WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McIlhenny Company v. Whois Protection / Domain Name Administrator
Case No. D2007-0767
1. The Parties
The Complainant is McIlhenny Company, of Avery Island, Louisiana, United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Whois Protection / Domain Name Administrator, of West Bay, Grand Cayman Island.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2007. On May 25, 2007, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On June 5, 2007, R Services Corp transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on June 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 4, 2007.
The Center appointed Ross Carson as the sole panelist in this matter on July 9, 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 the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of numerous trademark registrations for or including TABASCO registered in the United States of America and throughout the world. Complainant is the registered owner of United States Registration No. 0223310 for the trademark TABASCO in stylized form registered on February 1, 1927 in relation to the goods pepper sauce. This early registration is based on use of the trademark TABASCO in the United States of America in association with the goods pepper sauce since 1868. In later trademark registrations for the trademark TABASCO the list of goods has been extended to include additional sauces, condiments and promotional items.
Complainant owns the domain name which was registered on March 1, 1995 and antedates the registration date of December 10, 2006 of the domain name at issue in this Complaint. Complainant operates a website associated with its domain name providing information and services related to TABASCO branded products.
The domain name in dispute in this case was the domain name in dispute in an earlier UDRP case commenced by Complainant herein. McIlhenny Company v. Express Personnel Advertising, WIPO Case No. D2006-0659. A decision in this earlier action issued ordering the transfer of the domain name to Complainant. Prior to the transfer of the domain name to Complainant being completed, the registration of the domain name expired and a party identified as Domain Administrator, with a listed PO Box address in West Bay, Grand Cayman (hereafter “Prior Registrant”) registered the domain name now at issue in this case.
Complainant’s counsel forwarded a warning letter to Prior Registrant on February 12, 2007 by email and courier. The hard copy was returned as ‘unclaimed’, and no response from Prior Registrant was received. Subsequent to February 12, 2007 the domain name now in dispute came into the hands of Respondent. Both the Respondent in the reported case, the prior Registrant in this current case and the Respondent in the current case appear to be located in West Bay on Grand Cayman Island.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant submits that the relevant portion of the domain name is identical or confusingly similar to the TABASCO trademark of Complainant because the domain name in dispute differs by only one letter from Complainant’s trademark TABASCO. In place of the single “s” in Complainant’s TABASCO trademark, Respondent has doubled the letter “s”. The minor misspelling or typographical error of a mark, does not create a new or different mark. This is particularly the case where the Complainant’s mark is well-known, as here. Registration of such domain names are known as “typo-piracy” or “typo-squatting”. (see McIlhenny Company v. Express Personnel Advertising, WIPO Case No. D2006-0659; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, where the only difference between Complainant’s mark and Respondent’s domain name was the use of the number “0” by Respondent for the letter “o” in Complainant’s mark “OXYGEN”). It is also well established that the specific top level of the domain name such as “.org”, “.net” or “.com” 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 & Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
A.2 No Right or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has not been licensed, authorized, contracted or otherwise permitted by Complainant in any way to use the TABASCO trademark or to apply for any domain name incorporating the TABASCO trademark or any mark confusingly similar to TABASCO, nor has the Complainant acquiesced in any way to such use or application by the Respondent. At no time did Respondent have authorization from Complainant to register the domain name . To the best knowledge of the Complainant, the Respondent has no legitimate right or interest in the domain name in dispute.
Complainant further submits that on information and belief that prior to the registration of the domain name Respondent did not use “Tabassco” or any mark containing “Tabassco” as a trademark, company, business or trade name. On information and belief, the Respondent is not commonly known in reference to “Tabassco” or any combination of this mark (see Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). Gallup Inc. v. Amish Country Store, NAF Case No. 96209 (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s domain registration; (3) Respondent is not commonly known by the domain name in question).
Complainant further states on information and belief that the Respondent has engaged in a pattern of registering domain names incorporating famous trademarks as domain names. The Prior Registrant and Respondent share a common telephone number and DNS information associated with their registration of the domain name in dispute and the associated website bears a copyright date of 2006 which is prior to the Respondent’s registration of the domain name. A reverse whois search revealed that the Prior Registrant owned numerous domain names which incorporate famous trademarks of musical artists, sport figures, movies, internet websites, and motor vehicle manufacturers, for example: , , , , and . Copies of the whois information for the above domain names performed in March 2007 and subsequently on May 23, 2007 reflects that these names have all migrated from the Prior Registrant to Respondent.
The registration of multiple domain names incorporating well-known trademarks amounts to bad faith (see Corbis Corporation v. RegisterF/Whois Protection Service/surf advertising company/ Joseph, Graham, WIPO Case No. D2006-0546).
Complainant further submits that the domain name in dispute was registered on December 10, 2006. At this time, the Complainant’s TABASCO trademark had long been used and widely promoted by Complainant and was well-known among consumers. In view of the above and the fact that the Respondent has registered other domain names containing well-known trademarks, it may reasonably be inferred that at the time the Respondent registered the domain name Respondent was aware of the Complainant’s trademark rights in respect of the TABASCO trademark (see Victoria’s Secret et al. v Asdak, St Johns, AG, NAF Case No. 96542).
