WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trader Corporation v. Chad Long
Case No. D2007-1899
1. The Parties
The Complainant is Trader Corporation of Quebec, Canada, represented by Lang Michener LLP.
The Respondent is Chad Long of Illinois, United States of America.
2. The Domain Names and Registrars
The disputed domain name is registered with TierraNet Inc. d/b/a DomainDiscover.
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2007. On December 21, 2007, the Center transmitted by email to TierraNet Inc. d/b/a DomainDiscover and GoD, Inc. a request for registrar verification in connection with the domain names at issue. On December 21, 2007, TierraNet Inc. d/b/a DomainDiscover and GoD, Inc. 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 January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2008.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on February 7, 2008. 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
4.1 The Complainant is owned by Yellow Pages Income Fund and publishes approximately 200 publications and 20 websites veering four product areas: automotives, real estate, general merchandise and employment. The publications have a weekly readership of approximately 1 million and its network of websites attract close to 3.5 million unique visitors per month.
4.2 The Complainant was incorporated on May 19, 2006, as 4311621 Canada Inc. and changed its name to Trader Corporation on June 6, 2006. On June 8, 2006 the Complainant amalgamated with Classified Media (Canada) Holdings Inc (aka Trader Canada), the continuing company called Trader Corporation. On January 1, 2007, the Complainant amalgamated with, inter alia, Trader Publications Corp. and Trader Media Corp. with the continuing company again named Trader Corporation.
4.3 The Complainant is the owner of the Canadian trademark TRADER in connection with ‘publication of periodical magazines featuring advertisements’ since at least as early as June 1978 and ‘periodical publications offering the goods of others for sale or purchase; and services of providing an on-line database advertising the goods of others for sale or purchase’ since at least as early as 1996. The Complainant’s TRADER trademark has been continuously used in association with the performance and advertising of the associated services and later the sale of the associated publications since at least as early as 1978.
4.4 The Complainant is also the owner of a large family of TRADER formative trademarks used in association with print and on-line publications or services related thereto, of which 31 are the subject of Canadian registrations. The Complainant also owns 19 other pending applications for registrations of Canadian trademarks.
4.5 The Complainant is also the owner of pending Application Nos. 1336025 and 1336023 for registration of the trademarks TRADER CORPORATION and SOCI�T� TRADER in Canada. These applications were filed on February 19, 2007. The particulars of the application indicate that the Complainant has been using the marks since as early as June 2006 in association with ‘classified advertising services, namely the dissemination of advertisement listings for others by means of websites and on-line databases; operation of websites featuring advertising for others; providing access to on-line searchable databases featuring advertising for others; providing on-line, interactive, multimedia information relating to the sale or purchase of the goods and services of others, including detailed analysis of items and price and evaluation guidelines for items; providing on-line, interactive multimedia information communication forums.’
4.6 The Complainant also uses the TRADER CORPORATION and SOCI�T� TRADER marks to brand its publications and the website corresponding to its various publications.
4.7 On June 8, 2006, the Complainant registered the domain names , , and . The first two of these domain names direct consumers to the Trader Corporation English language website located at “/TraderCorporation/page.php/en/6”. The second two of these domain names direct consumers to the Trader Corporation French language website located at “/page.php//fr/6/1.html/”. These websites contain information regarding the products and services provided by the Complainant and prominently displays the Complainant’s TRADER CORPORATION trademark on the English website and the SOCI�T� TRADER trademark on the French website.
4.8 On or about October 25, 2007, the Complainant discovered that the URL “www.” resolved to a webpage that is an unauthorized reproduction of the English language version of the landing pages for “www.” and “www.” (the “Complainant’s Landing Page”). The homepage of the unauthorized website (the “Respondent’s Website”) is identical to the Complainant’s Landing Page except for the addition by the Respondent of a single paragraph text relating to the provision of a ‘Business Protection Program’. The link ‘Programs and Terms’ on the Respondent’s Website leads to the pages of the Respondent’s Website which describe the ‘Business Protection Program’ allegedly offered by the Complainant. The TRADER CORPORATION trademark is also reproduced on each of these pages as well as the copyright notice “Copyright � 2007 Trader Corporation”. The Complainant, does not, however offer any such ‘Business Protection Program’ nor has it authorized anyone to do so whether on its behalf or in affiliation with it.
