WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Neteller Plc. v. Prostoprom
Case No. D2006-0874
1. The Parties
The Complainant is Neteller Plc., c/o NT Services Limited, Legal, Corporate & Regulatory Affairs, Calgary, Alberta, Canada, represented by Brownlee LLP, Barristers & Solicitors, Canada.
The Respondent is Prostoprom, Woodland Hills, California, 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 July 6, 2006 electronically and on July 11, 2006 in hardcopy. On July�12,�2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July�12,�2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant with regard to the domain names in dispute 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 July�13,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August�2,�2006. The Response was filed with the Center July�14,�2006.
The Center appointed Torsten Bettinger, Alan L. Limbury and Andrea Mondini as panelists in this matter on August�24,�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
Complainant is a large, publicly-traded financial-service provider, providing on-line e-wallet services related to facilitating the purchase of other services on-line, including on-line sports betting and on-line gaming. In 2005, about 3,400 on-line merchants were accepting payments using Complainants services. Complainant is listed on the London Stock Exchange since April�2004. Complainant has about 2.3 million members using its financial services around the world.
Complainant is owner of the following registered trademarks and trademark applications:
- NETELLER.COM, registered in the U.S. (Reg. No. 2603878), Canada (Reg. No. TMA570,278), European Community (Reg. No. 004262416), Hong Kong, SAR of China (Reg. No. 300357345), Japan (Reg. No. 4913158) and Taiwan, Province of China (Reg. No. 01180208)
- NETELLER & device, registered in the U.S. (Appl. No. 78/495358), Canada (Reg. No. TMA651,059), European Community (Reg. No. 004262391), Hong Kong SAR of China (Reg. No. 300359668), Japan (Reg. No. 4913161) and Taiwan, Province of China (Reg. No. 01167600)
- NETELLER & device, registered in the U.S. (Appl. No. 78/499650), Canada (Reg. No. TMA663,971), European Community (Reg. No. 004261971), Hong Kong SAR of China (Reg. No. 300366246), Japan (Reg. No. 4913162) and Taiwan, Province of China (Reg. No. 01167601)
- NETELLER, registered in the U.S. (Reg. No. 2,812,884), Canada (Reg. No. TMA593,937), European Community (Reg. No. 003602752), Hong Kong SAR of China (Reg. No. 300357354), Japan (Reg. No. 4913157), Singapore (Reg. No. T05/14981C), South Korea (Appl. No. 2005-27804) and Taiwan, Province of China (Reg. No. 094007099)
Respondent registered the disputed domain names in September 2005.
5. Parties’ Contentions
A. Complainant
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the words “bonus” and “reviews” are descriptive and therefore do not eliminate the similarity between Complainant’s trademarks NETELLER and the disputed domain names.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that Respondent has not been authorized to use the NETELLER trademarks in its domain names nor to make any suggestion that he is endorsed by or otherwise affiliated with the Complainant, nor otherwise to trade off the goodwill of the Complainant including advertising online gaming merchants that may accept payment using the Complainant’s online payment system. Furthermore, Complainant asserts that Respondent has no legitimate interest in the domain names through use of the domain names in connection with a bona fide offering of services or through being known by the domain names.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that there is no reason for Respondent to use Complainant’s mark in the disputed domain names other than to use it to attract Internet users to Respondent’s website for commercial gain by using domain names which are confusingly similar to Complainant’s trademarks. Complainant alleges that by using NETELLER, Respondent is creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered on the website.
