WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Debevoise & Plimpton LLP v. Keyword Marketing, Inc. / Web Advertising, Corp.
Case No. D2007-1679
1. The Parties
Complainant is Debevoise & Plimpton LLP, New York, United States of America, represented internally.
Respondent is Keyword Marketing, Inc. / Web Advertising, Corp., respectively, Charlestown, West Indies, Saint Kitts and Nevis and Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names and are registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2007. On November 15, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On November 26 and November 27, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2007.
The Center appointed Ross Carson as the sole panelist in this matter on December 28, 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.
The domain names in dispute are registered in the names of different registrants. The domain name was registered on October 7, 2006 in the name of Keyward Marketing, Inc. of Charlestown, West Indies, Saint Kitts and Nevis. The domain name was registered on November 18, 2006 in the name of Web Advertising, Corp. of Nassau, Bahamas. Pursuant to paragraph 3(c) of the Rules the Complaint may relate to more than one domain name providing the domain names are registered by the same domain name holder. Decisions in two previous UDRP proceedings have found Keyword Marketing Inc. and Web Advertising, Corp. to be the same entity. See E, Inc. v. Web Advertising, Corp./Keyword Marketing, Inc., WIPO Case No. D2006-1380 (treating Web Advertising and Keyword Marketing as a single entity for purposes of UDRP challenge); Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc., WIPO Case No. D2007-0678 (treating Web Advertising and Keyword Marketing as one entity and noting that neither Keyword Marketing nor Web Advertising contested the Complainant’s allegation that they were the same entity).
The landing pages associated with both domain names in dispute include “Sponsored Links” and “Related Categories” relating to law firms and the law services provided by the various law firms. The “Sponsored Links” associated with both the domain names in dispute include numerous links to law firms in central Canada. The “Sponsored Links” also redirect users of the domain names in dispute to law firms in New York City other than Complainant. The “Related Categories” of the landing pages associated with the domain name include “Debevoise and Plimpton”, “Debevoise Law Firm” and “Debevoise Plimpton Law Firm”, and in the case of include “Law Advice”, “Law Firm”, and “Lawyers”. In addition to the common features found on the landing pages both registrants of the domain names in dispute are located in the West Indies. Neither of the Registrants of the two domain names in dispute has filed a reply contesting Complainants allegation that the registrants of the domain names in dispute are the same domain name holder.
Two other entities named as respondents in UDRP Proceedings are recorded as having the identical postal address to Keyword Marketing and appear to be aliases for the same domain name holder. See Enterprise Rent-A-Car Company v. Domain Drop S.A., NAF FA0612000862698 (noting the address for the respondent Domain Drop S.A. as P.O. Box 556, Main Street, Charlestown, West Indies KN); Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451 (noting the address for the respondent Marketing Total, S.A. as P.O. Box 556, Main Street, Charlestown, West Indies KN). The Debevoise & Plimpton LLP v. Marketing Total S.A. case Id. involved the domain name . The panel found that the respondent was involved in typosquatting and ordered that the domain name in dispute be transferred to the complainant owner of the trademark DEBEVOISE. Complainant has referred to over twenty cases in which the four entities referred to above have been found to be cybersquatters who regularly use domain names that are well-known trademarks or misspellings of well-known trademarks as landing pages to misdirect Internet users to third-party websites.
Having regard to the evidence and the absence of any reply contesting Complainant’s evidence the Panel is satisfied that Keyword Marketing, Inc. and Web Advertising, Inc. are the same entity and are properly named as Respondent.
4. Factual Background
Complainant is a well known international law firm with 630 lawyers located in offices in New York, Washington, D.C., Paris, London, Frankfurt, Hong Kong,
Moscow, and Shanghai. The firm was founded on October 1, 1931 by Eli Whitney Debevoise and William Edwards Stevenson as Debevoise & Stevenson. After several intermediate variations, the name was institutionalized as Debevoise & Plimpton on October 1, 1981, in honor of the 50th anniversary of the founding of the firm. Throughout this period, the firm has been known by the name “Debevoise”. Debevoise’s premier law practice has attracted substantial press and media attention worldwide.
