WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forbes LLC v. Web Development Group Ltd.
Case No. D2006-1655
1. The Parties
The Complainant is Forbes LLC, of New York, NY United States of America, represented by Robert J. Schoenberg, United States of America.
The Respondent is Web Development Group Ltd., of Belize City, Belize.
2. The Domain Names and Registrar
The disputed domain names are and . The domain name is registered with iH Inc. d/b/a DotR. The domain name is registered with Tucows Inc.
3. Procedural History
According to the information provided by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:
The Complaint was filed with the Center on December�28,�2006.
On December�29,�2006, the Center transmitted by email to the registrars, iH Inc. d/b/a DotR and Tucows Inc., Requests for Registrar Verification in connection with the disputed domain names. On December�29,�2006 and January�2,�2007, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant of the disputed domain names and providing the registrant contact details for the disputed domain names.
In response to an email from the Center, the Complainant filed an Amendment to Complaint on January�25,�2007 removing the domain name from the Complaint.
The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with Rules paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding commenced on January�26,�2007.
On February�2,�2007, at the request of the Complainant, the Center suspended this proceeding until March�4,�2007, to give the parties an opportunity to discuss the possible settlement of the dispute that is the subject of this proceeding. The parties did not conclude a settlement.
On March�6,�2007, at the request of the Complainant, the Centre re-instituted this proceeding, and notified the Respondent that the due date for its Response to the Complaint was March�19,�2007.
The Respondent failed to file a Response within the prescribed time limit or at all, and on March�22,�2007, the Center delivered a Notification of Respondent Default to the Respondent.
The Center appointed Bradley J. Freedman as the sole Panelist in this proceeding on April�3,�2007. The Panelist submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7. The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Based upon the information provided by the Center, the Panel finds that all technical requirements for this proceeding have been met.
On April�10,�2007, the Panel issued an Administrative Panel Order requesting further evidence and submissions from the parties on a specific issue, and stipulating dates for the delivery of the evidence and submissions. The Complainant timely filed its submissions in response to the Order. The Respondent did not file any evidence or submissions. The decision due date was extended to May 9, 2007.
4. Factual Background
The following information is derived from the Complaint and supporting evidence submitted by the Complainant.
The Complainant and its predecessor and affiliates are internationally known companies that participate in a broad range of businesses in the publishing, investment, financial and business fields using a family of registered and common law trademarks and service marks based upon the word mark FORBES.
Since 1917, the Complainant and its predecessor have published FORBES magazine, a bi-weekly business magazine that has an extensive United States of America and worldwide circulation. Since long prior to 2002, the Complainant and its predecessor have published other print magazines that use the FORBES name, including FORBES FYI (now titles FORBESLIFE) and FORBES ASIA.
In 1997, the Complainant and its predecessor expanded into electronic commerce and information delivery services through the Internet using the domain name , which provides on-line publications, webcasts, market updates, and information about a wide variety of subjects, including e-commerce, business, finance, investing, economics, politics, entertainment, and travel and leisure. The Complainant also uses its website to publish on-line versions of its print publications, such as “Forbes”, “Forbeslife” and “Forbes Asia”.
The Complainant is the owner of numerous FORBES-related trademarks registered in the United States of America, including the marks FORBES, FORBES FYI, FORBES ASAP, FORBES FORTY, FORBES GLOBAL, and FORBES.COM. The trademark FORBES was registered a number of times, the earliest in 1980, for use in association with various wares and services, including publications, electronic databases of articles and computer services.
The Complainant is also the registered owner of various domain names containing the FORBES mark, including , , , and . The was registered in 1993.
The Complainant and its predecessor have spent millions of dollars to advertise and promote its services and publications under the FORBES name and marks, and have built up an extensive reputation to world-wide renown in connection with its publishing and information services operations.
The disputed domain name was registered on April�26,�2002. The disputed domain name was registered on July�29,�2006.
In November�2006, the disputed domain name resolved to a website that provided links to websites relating to the following subjects: travel, finance, home, business, entertainment, and lifestyle.
