WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corrections Corporation of America v. Texas International Property Associates
Case No. D2008-0280
1. The Parties
The Complainant is Corrections Corporation of America, Nashville, Tennessee, United States of America, represented by Stites & Harbison PLLC, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Daniel G. Altman, United States of America.
2. The Domain Names and Registrar
The disputed domain names , , and (the “Domain Names”) are registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2008. On February 26, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the Domain Names. On March 3, 2008, the Center transmitted a second request for registrar verification, having received no response to the first request. On March 4, 2008, Compana LLC responded to the request confirming that the Respondent is listed as the Registrant for all of the Domain Names and providing the contact details. However, Compana LLC omitted some of the information that the Center had requested. On March 6, 2008, the Center sent an email message to Compana LLC asking for additional information. On March 11, 2008, Compana LLC provided the requested information. 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 March 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2008. The Response was filed with the Center on April 1, 2008. The Center transmitted an email message to the Respondent’s representative on April 15, 2008 stating that the Center had not yet received the hard copy of the Complaint. The Respondent’s representative responded that the hard copy had been returned by the U.S. Postal Service due to a problem with customs, but that it had been resent. The Center received the hard copy on April 18, 2008.
The Center appointed Michelle Brownlee as the sole panelist in this matter on April 22, 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
The Complainant owns U.S. Registration No. 2,253,057 for the mark CCA CORRECTIONS CORPORATION OF AMERICA and design in connection with operation, construction and architectural design of correctional and detention facilities, issued on June 15, 1999, and claiming a first use in commerce of September 19, 1997.
5. Parties’ Contentions
A. Complainant
The Complainant is the largest owner and operator of privatized correctional and detention facilities in the United States, and has used the mark CCA CORRECTIONS CORPORATION OF AMERICA and design in the United States for many years. Its trademark registration for the mark is incontestable. The Complainant also has common law trademark rights in the mark CORRECTIONS CORP. The Complainant submits a number of press articles that refer to it as “Corrections Corp.”
The Complainant has operated a website at the domain since 1998. The Respondent uses the Domain Names to host websites that provide links to correctional and detention facility services that are similar to those advertised at the Complainant’s website. The Respondent has registered common misspellings in order to attract Internet users who are trying to locate the Complainant’s website in order to generate click-through revenue.
Before filing the Complaint, the Complainant’s counsel sent a cease and desist letter to the Respondent. The Respondent initially stated that its legal representative would look into the claim and reply within 15 to 21 days. The Complainant’s counsel sent additional email messages reiterating the cease and desist demand, but did not receive any further reply from the Respondent.
The Respondent has a history of cybersquatting and typosquatting. The Complainant submits a list of 34 decisions issued by the Center in cases brought against the Respondent in which domain names were transferred.
The Complainant contends that the Domain Names are confusingly similar to its CORRECTIONS CORP and CCA CORRECTIONS CORPORATION OF AMERICA trademarks, that the Respondent has no rights or legitimate interests in the Domain Names and that the Respondent has registered and used the Domain Names in bad faith.
B. Respondent
The Respondent contends that the Complainant’s registered trademark CCA CORRECTIONS CORPORATION OF AMERICA and design is not identical to or confusingly similar to the Domain Names. The Respondent points out that the Complainant disclaimed exclusive rights to the wording “Corrections Corporation of America” apart from the mark as a whole. The Respondent argues that the Complainant has not provided sufficient evidence to establish trademark rights in the mark CORRECTIONS CORP.
The Respondent states that it has rights and a legitimate interest in the Domain Names, as it is using them to direct users to links that are provided pursuant to Yahoo or Google’s terms and triggered by search requests entered by computer users. The Respondent submits that it did not target the Complainant, and argues that it may fairly use descriptive or generic terms (or typos of such terms) as commercial terms, as such terms are available for legitimate registration on a first-come, first-served basis. The fact that advertising revenues may be generated by the Respondent’s activity demonstrates a legitimate interest. The Respondent owns thousands of domain names which consist of generic words.
