WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION 24/7 Real Media Inc. v. Thomas Schultz Case No. D2009-0043 1. The Parties
The Complainant is 24/7 Real Media Inc. of New York, United States of America represented by Davis & Gilbert LLP, United States.
The Respondent is Thomas Schultz of Karlsruhe, Baden-Wurttemberg, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2009. On January 15, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Domain Name. On January 19, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 21, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 17, 2009.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 2, 2009. 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 has marketed and provided online marketing and interactive products, technologies and services worldwide since 2001 using the trademark 24/7 REAL MEDIA (“the Trademark”). Its predecessors marketed similar products and services under the marks 24/7 MEDIA and REAL MEDIA going back to 1995. Complainant is the owner of, and uses the domain name, as a key aspect to its worldwide business. The Respondent registered the Domain Name in November 2008 and appears to have used it to distribute malware or hostile software. 5. Parties' Contentions A. Complainant The Complainant's submissions are as follows:
1 Complainant has marketed and provided online marketing and interactive products, technologies and services worldwide since 2001 using the trademark 24/7 REAL MEDIA. Its predecessors marketed similar products and services under the marks 24/7 MEDIA and REAL MEDIA going back to 1995. Complainant is the owner of, and uses the domain name, as a key aspect to its worldwide business.
2 Respondent is the registrant of the domain name
3 The Respondent is a typosquatter who seeks to profit from unsuspecting Internet users who have mistyped the URL used by Complainant in connection with its business.
4 Complainant is a recognized global market leader in providing interactive marketing products, technologies and services. For example, through its online ad serving business, Complainant currently serves over 400 billion advertising impressions every month. Complainant has offices in twelve different countries around the world.
5 Complainant is the holder of a United States trademark for 24/7 REAL MEDIA. Since 2001, the Complainant has continually used its trademark publicly in connection with the sale and promotion of the Complainant's products, technologies and services, including but not limited to, third party advertisment serving, advertisment networks, search engine marketing, web analytics and advertising campaign management. Such uses have included, but not been limited to, online and printed advertisements, brochures, exhibitions at trade shows and promotion and sales through the Complainant's web site. Complainant has expended significant money in connection with promoting the Trademark. Such promotional activities are key to the Complainant's business and success.
6 Through Complainant's many years of consistence and continuous advertising, marketing and extensive use, the Trademark has gained a secondary meaning and has come to be associated exclusively with Complainant's products, technologies and services. Customers identify the mark 24/7 REAL MEDIA specifically with Complainant's products, technologies and services. The Complainant intends to similarly continue using the Trademark in the future. A. The Domain Name is identical or confusingly similar to the Trademark
The Domain Name is identical and confusingly similar to the Trademark. The Respondent has merely inserted a hyphen “-” in between the numbers and letters that make up the Trademark. The use of a hyphen in such a phrase that contains numbers and letters is not an uncommon mistake made by someone looking for a company with such a name. The use of hyphens (or removing an existing hyphen) in this respect is a typical typosquatting tactic. B. The Respondent has no rights or legitimate interests in respect of the domain name
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
1 The Complainant has not authorized Respondent to use the Trademark and has no affiliation with the Respondent.
2 Respondent's use of the Domain Name is not a fair use. The Complainant has never authorized the Respondent to use the Trademark, either through a license agreement or otherwise, the Complainant has no relationship with the Respondent and the Complainant has previously demanded that Respondent cease using the Domain Name. The Complainant, through years of continuous and extensive use of the Trademark, has established a market and a reputation for itself, and the Respondent is using bad faith business practices to take advantage of this hard-earned, and well deserved, public trust. Internet users are similarly harmed through the Respondent's misleading practices designed to piggyback on the good name and reputation of the Complainant.
3 The Domain Name was registered years after the Complainant started its business, and approximately one and half years after the Complainant's trademark registration was issued by the United States Patent and Trademark Office. C. The domain name was registered and is being used in bad faith
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
1 The Complainant has been made aware Respondent is using the Domain Name to spread malware. According to Wikipedia, and common usage in the Internet and software industries, “malware” is “software designed to infiltrate or damage a computer system without the owner's informed consent. The expression is a general term used by computer professionals to mean a variety of forms of hostile, intrusive, or annoying software or program code.” One web site concerned with spyware specifically states “I see that a domain is sharing IP address with could it be that the purpose of the domain is to impersonate the real 247realmedia?” Malware is often used to generate significant revenues for the perpetrators of such malware of confusing Internet users into clicking on advertisements or making purchases, or to steal the financial information and/or identity of the unsuspecting victims.
2 The Respondent is clearly using the Domain Name to cloak its unethical and potentially illegal, activities under the respected name of the Complainant. This use is disruptive to the Complainant's business. The Complainant's valued and respected Trademark, and its business, is being damaged because the Respondent is improperly diverting, deceiving and/or confusing Internet users through use of the Domain Name. Internet users and the Complainant are both adversely affected by the Respondent's bad faith use of the Domain Name.
3 While the Domain Name currently appears to be inactive, the Complainant has been made aware of Respondent's activities to spread malware using the Domain Name. The mere fact that a Domain Name is inactive does not preclude a finding that the Domain Name has been, and is being, used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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
Apart from a hyphen “-”, the slash between “24” and “7” which is not capable of being expressed as a character in a domain name and the generic top level part of the , which can be ignored for the purposes of the Policy, the Domain Name is identical to the Complainant's registered Trademark. As such the Panelist finds that the Domain Name is confusingly similar to the trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint. It has used the Domain Name for distribution of malware or hostile software and therefore cannot be said to have used the site for a bona fide offering of goods and services. The Respondent does not appear to have any trademark rights in the 24/7 Real Media name. There is no evidence that the Respondent has been commonly known by this name. The Complainant has not given the Respondent any consent for use of the 24/7 Real Media name. Whilst the Domain Name is currently inactive, this commenced after objection was made to the use being made of the name by the Respondent to distribute malware. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:
(i) the Respondent has registered or has 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trade mark 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 web site 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 its web site or location or of a product or service on its web site or location.
The Respondent has not offered to sell the Domain Name to the Complainant.
There does not appear to be any evidence that the Respondent has engaged in a pattern of activity relating to blocking trade mark owners from registering their trade marks as domain names.
However, the use of the Domain Name to distribute malware does appear to be intentionally disruptive. As such the Panel is prepared to accept that the Respondent intended to disrupt the business of the Complainant who is also involved with providing online products/services.
Further, the fact that the Respondent chose a domain name directly reflecting the Complainant's trademark and used it for online services also suggests that the Respondent intended to divert traffic intended for the Complainant's site to its own. Members of the public looking for the Complainant's site searching 24/7 Real Media may arrive at the Respondent's site instead by mistake. The Respondent could have chosen a domain name which on face value would not be thought to be owned by the Complainant and would not have been likely to disrupt and divert the Complainant's business. As such the Panelist holds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on its web site or location.
Accordingly the Panel is of the view that the Respondent has registered and used the Domain Name 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 name, be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: March 5, 2009
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