WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wilmington Trust Company v. Digi Real Estate Foundation
Case No. D2006-0667
1. The Parties
The Complainant is Wilmington Trust Company, Wilmington, Delaware, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Names and Registrars
The disputed domain name is registered with Name2Host. The disputed domain name is registered with Pacnames Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. On May 30, 2006, the Center transmitted by email to Name2Host and Pacnames Ltd a request for registrar verification in connection with the domain names at issue. On May 30, 2006, Pacnames Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name and providing the contact details for the administrative, billing, and technical contact. On June 8, 2006, Name2 Host transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name and providing the contact details for the administrative,billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 15, 2006. The Center verified that the Complaint together with the amendment to 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 June 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�16,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2006..
The Center appointed Ross Carson as the sole panelist in this matter on July 26, 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 is the owner of United States Reg. No.2661570 for the trademark WILMINGTON TRUST registered on the Principal Register in association with banking services and financial services on December 17, 2002. The date of first use of the mark in commerce is 1903. Complainant is also the registered owner of the domain name registered on July 4, 1996. Respondent registered the domain name on November 9, 2005, and registered the domain name on August 25, 2005..
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant submits that Respondent’s disputed domain names are effectively identical to Complainant’s WILMINGTON TRUST trademark and domain name. Moreover, Respondent uses the disputed domain names in connection with webpages having active links to banking and financial services such as investing, stock market, personal finance, mutual funds, money management, auto finance, home finance, and 401k plans. Because Complainant similarly provides banking and financial services, Complainant and Respondent are offering competitive services. Respondent’s disputed domain names are one letter misspellings of Complainant’s registered trademark and domain name and are likely to cause confusion, mistake or deception among the trade and public.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent registered the disputed domain names after Complainant received its U.S. federal registration for its WILMINGTON TRUST trademark on December 17, 2002, long after the 1903 date of first use by Complainant and long after the extensive sales of Complainant’s goods and services under the WILMINGTON TRUST trademark.(Exhibit 5 to Complaint). Complainant further submits that Respondent has no legitimate commercial or private interest in the WILMINGTON TRUST trademark or related domain names Respondent is not known by the disputed domain names in the industry, nor is it known for any services it provides under this domain names. In fact, Respondent’s websites associated with the disputed domain names do not provide any services to the public, only links to banks and financial institutions that compete with Complainant.
A.3 Registered and Used in Bad Faith
Complainant submits that Respondent’s adoption and use of the disputed domain names is in bad faith, has continued with full knowledge of Complainant’s prior rights, and is a willful infringement of Complainant’s prior rights. Respondent is using the misspellings of Complainant’s trademark and domain name for its own commercial gain, by diverting Internet users to its search engine web site featuring links to the websites of other financial institutions websites in direct competition with Complainant’s business in order to receive compensation for directing a user to such a website.
Complainant further submits that customers and prospective customers searching for Wilmington Trust on the Internet may mistakenly type in the disputed domain names trying to reach Complainant’s web site. When the disputed domain names are typed in, the customer will not find Complainant’s web site, instead the customer will find a page that provides links to competing financial institutions. Such customers and prospective customers may stop searching for Wilmington Trust online, or visit a competing financial institutions web site instead, resulting in lost customers, lost business and loss of reputation of Complainant. Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark and domain names.
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 Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to Paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is registered as the owner of the registered trademark WILMINGTON TRUST registered in relation to banking services and financial services. The trademark was first used in commerce in 1903.
The slight difference between the domain names in dispute and Complainant’s registered trademark has no legal significance for purposes of determining whether the domain names are identical or confusingly similar to Complainant’s trademark WILMINGTON TRUST. The addition of “.com” is irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (addition of “.com” to mark is irrelevant).
The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered trademark.
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 not used the trademark WILLMINGTON TRUST or any misspelling thereof in association with any goods or services offered by Respondent.
The Respondent is not affiliated with Complainant and has never been authorized by Complainant to use the WILMINGTON TRUST trademark or any trademark confusingly similar thereto. The domain names in dispute are used by Respondent for websites that include sponsored links promoting products offered by competitors of Complainant. The use of the domain names in dispute to promote competitors products is not a legitimate use of the domain names. Respondent did not file any evidence to demonstrate Respondents rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to 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 names in dispute.
C. Registered and Used in Bad Faith
Having regard to Complainant’s longstanding use of the trademark WILMINGTON TRUST since 1903 and use of its domain name and the deliberate misspelling (typosquatting) of Complainants trademark in the domain names in dispute, links to banks and financial institutions found on the web pages associated with the domain names in dispute, the panel finds that Respondent was aware of Complainant’s trademark prior to the respective dates of registration of the domain names in dispute.
Respondent used the domain name in dispute to intentionally attract internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s websites. Lilly ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729; Wilmington Trust Company v. Domaincar, WIPO Case No. D2006-0045; Caesars World, Inc. v. Digi Real Estate Foundation WIPO Case No. D2005-0425.
Moreover, Respondent has engaged in a pattern of bad faith registering of domain names incorporating terms in which it has no legitimate rights. Medico Health Solutions, Inc. v. Digi Real Estate Foundation Inc., WIPO Case No. D2006-0472; Caesar’s World ,Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0425. In both cases the domain names in dispute were ordered to be transferred to the Complainants.
The Panel finds that Complainant has proven that Respondent registered and used the domain names in dispute in bad faith as setout in paragraph 4(b)(iv) of the Policy.
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.
Ross Carson
Sole Panelist
Dated: July 31, 2006.
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