4.9 On or about December 8, 2007, the Complainant became aware that the Respondent had also registered the domain name , which linked to an ‘Under Construction’ notice hosted by Globat LLC.
5. Parties’ Contentions
A. Complainant
The Complainant contends as follows:
5.1 The Complainant has registered rights in the trademark TRADER and common law rights in the trademarks TRADER CORPORATION and SOCI�T� TRADER.
5.2 The Complainant contends that the domain names and are confusingly similar to the Complainant’s TRADER, TRADER CORPORATION and SOCI�T� TRADER marks. The additions of the letter “s” to pluralize the words “trader” and “corporation” and the “.com” gTLD extension for the first domain name and the addition of the hyphen, the truncation of the word “corporation” to its common abbreviation “corp” and the addition of the “.com” gTLD extension to the second domain name, constitute significant differences which are without legal significance.
5.3 The Respondent has no rights or legitimate interests in respect of the domain name. In support thereof, the Complainant relies on the following factors:
(a) There is no relationship between the Complainant and the Respondent giving rise to any licence, permission, or other right by which the Respondent could own or use any domain names incorporating any of the Complainant’s trademarks.
(b) To the knowledge of the Complainant, the Respondent does not own or claim any rights in the marks “traders corporations” or “traders corp” nor to the trademark “trader corporation”. None of these are the names of any legitimate businesses belonging to the Respondent. There is no evidence that the Respondent is using any of those marks in connection with a bona fide offering of goods or services.
(e) The domain names were registered and are being used solely for commercial gain. There is no evidence that the Respondent has ever made a legitimate non-commercial or fair use of the Respondent’s Domain Names. To the contrary, the evidence indicates that the Respondent intends to divert consumers from the Complainant’s Website for the purposes of perpetrating a fraud on those consumers and thereby tarnish the Complainant’s trademarks and depreciate the value of the goodwill and reputation of the Complainant.
(f) The willful reproduction of the Complainant’s Landing Page on the Respondent’s Website as the homepage of the Respondent’s Website clearly demonstrates that the Respondent knew of the Complainant and the Complainant’s Website at the time he registered or acquired the domain names.
5.4 The domain name was registered and is being used in bad faith. In this regard, the Complainant relies on the following circumstances:
(a) The Respondent acquired the domain names to disrupt the Complainant’s business and to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products or services offered on the Respondent’s website.
(b) The Respondent’s actions can only have the effect of confusing the public and depreciating the goodwill in the Complainant’s valuable trademarks. The almost exact reproduction of the Complainant’s Landing Page including the Complainant’s trademarks and the provision of information concerning and solicitations for a non-existent fraud protection program allegedly offered by the Complainant clearly evinces bad faith.
(c) The Complainant has received numerous customer queries regarding the ‘Business Protection Program’ allegedly offered by the Complainant. The Complainant is also advised that prospective purchasers of goods appearing for sale in publications by the Complainant have been contacted by persons (in league with the Respondent) claiming that the Complainant would act as the ‘middle man’ for the purchase and suggesting that the prospective purchaser find out more information about how the Complainant would handle a transaction by sending an email to transactions@ and visiting “/bpp/overview.html”. The Complainant is now receiving similar types of reports from customers affected by the fraudulent site hosted as the Respondent’s domain name .
(d) The Respondent’s Website may be a phishing platform and that the Respondent may be engaging in a phishing expedition designed to fraudulently obtain funds or private financial and/or other personal information from the Complainant’s customers (who are under a false belief that they are dealing with the Complainant).
(e) The Respondent seeks to disrupt the business of the Complainant with the intent of drawing attention to the fact that the Respondent had registered the domain name with a goal of extracting money from the Complainant for the sale of the domain names at a substantial profit.
(f) The Complainant has previously experienced schemes identical to that now perpetrated by the Respondent, namely in respect of the domain names , , and . In all of these cases, the WIPO UDRP Panel ordered the domain names to be transferred to the Complainant. The content on the websites corresponding to the domain names which were the subject of those cases and the links thereon were identical to the Respondent’s Website. The logical inference is that the same person or persons are responsible for all of these fraudulent sites, notwithstanding that the listed registrant identities in respect of those other domain name cases were not the same as the listed registrant in this Complaint. The assertion is that the person ultimately responsible is using false or stolen identities and personal information to register domain names.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(i) that the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the trademark TRADER by virtue of the Canadian registration secured by the Complainant.