In November�2006, the disputed domain name resolved to a website that provided links to websites relating to the following subjects: travel, finance, home, business, entertainment, and lifestyle. In addition, the website provided various specific links, including links identified as “Forbes”.
In addition to the disputed domain names and , the Respondent is also the registered owner of the domain name , which in November 2006 also resolved to a website that provided links to websites relating to various subjects as well as links identified as “Forbes”. The domain name is not the subject of the amended Complaint.`
There is no relationship between the Complainant and the Respondent. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark FORBES or to register or use any domain name incorporating the FORBES mark or any similar term.
The Respondent has not filed a Response to the Complaint or answered the Complainant’s factual assertions or evidence in any other manner.
On its own initiative, the Panel attempted to access the Respondent’s websites using the disputed domain names. (This practice has been adopted by numerous panels: see Corinthians Licenciamentos LTDA v. Sallen, WIPO Case No. D2000-0461 (July�17,�2000); Commonwealth Hotels Inc. v. CCD Internet, Case No. AF-00771 (May�17,�2001); Link Clicks Inc. v. John Zuccarini, WIPO Case No. D2000-1547 (January�12, 2001); and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (January�20,�2003).) The disputed domain name does not currently resolve to an active website. The disputed domain name currently resolves to websites that provide “sponsored links” to various other websites, including links to the Complainant’s website at “www.”. The sponsored links indicate that they originate from a service called R, which provides paid advertising to website owners.
5. Parties’ Contentions
Complainant
The Complainant contends as follows:
(i) The Complainant is the owner of various FORBES trademarks registered in the United States of America, and the disputed domain names are confusingly similar to the Complainant’s FORBES trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names.
(iii) The Respondent has engaged in typo-squatting. The Respondent registered and is using the disputed domain names in bad faith because it is generating revenue by using the disputed domain names, which are common misspellings of the Complainant’s FORBES trademark, to intentionally divert Internet users seeking the Complainant’s website to websites that provide commercial advertising.
Respondent
The Respondent has not filed a Response to the Complaint or answered the Complainant’s contentions in any other manner.
6. Discussion and Findings
The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants. The narrow scope of the Policy reflects its origin as a novel form of Internet dispute resolution designed to balance a wide range of perspectives regarding the regulation of Internet conduct.
The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy paragraph 4(a): (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the registrant has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy. It is not sufficient for a complainant to make assertions without providing proof.
The Respondent’s Default
Rules paragraph 10(a) requires that the Panel ensure that each party is given a fair opportunity to present its case. Rules paragraph 14 reads as follows:
Default
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
The correspondence on file with the Center demonstrates that the Respondent was aware of this proceeding. In particular, there is an email to the Center from a lawyer on behalf of the Respondent commenting on the reasons why the parties were unable to reach a settlement. The content of that email, and other correspondence regarding potential settlement, are irrelevant to the issues before the Panel, and have not been considered by the Panel in its deliberations. Nevertheless, the correspondence establishes that the Respondent was aware of this proceeding.
In the circumstances, the Panel finds that the Respondent has been given a fair opportunity to answer the Complaint, and the Panel will proceed to a decision.
The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply, as set forth in this decision.
Identical or Confusingly Similar
The Complainant is the owner of the trademark FORBES registered in the United States of America for use in association with, among other things, publications and electronic databases of articles, and uses that mark in association with its businesses. The Complainant’s FORBES trademark is well-known, by virtue of its extensive and long-term adoption and use. The Complainant’s assertions in this regard are supported by documentary evidence. The Respondent has not filed a reply to the Complaint or contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the trademark FORBES.
The Complainant’s FORBES trademark was registered in the United States of America long before the Respondent registered the disputed domain names.
The Policy requires that the disputed domain names be “identical or confusingly similar” to the Complainant’s FORBES trademark. Neither the Policy nor the Rules provide any guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in the decisions is that the appropriate test for confusing similarity is a literal comparison of the disputed domain name and the complainant’s trademark. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions , section 1.1.
