WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSX IA, Inc. v. Registrant [190789]: International Domain Names Inc / Registrant [342921], Moniker Privacy Services
Case No. D2007-0611
1. The Parties
The Complainant is CSX IA, Inc. of Sulphur Springs, West Virginia, United States of America, represented by McGuireWoods LLP, United States of America.
The Respondent is Registrant [190789]: International Domain Names Inc of Warrens, St. Michaels, Barbados / Registrant [342921], Moniker Privacy Services of Pompano Beach, Florida, United States of America.
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 April 20, 2007. On April 24, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 14, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response stating that Registrant [190789]: International Domain Names Inc is listed as the registrant and providing the contact details. In response to an e-mail communication from the Center of May 15, 2007 indicating that the Registrant information provided by the Registrar is different to the entity named in the Complaint as the Respondent, the Complainant filed an amended Complaint on May 18, 2007. The Amended Complaint named Registrant [190789]: International Domain Names Inc as the current Respondent. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 22, 2007. 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 paragraph 7 of the Rules.
On July 2, 2007, the Panel issued Procedural Order No. 1 seeking further particulars from the Complainant to be filed no later than July 9, 2007, with a corresponding opportunity for the Respondent to file a reply no later than July 13, 2007. The further particulars requested from the Complainant consisted of evidence of the Complainant’s ownership in the various trademark registrations listed in and annexed to the Complaint. In response to Procedural Order No. 1, the Complainant filed a further submission (including evidence) on July 5, 2007.
The Respondent did not take up its opportunity to file a reply to the Complainant’s further submission.
4. Factual Background
The Complainant in this administrative proceeding is CSX IA, Inc., a United States of America company organized and existing under the laws of the State of Delaware. The Complainant owns various trademarks THE GREENBRIER registered with the United States Patent and Trademark Office, including THE GREENBRIER (United States registration number 1482046) for resort hotel services with a priority of August 4, 1987 (the GREENBRIER marks). While the GREENBRIER marks were previously owned by the parent company of the Complainant (CSX IP, Inc.), it has become clear from the Complainant’s further submission that they were transferred from CSX IP, Inc. to the Complainant before the filing of the Complaint in this dispute.
The disputed domain name was first registered on June 8, 2006. At least on April 12, 2007, the listed registrant of record was Registrant [342921], Moniker Privacy Services, a privacy service offered by the Registrar to owners of domain names. At some point of time thereafter, the listed registrant of record was disclosed as to Registrant [190789]: International Domain Names Inc.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(i) The domain name is confusingly similar to the GREENBRIER marks as it fully incorporates the Complainant’s trademark GREENBRIER except for a minor misspelling (substitution of “e” by “a”) and the addition of the generic term “hotels”, which only increases the confusion, given that a substantial activity of the Complainant is the rendering of hotel services.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as no trademarks comprising the word “greenbriar” seem to belong to the Respondent, as the name of the Respondent bears no connection to the disputed domain name, as the Respondent is using the Complainant’s trademark to divert Internet users to a parking website with links to (among others) hotel services, as the Respondent is not affiliated with the Complainant, and as the Respondent Registrant [342921], Moniker Privacy Services never replied to the Complainant’s attempts to contact it.
(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith. Firstly, the choice of a domain name incorporating a confusingly similar approximation of a well-known and distinctive trademark is in the absence of any rights or legitimate interests itself considered to be an indication of bad faith registration. Secondly, the substitution of the letter “e” by “a” is as typo-squatting considered to be evidence of bad faith and that bad faith is reinforced by the addition of the term “hotels”. Finally, the Respondent is supposed to engage in revenue generating activities called “click-through” by appropriating a domain name confusingly similar to the Complainant’s trademark, thereby illegitimately capitalizing on the GREENBRIER marks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The original registrant identity and subsequent change described above suggest that this is a case in which privacy services may be in use, and that even a third party beneficial registrant (owner) of the disputed domain name may exist.
The Complainant provided evidence that the disputed domain name was registered in the name of Registrant [342921] Moniker Privacy Services at least until April 12, 2007, i.e. until eight days before the Complaint was filed with the Center. The Center was informed by the Registrar on May 14, 2007 that the domain name was registered on such date in the name of Registrant [190789]: International Domain Names Inc. Registrant [342921], Moniker Privacy Services, is a privacy domain name registration service.
Previous panels have in similar cases been prepared to treat both the initially listed registrant and the subsequently disclosed registrant as Respondent (cf. TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620; WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975; Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585). In the present case, Registrant [342921], Moniker Privacy Services appears to have been correctly identified in the Complaint as the listed registrant of record in the Whois at the time the Complaint was filed. The registrar appears to have subsequently disclosed the identity of another shield or a third party beneficial registrant, Registrant [190789]: International Domain Names Inc, which has later on also been named by the Complainant in the amended Complaint as a Respondent. Accordingly, it is in the Panel’s view appropriate for both of these entities to be included as Respondent in the present case, and the Panel will refer to them collectively as the Respondent except as noted otherwise.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name almost incorporates the Complainant’s highly distinctive GREENBRIER marks in which the Complainant has exclusive rights.
The mere addition of the generic word “hotels” following the trademark does not eliminate the similarity between the Complainant’s marks and the disputed domain name, as “hotels” is a common term describing the Complainant’s field of services. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. V. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, the substitution of the letter “e” by an “a” in the Complainant’s GREENBRIER marks must be considered as a case of so-called “typo-squatting”: The term “greenbriar” within the disputed domain name is nearly identical to the GREENBRIER marks in their visual impression and identical to them in their sound impression. An Internet user or consumer viewing the disputed domain name is likely to confuse it with the Complainant’s GREENBRIER marks (cf. VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; Network Solutions, LLC v. Center for Ban on Drugs, WIPO Case No. D2005-0454; Network Solutions, LLC v. Research Center, WIPO Case No. D2005-0451; Federated Western Properties, Inc. v. John Zuccarini dba Cupcake Patrol, RaveClub, and RaveClub Berlin, WIPO Case No. D2003-0298).
Finally, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. 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; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026).
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s GREENBRIER marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, the respondent 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 the respondent’s website or location or of a product or service on its website or location.
The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
With a view to the high level of distinctiveness of the GREENBRIER marks and their use by the Respondent, providing already on June 29, 2006 (i.e. shortly after the creation of ) links on the website under the disputed domain name to hotels, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights therein. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s marks and thus in bad faith.
Moreover, the Respondent also used the disputed domain name in bad faith: Screen shots of the Respondent’s web page under the disputed domain name show that the domain name redirects users to a parking website that provides links to third parties which compete with the Complainant’s hotel services. These parking websites typically offer domain name holders to earn click through fees for redirecting Internet users to competing websites and thus capitalizing on the goodwill of third parties trademarks. This behavior qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website. On this evidence, the Panel finds bad faith proven under paragraph 4(b)(iv) of the Policy.
Therefore, the Complainant has also satisfied the requirements of paragraph 4(a)(iii) 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 name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: July 18, 2007
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