Complainant is the sole and exclusive owner of a number of federally-registered trademarks in the United States of America, including DEBEVOISE (Reg. No. 2,777,096 (Oct. 28, 2003)) and DEBEVOISE & PLIMPTON (Reg. No. 2,513,942 (Dec. 4, 2001)). The trademarks are registered in relation to legal services in Class 42. Complainant also owns a number of trademark registrations for DEBEVOISE and DEBEVOISE & PLIMPTON in other countries, including the European Community, Hong Kong, SAR of China, Japan, the Russian Federation, South Korea, and Turkey. The DEBEVOISE trademark is well-known throughout the international legal and business community and is among Complainant’s most valuable assets.
Complainant has an active presence on the Internet. The principal domain name currently registered and used by Complainant is registered with Network Solutions, LLC on June 13, 1996.
Respondent registered the domain names in dispute, on October 7, 2006 and on November 18, 2006.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant states that it is the registered owner of the registered trademarks DEBEVOISE and DEBEVOISE & PLIMPTON as described in paragraph 4 immediately above.
Complainant submits that the domain names in dispute registered by Respondent are confusingly similar to Complainant’s well known DEBEVOISE registered trademark. It is well established that the addition of a gTLD such as “.com” is without legal significance in determining identity or similarity. See, e.g., Habit Holding Co., L.L. C. v. None /Michael Pimentel, WIPO Case No. D2004-1009; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035. The relevant comparison is between the DEBEVOISE registered trademark and the second-level domains “debevois” and “debvoise”.
Complainant further submits that Respondent is engaged in “typosquatting”, which has been defined as “a form of cybersquatting in which a respondent registers and uses a domain name in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website”. A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517. The second level domains in dispute “debevois” and “debvoise” are common mistypings of Complainant’s registered trademark DEBEVOISE because: (1) Respondent’s domain names differ from Complainant’s mark only by one letter and (2) in both cases, the missing letter “e” is soft in sound and, thus, easy to omit when attempting to spell “Debevoise”. Various cases have found domain names that were common mistypings of the marks at issue to be confusingly similar to the relevant marks. See id.; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556, (concluding that the domain name was confusingly similar to the mark Volvo because respondent sought to take advantage of Internet users typing of an incorrect address when seeking to access complainant’s website).
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no rights or legitimate interests with respect to the domain names in dispute. Respondent has not used or prepared to use the domain names in dispute in connection with any bona fide offering of goods or services, has not been commonly known by the domain names, and has not made any noncommercial or fair use of the domain names in dispute. Policy, paragraph 4(c).
Complainant states that there is no relationship or affiliation between Complainant and Respondent giving rise to any license, permission or other right by which Respondent could own or use any domain name incorporating Complainant’s registered trademark DEBEVOISE. The only purpose for Respondent’s use of the domain names in dispute is to trade unlawfully off the value and goodwill of Complainant’s registered trademark DEBEVOISE. The domain names in dispute bear no relationship to the “business” of Respondent, which appears to consist solely of using well-known trademarks as pay-per-click landing pages to divert users to linking portals for profit.
Complainant further submits that Respondent is using the domain names in dispute to direct Internet users to websites of Complainant’s competitors. In Baudville, Inc. v. Henry Chan, WIPO Case No. D2004-0059, respondent linked its website to websites selling lapel pins and other goods sold by complainant, owner of the Baudville trademark. The panel found that directing Internet users to websites of complainant’s competitors cannot be a legitimate interest under the Policy. So too, Respondent’s use of the domain names in dispute to link to Complainant’s competitors cannot be legitimate. See also Toyota Motor Credit Corporation v. Digi Real Estate Foundation, WIPO Case No. D2006-1619, (holding that a landing page with sponsored links to complainant’s competitors is not a legitimate use or interest in the disputed domain name).
Complainant states that as Respondent has failed to use the domain names in dispute in connection with a bona fide offering of goods or services, Respondent lacks a legitimate interest in the domain names in dispute under the Policy. See Policy, paragraph 4(c)(i) (requiring use of the domain names in connection with a bona fide offering of goods or services “before any notice to [Respondent] of the dispute”).
A.3 Registered and Used in Bad Faith
Complainant submits that its trademark DEBEVOISE was both famous and distinctive at the time that Respondent registered the domain names in dispute.
