WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Geographic Society v. Moniker Privacy Services / Mainstream Advertising / MSA, Inc
Case No. D2008-0699
1. The Parties
The Complainant is National Geographic Society, Washington D.C., United States of America, represented by Covington & Burling, United States of America.
The Respondents are Moniker Privacy Services, Pompano Beach, Florida; Mainstream Advertising / MSA, Inc., Woodland Hills, California, United States of America.
2. The Domain Names and Registrars
The disputed domain names , , and are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2008, listing Moniker Online Services, LLC as Respondent. On May 6, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On May 13, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondents Mainstream Advertising and MSA Inc. are listed as the registrants for the domain names in dispute and providing the contact details. On May 15, 2008, Complainant filed an Amended Complaint to add Mainstream Advertising and MSA Inc. as respondents and to withdraw several domain names that had been included in the original complaint. The Center verified that the Amended 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 Respondents of the Complaint, and the proceedings commenced on May 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2008. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 14, 2008.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on June 26, 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
Complainant was founded nearly 120 years ago to “increase and diffuse geographic knowledge.” Complainant produces media, including magazines, branded under its NATIONAL GEOGRAPHIC mark which reach more than 300 million people worldwide each month. Complainant’s magazine is now published in 32 language editions and is read by over 40 million persons worldwide. The NATIONAL GEOGRAPHIC CHANNEL cable television network in the United States of America (“U.S.”) reaches over 64 million U.S. households. It’s international counterpart, also called NATIONAL GEOGRAPHIC CHANNEL, now reaches nearly 200 million households in 166 countries.
Complainant owns numerous trademark registrations worldwide for the mark NATIONAL GEOGRAPHIC, including ten U.S. Trademark registrations for marks that contain or consist of the mark NATIONAL GEOGRAPHIC. In addition, Complainant owns 160 registrations in 54 countries for its NATIONAL GEOGRAPHIC marks. All of the registrations issued before January 29, 2002, the registration date for the first of the disputed domain names. Since that date, an additional seven U.S. registrations and an additional 139 foreign registrations have issued for Complainant’s NATIONAL GEOGRAPHIC marks. Complainant also owns a domain name for its principal website which registered on October 10, 1995. Complainant or its licensees operate an additional 18 U.S. based websites which are associated with domain names consisting of its NATIONAL GEOGRAPHIC marks or abbreviations of such marks.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain names are confusingly similar to Complainant’s trademark, that Respondents have no rights or legitimate interests in respect of the disputed domain names and that Respondents have registered and used the disputed domain names in bad faith.
B. Respondent
Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute 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 with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
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”.
A. Identical or Confusingly Similar
All of the disputed domain names are mistypings of Complainant’s NATIONAL GEOGRAPHIC mark. The disputed domain names each omit one letter from Complainant’s mark. Such intentional typographical errors of a mark as famous as Complainant’s are referred to as “typosquatting.” Such typoquatting domain names are not sufficiently distinctive to avoid a finding of confusing similarity.
Accordingly, the Panel finds that Complainant has satisfied this criterion.
B. Rights or Legitimate Interests
Respondents are not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the NATIONAL GEOGRAPHIC mark.
Respondents are not generally known by the domain names and have not acquired any trademark or service mark rights in those domain names.
Respondents are not using the domain name in a bona fide manner. When Complainant first learned of three of the disputed domain names’ registration and use in mid-August 2007, they resolved to parked monetization pages consisting entirely of revenue-generating pay-per-click links to third party websites. The pay-per-click links contain Complainant’s NATIONAL GEOGRAPHIC marks, and correspond to goods and services identical or closely related to Complainant’s goods and services. These third-party websites promote goods and services that compete with or complement Complainant’s goods and services.
In view of the fame of Complainant’s NATIONAL GEOGRAPHIC marks in the U.S. and worldwide, it is clear that Respondents intentionally registered and used as domain names the misspellings of Complainant’s NATIONAL GEOGRAPHIC marks in order to benefit from the revenue generated by the pay-per-click traffic at the websites associated with the disputed domain names. Such use does not constitute a bona fide offering of goods and services.
In light of the foregoing, the Panel finds that Respondents have no rights or legitimate interests with regard to the domain names at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that 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 the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location of a product or service on Respondent’s website or location.
Here, it is apparent that the domain names are being deliberately used for commercial gain to attract Internet users to Respondents’ website based on a likelihood of confusion with Complainant’s mark. The widespread fame and use of the NATIONAL GEOGRAPHIC mark, Complainant’s prior domain name registration and trademark registrations lead to the inevitable conclusion that Respondents registered and are using the domain names with actual knowledge of Complainant’s rights.
Accordingly, the Panel finds the disputed domain names to be registered and used in bad faith.
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 Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: July 8, 2008
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