Complainant further submits that TABASCO is a distinctive trademark. In view of this, it can be inferred that the domain name in dispute would not have been registered but for the renown of the trademark (see Nike, Inc. v B.B. de Boer, WIPO Case No. D2000-1397). This gives rise to the presumption that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
Complainant submits that Respondent does not use the domain name in dispute in connection with a bona fide offering of goods or services. The domain name is currently associated with a webpage purporting to provide information on an array of goods and services including TABASCO branded products. The links on the website are pay-per-click advertising links. The use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner cannot constitute use in connection with a bona fide offering of goods or services or otherwise be considered a legitimate interest in a domain name. In particular, the use of a well-known trademark as a domain name to link to such a pay-per-click advertising website is evidence that the Respondent deliberately seeks to capitalize on the identity or close similarity of the domain name to the Complainant’s trademark and to gain revenue therefrom (see McIlhenny Company v. Express Personnel Advertising, WIPO Case No. D2006-0659; E, Inc v. Domain Administrator, WIPO Case No. D2006-1195).
A.3 Registered and Used in Bad Faith
Complainant submits on information and belief, that in registering and using the domain name in dispute, Respondent has intentionally attempted 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 of the Respondent’s website. The domain name is currently associated with a webpage directly referencing Complainant’s trademark TABASCO and purporting to provide information on an array of goods and services identical to or related to Complainant’s goods and services. The links on the website are pay-per-click advertising links. The use of a well-known trademark as a domain name to link to such a pay-per-click advertising website is evidence that the Respondent deliberately seeks to capitalize on the identity or close similarity of the domain name to the Complainant’s trademark and to gain revenue therefrom by diverting consumers in connection with identical or related goods and services. (see E, Inc v. Domain Administrator, WIPO Case No. D2006-1195).
Complainant further submits that the registration of multiple domain names incorporating well-known trademarks amounts to bad faith (see Corbis Corporation v. RegisterF/Whois Protection Service/surf advertising company/ Joseph, Graham, WIPO Case No. D2006-0546.
The registration of a domain name identical or confusingly similar to a well-known trademark by a person with no connection to that trademark amounts to “opportunistic bad faith” (see Expedia, Inc. v European Travel Network, WIPO Case No. D2000-0137).
B. Respondent
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 prove 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 TABASCO registered in the United States of America since 1928 based on use in commerce since 1868 in relation to the goods pepper sauce. The trademark TABASCO has been used in commerce and registered as a trademark in many other countries throughout the world in association with pepper sauce.
The domain name in dispute is, in all likelihood, a purposeful misspelling of Complainant’s trademark TABASCO in which a single letter “s” has been added to Complainant’s registered trademark TABASCO for the purpose of misleading Internet users who misspell Complainant’s trademark to Respondent’s website associated with the purposely misspelled domain name in dispute. The purposeful misspelling of Complainant’s trademark TABASCO results in a confusingly similar domain name under paragraph 4(a)(i) of the Policy. See McIlhenny Company v. Express Personnel Advertising, WIPO Case No. D2006-0659; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered trademark TABASCO.
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.
On the material before the Panel, Respondent has not used the trademark TABASCO or any misspelling thereof in association with any bona fide goods or services offered by Respondent. Respondent is not affiliated with Complainant and has never been authorized by Complainant to use the TABASCO trademark or any trademark confusingly similar thereto. The domain name in dispute is used for a website that includes sponsored links promoting products offered by competitors of Complainant. The use of the domain name in dispute to divert Internet traffic in such fashion is not a legitimate use of the domain name. 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.
Complainant has used the TABASCO trademark in association with pepper sauce since 1868 in the United States of America and such adoption and use substantially precedes the registration date of the domain name in dispute on December 10, 2006. Through long and substantial use of the registered trademark TABASCO in association with pepper sauce it can reasonably be inferred that the Respondent had notice of the TABASCO trademark at the time when it registered the domain name in dispute. (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
Having regard to the inherent distinctiveness of Complainant’s Registered trademark TABASCO, the substantial use of the trademark TABASCO and the apparently deliberate misspelling (typosquatting) of Complainant’s trademark in the domain names in dispute, links to sauces found on the web pages associated with the domain name in dispute, the panel finds that Respondent was aware of Complainant’s trademark prior to the date of registration of the domain name in dispute on December 10, 2006.
The domain name is associated with a webpage providing information on an array of goods and services including TABASCO branded products. The links on the website have the appearance of pay-per-click advertising links. The use of a widely known trademark as a domain name to link to a pay-per-click advertising website is a persuasive indication that the Respondent intentionally seeks to capitalize on the identity or close similarity of the domain name in dispute to the Complainant’s trademark to gain revenue therefrom by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website. McIlhenny Company v. Express Personnel Advertising, WIPO Case No. D2006-0659; Lily ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729.
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 name be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: July 21, 2007
Full & Egal Universal Law Academy