Complainant states that Respondent registered the domain name on October 7, 2006 and the domain name on November 18, 2006 without its authorization. Respondent registered the domain names in dispute more than seventy-five years after Complainant was founded, more than a decade after Complainant registered its domain name , and more than three years after Complainant had registered the DEBEVOISE trademark.
Complainant submits that there can be no doubt that Respondent was aware of Complainant’s rights in the DEBEVOISE trademark at the time Respondent registered the domain names in dispute, because: (1) the domain names are identical to the DEBEVOISE trademark with one letter altered, and (2) the website lists “Related Categories”, including “Debevoise and Plimpton”, “Debevoise Law”, “Debevoise Associate”, “Debevoise Salaries”, “Debevoise Law Firm”, “Debevoise Plimpton Law”, and “Debevoise Plimpton Law Firm”, and the website lists “Related Categories”, including “Attorney Services”, “Law Firm”, “Lawyers” and “Law Services”.
Complainant states that Respondent is a serial cybersquatter who regularly uses domain names that are well-known trademarks or misspellings of well-known trademarks as landing pages to misdirect Internet users to third-party websites.
Complainant further submits that in an attempt to hide the full extent of its cybersquatting, Respondent has squatted other domain names using aliases. Complainant is aware of at least three other aliases regularly used by Respondent – Domain Drop S.A., Marketing Total, SA, and Web Advertising, Corp. Two of these aliases are listed as having the identical postal address to Keyword Marketing. See Enterprise Rent-A-Car Company v. Domain Drop S.A., NAF FA0612000862698 (noting the address for Domain Drop S.A. as P.O. Box 556, Main Street, Charlestown, West Indies KN); Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451 (noting the address for Marketing Total, S.A. as P.O. Box 556, Main Street, Charlestown, West Indies KN). The third alias regularly used by Keyword Marketing is Web Advertising, Corp. Although Web Advertising has a different postal address from Keyword Marketing, Domain Drop S.A. and Marketing Total, Inc., decisions in two previous UDRP proceedings have found Keyword Marketing and Web Advertising to be the same entity. See Edmunds. com, Inc. v. Web Advertising, Corp./Keyword Marketing, Inc., WIPO Case No. D2006-1380 (treating Web Advertising and Keyword Marketing as a single entity for purposes of UDRP challenge); Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc., WIPO Case No. D2007-0678 (treating Web Advertising, Corp. and Keyword Marketing, Inc. as one entity and noting that neither Keyword Marketing, Corp. nor Web Advertising, Inc. contested complainant’s allegation that they were the same entity).
Complainant further submits that Respondent has already been found guilty of bad faith cybersquatting against Debevoise under the name Marketing Total, S.A. with respect to another misspelling of DEBEVOISE, . See Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451.
Complainant states that Respondent has registered and used the domain names in bad faith pursuant to paragraph 4(b)(iv) of the Policy. In Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031, respondent registered the domain names , , and to confuse Internet users looking for the Royal Bank of Canada website. The Royal Bank of Canada owned the registered trademarks RBC, RBC CENTURA and RBC ROYAL BANK. Respondent’s domain names redirected users to websites of complainant’s competitors. The panel found that the use of complainant’s marks to direct users to competitors’ websites constituted bad faith, because it showed an intent to disrupt complainant’s business “for the purpose of intentionally attempting to attract, for commercial gain, internet users to its websites”. Here, Respondent registered the domain names in dispute in order to confuse Internet users who were expecting to find a website belonging to Complainant and to divert these users to Respondent’s own website for commercial gain. Respondent’s posting of legal services-related links on the websites associated with the domain names in dispute demonstrates Respondent’s bad faith intent to trade on the fame of Complainant’s DEBEVOISE trademark, by diverting Internet users from Complainant’s site to that of Respondent.
Complainant states on information and belief, that Respondent derives a financial benefit through its misdirection of Internet users to the sites associated with the domain names in dispute. Respondent receives click-through revenues from the third parties whose websites are linked to Respondent’s websites. “Linking to competitors indicates that the intent of Respondent in using the domain names in dispute is to attract visitors ‘for commercial gain,’ contrary to the Policy.” Gerber Products Company v. LaPorte Holdings, WIPO Case No. D2005-1277; see also Scotsman Publishing, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0228 (concluding that respondent received revenue from third parties for misdirecting users seeking complainant’s website to the websites of complainant’s competitors).