The literal comparison approach is supported by a number of considerations:
1. The language of Policy paragraph 4(a) should be interpreted in a purposive manner consistent with the Policy’s remedial nature and objective – to prevent the extortionate behavior known as “cybersquatting”.
2. A literal comparison is consistent with a common purpose of domain names – to indicate the nature and content of the websites to which they resolve.
3. The language of Policy paragraph 4(a) does not invoke a likelihood of confusion test, as contrasted with Policy paragraph 4(b)(iv) which expressly refers to a “likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the registrant’s] website or location or of a product or service on [the registrant’s] website or location” as an indication of bad faith domain name registration and use.
4. The Policy is international and, in the absence of express language, it is inappropriate to import into Policy paragraph 4(a) a test that may not exist under all national trademark laws.
5. The procedure contemplated by the Policy is not well suited to the kinds of factual issues presented by a conventional source confusion analysis. In particular, the Policy is intended to be a relatively quick and inexpensive process, panels must make factual determinations based upon written submissions and documentary evidence, complainants have no right of reply without the panel’s permission, and parties are often not represented by counsel.
For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the complainant’s mark.
The disputed domain names and the Complainant’s FORBES trademark are visually and phonetically similar. The differences between the Complainant’s FORBES trademark and the disputed domain names are the omission of the letter “e” and the addition of the “com” and “.biz” suffixes. We will consider each difference separately.
The “com” and “.biz” suffixes are irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Rather, one looks to the second level domain for such a determination, since the “com” and “.biz” suffixes are merely descriptive of the registry services. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Ticketmaster Corp. v. Harold Brown II, and Ted Waitt, WIPO Case No. D2001-0716; and The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746.
The disputed domain names appear to be a purposeful misspelling of the FORBES trademark by removing the letter “e”. It appears that the Respondent is engaged in a practice known as “typosquatting” – where a domain name is a slight variation from a well-known mark in order to divert Internet traffic. This practice takes advantage of Internet users inadvertently typing an incorrect address when seeking to access the trademark owner’s website. Typosquatters often profit by selling advertisements and links to websites operated by the trademark owner’s competitors.
Many panels have held that domain names based on a misspelling of trademarks, including the omission of a single letter, are confusingly similar. For example, see Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No D2001-1314 (February 12, 2002); The Nasdaq Stock Market Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492; Wachovia Corporation v. Carrington, WIPO Case No. D2002-0775 (October 2, 2002); A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 (June 28, 2006); Doctor.Ing.h.c. F.Porsche AG v. Stonybrook Investments Limited, WIPO Case No. D2001-1095 (October 26, 2001); Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035 (October�24,�2001); Arthur Guinness Son & Co. (Dublin) Limited v. Macesic, WIPO Case No. D2000-1698 (January 25, 2001); Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 (September 7, 2005); and EasyGroup IP Licensing Limited v. Sansone, WIPO Case No. D2004-0763 (November 16, 2004).
In addition, in the absence of any explanation or rationale put forward by the Respondent for its registration and use of the disputed domain names, the Panel finds that the domain names were intended by the Respondent to be confusingly similar to the Complainant’s FORBES trademark.
For those reasons, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s FORBES trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.
Rights and Legitimate Interests
The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interest in the domain name – requires the Complainant to prove a negative proposition, which can be particularly difficult.
The consensus reflected in the decisions is that the burden on a complainant regarding this element is necessarily light, because the nature of the registrant’s rights or interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name. See Packaging World Inc. v. Zynpak Packaging Products Inc., Case No. AF-0233 (July�28,�2000); Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 16, 2000); Grove Broadcasing Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0158 (May�9,�2000); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January�23,�2001); Commonwealth Hotels Inc. v. CCD Internet, Case No. AF-00771 (May�17,�2001); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January�23,�2001); Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252 (July�5,�2000); Electronic Commerce Media Inc. v. Taos Mountain, Case No. FA0008000095344 (October�11,�2000); Universal City Studios Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June�29,�2000); Springsteen v. Burgar, WIPO Case No. D2000-1532 (January�25,�2001); and Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA, WIPO Case No. D2000-1376 (March�20, 2001).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because the Complainant has not authorized the Respondent’s use of the FORBES trademark or any domain name incorporating or similar to the FORBES trademark, and the disputed domain names are not in any way identified with or related to a legitimate interest of the Respondent.