Although the trademarks TRADER CORPORATION and SOCI�T� TRADER are pending registration in Canada, this does not mean that the Complainant does not have rights to the said marks. Based on the evidence of use adduced by the Complainant, the Complainant can and has, to the Panel’s mind, established good grounds to claim rights to the said marks. In certain jurisdictions (such as common law jurisdictions of which Canada is included), such unregistered rights are afforded protection by law. As the Policy does not require a mark to be registered in order to succeed under the first limb of Paragraph 4(a), this Panel is also satisfied that the Complainant has established rights to the trademark TRADER CORPORATION and SOCI�T� TRADER (see also Trader Corporation v. John Senick,WIPO Case No. D2007-1555; Trader Corporation v. Daryl Erdmann,WIPO Case No. D2007-0839, where the Panel also recognized the rights of the Complainant in the marks).
The domain names at issue wholly comprise the Complainant’s TRADER trademark as well as the TRADER CORPORATION trademark with minor variations.
Firstly, as with all “.com” gTLD disputes, certainly the addition of the “.com” suffix cannot and does not serve to distinguish the domain name from the mark (see Freeman v. Mighty LLC,WIPO Case No. D2005-0263).
Secondly, the addition of the letter “s” to pluralize the words “trader” and “corporation”, the truncation of the word “corporation” to “corp” and the addition of a hyphen between the words “trader” and “corp” are immaterial. The Panel agrees that these are differences without legal significance when comparing domain names to trademarks. This broad proposition has found support in various panel decisions (see Trader Corporation v. Carlos Lorio,WIPO Case No. D2007-1041; General Electric Company v. John Bakhi,WIPO Case No. D2000-0386; Tata Tea Ltd v. Gem Lifts, WIPO Case No. D2000-1823; Club Mediterranee v. Yosi Hasidim,WIPO Case No. D2000-1350).
Based on the fact that the Respondent’s domain names are confusingly similar to the Complainant’s trademarks, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
B. Rights or Legitimate Interests
This Panel accepts the contention that there is no relationship between the Complainant and the Respondent giving rise to any licence, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s trademarks. This Panel also accepts the contention that the Respondent is not known by the domain names at issue and has no legitimate connection with them.
The Complainant has adduced ample evidence that the domain names are not being used for a non-commercial or bona fide offering of goods or services. The evidence indicates that the Respondent may intend to divert consumers from the Complainant’s Website for the purposes of perpetrating a fraud on those consumers for various commercial reasons including phishing for personal data or to otherwise extract payment for the transfer of the domain names at issue.
The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant also leads the Panel to find that the Respondent has no rights or legitimate interests in the domain names. As such, the Panel could find no justification, rights or legitimate interests on the part of the Respondent to the words comprising the domain names.
Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
As stated by the Complainant in its Complaint, “the evidence of Respondent’s bad faith is overwhelming”. This Panel could not agree more.
The fact that the Complainant’s trademarks pre-dated the registration of the domain names, the use of the domain names, the exact duplication of the Complainant’s Landing Page in one of the the Respondent’s Website, the deep links to the Complainant’s Website and the particularly disturbing provision of information regarding a non-existent fraud protection program allegedly offered by the Complainant is abundant evidence of bad faith registration and use.
As in Trader Corporation v. Carlos Lorio,WIPO Case No. D2007-1041 and Trader Corporation v. Daryl Erdmann,WIPO Case No. D2007-0839, it appears as if a third party’s identity has been falsely adopted in connection with the registration of the domain names. The Center received an email from Mr. Chad Long on January 28, 2007, informing the Center that he had been a victim of computer/credit fraud and that he had no intention to dispute the Complaint. In the previous disputes referred to above, the respondents, Mr. Erdmann and Mr. Lorio, had also contacted the Complainant to inform the Complainant that they were victims of stolen identity.
Whether or not the actual respondents behind the various “trader” domain name registrations are the same is not clear, although the evidence adduced by the Complainant and the circumstances seem to suggest that this may be the case. If so, the adoption of false contact details may constitute evidence of bad faith registration and use (see Trader Corporation v. Carlos Lorio,WIPO Case No. D2007-1041).
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
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.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: February 21, 2007
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