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 trademark rights, and is a willful infringement of Complainant’s prior rights. Respondent is using the confusingly similar domain names in dispute incorporating a misspelling of Complainant’s trademark for its own commercial gain, by diverting internet browsers familiar with Complainant’s DEBEVOISE trademark to Respondent’s websites featuring links to Complainant’s website or the websites of law firms offering services in direct competition with Complainant’s legal services in order to receive compensation for directing users to such competitive websites.
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 the Complainant must establish rights in a trademark and secondly that the domain names in dispute are confusingly similar to the trademark in which the Complainant has rights.
The Complainant has established that it is registered as the owner of United States of America trademark registrations on the principal register for the trademarks DEBEVOISE, U.S. Registration No. 2777096 and DEBEVOISE & PLIMPTON U.S. Registration No. 2513942, registered in relation to legal services, in class 42.
It is well established that the addition of a gTLD such as “.com” is without legal significance in determining identity or similarity. See, e.g., Habit Holding Co., L.L. C. v. None /Michael Pimentel, WIPO Case No. D2004-1009. The relevant comparison is between the DEBEVOISE trademark and the second-level domains, “debevois” and “debvoise”.
The domain names in dispute and are identical to Complainant’s registered trademark DEBEVOISE in sound and idea suggested by the trademark, but differ by the absence of one letter “e” found in Complainant’s registered trademark. Respondent is involved in “typosquatting”; the practice of using a domain name misspelling of Complainant’s widely known trademark. In Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362, the Panel found that the domain name , with a “Zero” in place of the letter “O” was calculated to trade on the Complainant’s name by exploiting likely mistakes by users of the URL.
The Panel finds that the Complainant has proven that the domain names in dispute are confusingly similar to the Complainant’s registered trademark DEBEVOISE.
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 names in dispute.
The Respondent has no United States of America trademark registration for the trademark DEBEVOISE. Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use Complainant’s registered trademark or any trademark confusingly similar thereto.
The web page associated with the domain names in dispute displays a series of sponsored links relating to law firms and legal services offered by competitors of Complainant. UDRP decisions have consistently found that registrants that “park” their domain name using redirecting services have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain names in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Respondent did not file a Reply and avail itself of the benefits of 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
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain names in dispute have been registered and are being used in bad faith.
Having regard to Complainant’s long standing and extensive use and registrations in the United States of America and abroad of the registered trademarks for or including DEBEVOISE registered and used in relation to legal services, Respondent’s choice of domain names that only differ from Complainant’s DEBEVOISE trademark by the absence of a single letter “e”, and Complainant’s evidence that Respondent is using the confusingly similar domain names in association with home pages including sponsored links to law firms offering legal services, the Panel infers that Respondent registered the domain names in dispute with knowledge of Complainant’s widely known trademarks and services.
Respondent has engaged in a pattern of registering domain names incorporating widely known trademarks or misspellings of widely known trademarks as domain names. See E v. Web Advertising, Corp./Keyword Marketing, Inc., WIPO Case No. D2006-1380 (where Web Advertising, Corp and Keyword Marketing, Inc. registered the domain names and which were confusingly similar to complainant’s trademark EDMUNDS); Sanofi-Aventis and Aventis Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc., WIPO Case No. D2007-0678 (where Web Advertising, Corp./Keyward Marketing, Inc. registered the domain names and among others which were found to be confusingly similar to complainant’s trademarks SAOFI-AVENTIS and AVENTIS. The registration of domain names identical or confusingly similar to well-known trademarks 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).
In registering and using the domain names 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 Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. The domain names in dispute resolve to webpages that provide links to law offices and legal services offered by the law firms. The links on the website have the appearance of pay-per-click advertising links. The use of widely known trademarks having a missing or substituted letter as a domain name to link to pay-per-click advertising websites is a persuasive indication that the Respondent deliberately seeks to capitalize on the identity or close similarity of the domain names in dispute to Complainant’s trademarks and to gain revenue there from (see Alta Vista Company v. Andrew Krotov, WIPO Case No. D2000-1091; MatchNet pk v. MAC Trading, WIPO Case No. D2000-0205).
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: January 11, 2008
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