Respondent has more than once registered and made similar use of domain names consisting of misspellings of distinctive brand names. See Deutsche Telekom AG v. Steven Newman, WIPO Case No. D2005-0707 (transferring domain names and ); Harry and David v. Jill Wasserstein, WIPO Case No. D2005-1332 (transferring domain name ). While the Respondent was at one time enrolled in the Complainant’s Associate program, the Complainant has shown that it did not authorize the Respondent to use the disputed domain names in relation to that program. Rather, the Respondent’s use of the disputed domain names in all probability violated the Complainant’s Associate agreement, which explicitly proscribed the use of domain names that were misspellings of the Complainant’s mark.
Given the foregoing, the Panel concludes that the Complainant had made a prima facie showing under paragraph�4(a)(ii) of the Policy, requiring the Respondent to come forward with evidence under paragraph�4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain names. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No.�D2000-0020. Pursuant to paragraph�4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
The Respondent has failed to present any credible basis for his claim of rights or legitimate interests in the disputed domain names. The Respondent makes no claim to have been commonly known by any of the disputed domain names. The Response fairly reflects that all three of the disputed domain names are intentional mistypings of the Complainant’s AMAZON mark, and have been used to divert Internet traffic seeking the Complainant’s website in order to generate sales. Such conduct can only be characterized as typosquatting, and it is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name. See, e.g., ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
Given such bad faith registration, the Respondent’s use of these confusingly similar domain names to divert Internet traffic to his portal websites cannot be relied on to establish rights or legitimate interests under paragraph 4(c)(i). See Wal-Mart Stores, Inc. v. walmarts, WIPO Case No. D2005-0706; First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No.�D2000-1840 (for�offering of goods or services under paragraph�4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph�4(a)(iii)). Nor, for similar reasons, can the Respondent credibly assert rights or legitimate interests based on his use of the disputed domain names in relation to the Complainant’s Associate program, when such use in all probability violated the explicit provisions of that program.
D. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph�4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No.�D2004-0230.
The Panel concludes from the totality of the circumstances of this case, as discussed above, that the Respondent registered and is using the disputed domain names in bad faith. It is well settled under the Policy that the practice of typosquatting, in and of itself, constitutes bad faith registration, See, e.g., ESPN, Inc. v. XC2, WIPO Case No. D2005-0444, and the Respondent’s use of the disputed domain names in an attempt to profit from and exploit the Complainant’s mark is manifest from the record. Such bad faith exploitation includes the Respondent’s use of the disputed domain names in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement or the Respondent’s website. The Respondent’s history of typosquatting only strengthens the inference of bad faith. MouseSavers, Inc. v. Mr. Henry Tsung d/b/a , WIPO Case No. D2004-1034.
8. 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.
William R. Towns
Presiding Panelist
Louis E. Condon
Panelist
Anders Janson
Panelist
Dated: June 28, 2006
1 The record in this case reflects that each of the disputed domain names initially was registered to Steven Newman. Current Whois records reflect that is registered to Steven Newman, while is registered to Pluto Newman, and is registered to Jill Wasserstein.
2 The Response was submitted on behalf of Steven Newman and Jill Wasserstein. The contact information provided for Mr. Newman and Ms. Wasserstein in the Response is identical. The Respondent maintains that Steven Newman, Jill Wasserstein and Pluto Newman are three separate individuals, that Steven Newman and Jill Wasserstein at one point acquired several domain names in partnership, later dividing the ownership of the domain names when the partnership split, and that the domain name was transferred to Pluto Newman for his separate use. The Response does not address the Complainant’s contentions regarding the domain name.
3 Even assuming that Steven Newman and Jill Wasserstein initially registered each of the disputed domain names in the name of “Steven Newman” pursuant to a partnership agreement, the disputed domain names would still be commonly owned, and the Complaint could be maintained consistent with paragraph 3(c) of the Rules.
4 “Typosquatting” involves the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark. See, e.g., Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No.�D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No.�D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd., WIPO Case No.�D2000-1293. In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by internet users seeking the complainant’s commercial website and divert them to the respondent’s website. See Red Bull GmbH v. Grey Design, WIPO Case No.�D2001-1035.
5 The Panel finds the Respondent’s argument that the disputed domain names and cannot be considered confusingly similar to the Complainant’s mark under the Policy because more than one letter has been substituted unpersuasive. See, e.g., Stokes Seeds, Ltd. v. Peter Carrington, WIPO Case No. D2004-0526 confusingly similar to STOKES SEEDS; Government Employees Insurance Company (GEICO) v. Forum LLC, WIPO Case No. D2005-1131 ( confusingly similar to GEICO).
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