The Respondent contends that because the Domain Names are generic and/or merely descriptive, it must be the case that they were not registered or used in bad faith. The Respondent argues that the Panel should not infer that the Respondent knew of any arguable use by the Complainant of its trademark because there is no evidence that the Complainant made any use of the mark in Texas, the jurisdiction where the Respondent is located. The Respondent denies that its lack of response to the demand letters indicates bad faith. The Respondent states that the UDRP decisions cited by the Complainant are not applicable because many were consented transfers and in others, the Respondent filed lawsuits to challenge the decisions. In one of those cases, the Respondent won a jury trial that reversed the UDRP decision.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 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 Panel finds that there is insufficient similarity between the Complainant’s registered trademark, CCA CORRECTIONS CORPORATION OF AMERICA and the Domain Names to sustain a claim under the UDRP. Thus, the only way that the Complainant can succeed is if it establishes, by a preponderance of the evidence, that it owns rights to CORRECTIONS CORP as a common law trademark. The U.S. trademark registration owned by the Complainant disclaims the wording “Corrections Corporation of America,” which can be viewed as an admission at the time the registration was obtained that the wording was descriptive. The Complainant contends, however, that in the nine year period since the registration issued, it has developed common law trademark rights in “Corrections Corp.” It has submitted articles from a number of publications around the country that refer to the Complainant as “Corrections Corp.” The Panel finds that the Complainant has shown by a preponderance of the evidence that it has common law trademark rights in CORRECTIONS CORP.
One of the Domain Names is a misspelling of the Complainant’s claimed common law trademark, CORRECTIONS CORP, another adds an “s” on the end of the wording, and a third adds the letters “www” before the wording. In each of these cases, the Domain Names are confusingly similar to the Complainant’s CORRECTIONS CORP mark. See, e.g., Reuters Limited v. Global 2000, Inc.,WIPO Case No. D2000-0441 (transferring and misspellings of REUTERS trademark).
Accordingly, the Panel finds for the Complainant under the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not argued that it has been commonly known by the Domain Names, or that it is making a legitimate noncommercial or fair use of the Domain Names. The only issue, therefore, is whether the Respondent’s use of the Domain Names in connection with pay-per-click referral advertising can be considered a bona fide offering of services. Although the Respondent cites certain earlier decisions which may be read as offering some support for this proposition, those cases found that the respondents had legitimate interests where they had registered and used generic terms. See Target Brands, Inc. v. Eastwind Group, NAF Case No. 267475; The Landmark Group v. Digimedia L.P., NAF Case No. 285459. In more recent decisions, if the overall circumstances of the pay-per-click advertising suggest an intention to drive traffic based on the trademark use of the domain name, panels have generally tended to find that the respondent does not have a legitimate interest even where the domain name was arguably a generic term. See inter alia Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“many domain names have both dictionary word meanings and trademark (or secondary) meanings, and when the links on the [pay-per-click] landing page are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting”). See also e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082 and Advance Magazine Publishers Inc. d/b/a Cond� Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743.
In the present case, although the Respondent argues that “Corrections Corp” should be treated as a common generic term, the Panel does not agree that this combination of descriptive wording is a common generic term that would likely be registered apart from its similarity to the Complainant’s trademark and Internet website address. Thus, the Panel follows the holding of numerous other panels and finds that the Respondent’s use of the Domain Names in connection with sites used solely to generate pay-per-click advertising revenue should not be considered a bona fide offering of goods or services. See e.g. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 Respondent’s use of the Domain Names to earn referral fees by linking to other websites and generating pop-up advertisements attracts Internet users to the Respondent’s site by creating confusion as to source and presumably results in commercial gain to the Respondent. The Respondent argues that it did not have knowledge of the Complainant and that it simply registered a descriptive combination of words. However, the evidence submitted by the Complainant demonstrates that the Respondent has repeatedly registered other companies’ names and misspellings thereof. It seems more likely than not that the Domain Names were intentionally registered because of their similarity to the Complainant’s trademark. Even if the Respondent did not have actual knowledge of the Complainant’s trademark rights, there is a “growing consensus” among UDRP panels that registrants of large numbers of domain names for use with pay-per-click advertising sites have an affirmative obligation to make “reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others.” Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448. There is no evidence that the Respondent made any effort to determine whether its registration of the Domain Names violated the trademark rights of others.
Accordingly, the Panel finds that the Complainant has established by a preponderance of the evidence that the Respondent registered and is using the Domain Names in bad faith under 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.
Michelle Brownlee
Sole Panelist
Date: May 6, 2008
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