B. Respondent
Respondent disputes that it has no right or legitimate interest in the domain name and that it has registered and is using the disputed domain names in bad faith. In support of this assertion Respondent argues that
- it creates web sites that state its comments, ideas and allow people to place their reviews on different online products around the web;
- websites available at the disputed domain names are promoted by search engines, gain traffic from web readers and are then sold or used to place advertisements within an affiliate programs;
- it does not deal with any “phishing” or misleading of customers;
- it publishes articles and reviews advertising methods with honest recommendations of web products which are beneficial for the visitor;
- Respondent earns an average of $1000-$1500 a month;
- the website available at the domain name contains a monitored forum allowing Ewallets customers to write their opinion on the online service they have received;
- the website available at the domain name is dedicated to publishing opinions about the Neteller, offering the visitors promotions for Neteller users and provide information of Neteller news.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has provided evidence of a trademark registration consisting of the term NETELLER and proven that the disputed Domain Names are confusingly similar to Complainant’s mark.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement cases (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 , Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 , Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 , AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 , , BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
The disputed domain names wholly incorporate Complainant’s trademark NETELLER, used in connection with payment services. The fact that the words “bonus” or “reviews” are added to Complainant’s unique, invented mark “Neteller” does not eliminate the similarity between Complainant’s trademark and the disputed domain names, as “bonus” and “reviews” are descriptive components of the disputed domain names. In numerous cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
It is also well established that the specific top level of a domain name such as “.com”, “.org”, “.net” or “.name” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel thus finds that the domain names and are confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph�4(c) of the Policy requires Complainant to prove that Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that Respondent has no rights or legitimate interests, and Respondent fails to show any one of the three circumstances under Paragraph�4(c) of the Policy, then Respondent may lack a legitimate interest in the domain name.
Complainant has proven that Respondent has registered and is using domain names which are confusingly similar to Complainant’s trademark NETELLER and asserted that Respondent has neither a licence nor any other permission to use Complainant’s trademark NETELLER. Respondent has not denied this assertion. The Panel thus finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates Complainant’s mark.
Respondent has not provided evidence of circumstances of the type specified in paragraph�4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Respondent is not a reseller of Complainant’s NETELLER payment services, but is using Complainant’s trademark to divert Internet users to a website with various banner advertisements and links to online gambling portals and thus capitalizing on Complainant’s mark. This use is not a bona�fide offering of goods and services pursuant to paragraph�4(c)(i) of the Policy.
Respondent is also not making a legitimate noncommercial or fair use of the disputed domain names.
Respondent appears to argue that it has rights or legitimate interests in the domain name under paragraph 4(c)(iii) of the Policy, because an intended and actual use of the web site has been to provide space for opinions and commentary regarding the Complainant’s payment services. However, it is clear that this has not been the only use to which the web site has been put by Respondent. Respondent itself points out that it has created the sites to gain traffic of web readers and sell the sites or place ads on them as an affiliate for commercial gain.
Even if the sites available at the disputed domain names were purely commentary or opinion sites, Respondent would not be entitled to use NETELLER mark in the domain names. As even though Respondent may have the right to establish a commentary or opinion site it is not necessarily entitled to use Complainant’s name or mark as part of its addresses for such a websites. Respondent consciously chose the domain names at issue to lead Internet users to its sites and is probably counting on initial confusion to direct Internet users to these websites. Disclaimers and links directed to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with Complainant (See Est�e Lauder Inc. v. , and Jeff Hanna, WIPO Case No. D2000-0869; The New York Times Company v. New York Internet Services, WIPO Case No. D2000-0172).
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph�4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Panel is also convinced that Respondent registered and has been using the domain names in bad faith. Complainant’s trademark NETELLER is widely known. That and the contents of the two sites, including the disclaimer, demonstrate that Respondent registered the domain names while being aware of Complainant’s rights in its NETELLER marks.
On this record, it is also clear that Respondent has intentionally attempted to attract Internet users “for commercial gain to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website”.
Respondent itself admitted that the purpose of the sites is to stimulate traffic in the hope of earning advertising revenue from banners on the sites or selling the sites. Respondent registered domain names which, apart from the descriptive terms “bonus” or “reviews”, are identical to Complainant’s trademark NETELLER. This creates confusion between the domain names and the mark in issue and it is this confusion on which Respondent relies to attract visitors to its sites. Moreover, Respondent posted content on these sites which creates the impression that�these sites are operated by Complainant. As the Panel has noted above, disclaimers and links to the authorized site do not dispel the initial confusion.
The Panel therefore concludes that Respondent registered and is using the domain names and in bad faith and that the requirement of paragraph�4(a)(iii) of the Policy is satisfied.
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.
Torsten Bettinger
Presiding Panelist
Alan L. Limbury
Panelist
Andrea Mondini
Panelist
Date: September 12, 2006
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