Except for the assertions in the signed and certified Complaint, the Complainant has not provided any evidence of trademark searches or other investigations to indicate that the Respondent does not have any interest in any marks that include the term “forbs” and is not commonly known as “forbs”. In some circumstances, the omission of such evidence would be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this dispute, including the apparent lack of legitimate connection or relationship between the disputed domain names and the Respondent’s name and the websites for which the disputed domain names were used by the Respondent, the signed and certified Complaint together with an adverse inference from the Respondent’s failure to reply to the Complaint or provide any justification for its registration and use of the disputed domain name, are sufficient to satisfy the Complainant’s evidentiary burden.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, it is incumbent upon the Panel to consider whether the Respondent’s use of the disputed domain names demonstrates rights or legitimate interests in the domain names. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.
To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain names must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing links to search results or other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain names is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain names are confusingly similar to the Complainant’s registered and well-known FORBES trademark; (b) there is no apparent connection or relationship between the disputed domain names and the Respondent’s name; and (c) the Respondent does not use the domain names to advertise or sell its own wares and services, but merely to provide links to “sponsored” links to other websites provided by a commercial Internet advertising service. See Wachovia Corporation v. Carrington, WIPO Case No. D2002-0775 (October 2, 2002).
In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain names.
Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain names or that the disputed domain names are derived from one of Respondent’s trademarks or trade names.
Policy paragraph 4(c)(iii) is not applicable. The Respondent was using the disputed domain names for websites that provide “sponsored” links to commercial websites provided by a commercial Internet advertising service.
For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(b)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.
“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each the following circumstances are deemed evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted 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 its website or location or of a product or service on its website or location.
The Policy expressly states that those circumstances are non-exclusive.
Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent registered and is using the disputed domain names in order to confuse and divert Internet traffic to its website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or its FORBES trademark, or intended to use the disputed domain names to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.
The Panel finds that the Respondent knew of the Complainant’s FORBES trademarks, and registered and is using the disputed domain names in order to confuse and divert Internet traffic to the Respondent’s websites, based upon the following circumstances: (a) the Complainant’s registered FORBES trademark is specific to the Complainant in connection with its publications and other wares and services, and is well-known as a result of extensive and long term use; (b)�there is no apparent connection or relationship between the disputed domain names and the Respondent or the websites for which the Respondent uses the disputed domain names; (c) the Respondent does not use the domain names to sell its own wares and services, but merely to provide “sponsored” links to other websites provided by a commercial Internet advertising service; (d) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain names for its websites; and (e) the Respondent has not denied any knowledge of the Complainant or its FORBES trademark.
In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain names.
The Panel also finds that the Respondent’s websites result in commercial gain to the Respondent. It is well known that many websites generate substantial revenue by directing traffic to other websites and search results. Based upon the information apparent from the current website, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent’s websites generates revenue for the Respondent in that manner.
The practice of registering domain names based upon misspellings of the well-known trademarks for the purpose of diverting users to an unrelated website that generates advertising revenue for the registrant been described as “classic bad faith”. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (October�2, 2002) and A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 (June�28,�2006).
In the circumstances, the Panel finds, pursuant to Policy paragraph 4(b)(iv), that the Respondent registered and is using the disputed domain names in bad faith to confuse and divert Internet traffic to its websites for commercial gain.
In the circumstances, the Panel need not consider whether Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain names in bad faith.
7. Decision
The Complainant has established each of the three requirements set forth in Policy paragraph 4(a) for each of the disputed domain names – the disputed domain names are confusingly similar to the Complainant’s FORBES trademark, the Respondent does not have any rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith.
The Panel therefore orders that the disputed domain names and be transferred to the Complainant.
Bradley J. Freedman
Sole Panelist
Dated: May 9, 2007
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