WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Instra Corporation Pty Ltd v. Domain Management SPM Case No. D2009-1097 1. The Parties
The Complainant is Instra Corporation Pty Ltd of Melbourne, Victoria, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Domain Management SPM of Apia, Samoa (formerly Western Samoa). 2. The Domain Names and Registrar
The disputed Domain Names , , , , , , , , and are registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2009. On August 17, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 17, 2009, the Registrar 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” 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 August 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 25, 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
The Complainant, an Australian proprietary limited company, is accredited with more than 60 domain name registries and offers wholesale domain name registration services, domain name resale and management services, and ancillary functions to customers in more than 200 countries.
In 2005, the Complainant acquired the domain name . In August 2006 the Complainant commercially launched a website associated with this domain name to operate its ASIA REGISTRY domain name registration service. Customers using the website are able to register and renew domain names in more than 20 country code top-level domains (ccTLDs) operated by countries in the Asia-Pacific region, including Samoa (formerly Western Samoa). The Complainant claims over 55,000 registered accounts in its ASIA REGISTRY service, with more than 21,000 monthly visits to the ASIA REGISTRY website.
The Complainant's website at “www.” is headed with both the name “Asia Registry” and the Complainant's INSTRA name and logo. (The latter displays a trademark symbol; the former does not.) The Complainant asserts, without contradiction, that it has made sales continuously through this website since 2006 and claims related revenues in excess of USD $1.5 million in the twelve-month period ending on June 30, 2009 (its revenues have reportedly doubled every fiscal year since 2006). In 2006 and 2007, the Hong Kong Domain Name Registration Company, which administers the Hong Kong ccTLD, presented awards to the Complainant recognizing the success of its ASIA REGISTRY service. The Complaint includes evidence that the Complainant has promoted the ASIA REGISTRY brand in press releases, event sponsorships (including ICANN, Domain Fest, and T.R.A.F.F.I.C. events for members of the domain name industry), a domain industry newsletter, and the Twitter social networking application. The Complainant promotes the ASIA REGISTRY brand in a monthly customer newsletter and in promotional materials sent to targeted customers. The Complainant has also purchased both print and Google advertising featuring the ASIA REGISTRY mark.
The Domain Names were created in October 2008 and are registered in the name of the Respondent, Domain Management SPM, with a postal address in Apia, Samoa. It is not evident whether this is a legal entity or a fictitious name, but Domain Tools reports nearly 9000 domain names currently registered in this name.
The Complaint attaches a printout of a screen shot of the website to which all of the Domain Names resolved before August 2009 (“the Respondent's website”). (There are apparently no archived versions of this website available through the Internet Archive's Wayback Machine at “”.) The website appears to have competed directly with the Complainant's business of registering domain names in global TLDs and Asian ccTLDs and offering related domain services.
On June 5, 2009, the Complainant's counsel sent a letter to the Respondent demanding that the Respondent cease infringing the Complainant's copyright and trademark rights and transfer to the Complainant all domain names similar to the Complainant's ASIA REGISTRY brand. The Respondent did not reply to this letter, but shortly thereafter the website associated with each Domain Name simply displayed the notice, “This domain is parked free, courtesy of DomainGard.” The Domain Names do not currently resolve to websites. 5. Parties' Contentions A. Complainant
The Complainant claims common-law rights in the ASIA REGISTRY mark and argues that the Domain Names are confusingly similar to that mark and that the Respondent has no rights or legitimate interests in the mark.
The Complainant contends that the Respondent engaged in “typosquatting”, registering and using multiple domain names that slightly misspelled the Complainant's mark to divert Internet users for commercial gain and disrupt the Complainant's business. The Complainant finds further evidence of bad faith in the Respondent's use of the Domain Names to sell services in competition with the Complainant's through a website replete with text and graphics designed to make the Respondent's website appear to be associated with the Complainant. Finally, the Complainant infers bad faith from the Respondent's alteration of the websites associated with the Domain Names following the cease-and-desist letter in June 2009. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Complainant claims common-law rights in ASIA REGISTRY as an unregistered mark. The Policy does not require a registered mark to ground a UDRP complaint. The consensus view among WIPO panelists is that a complainant may rely on an unregistered mark, if the name has become a distinctive identifier associated with the complainant's goods or services. This may be demonstrated, for example, with evidence of the length and quantity of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), sec. 1.7 and cases cited therein.
WIPO panelists have also concluded that a geographic name (such as Asia) may ground a UDRP complaint if the name is being used as a trademark and the complainant has established rights in the name (usually but not always by trademark registration). See WIPO Overview, sec. 1.5. Here, the geographic name does not stand alone in the Complainant's mark but is combined with the term “registry”, signifying a domain name registry focused on domain names in the Asia-Pacific region. Thus, the first element of the Complaint depends on a demonstration that the unregistered ASIA REGISTRY brand, comprised of a geographical term and a descriptive, dictionary term, has indeed acquired a distinctive secondary meaning in a market.
The Complainant has submitted substantial and uncontested evidence of sales, advertising, and industry and media recognition related to its unregistered mark over the past three years in the market for domain name registrations and related services in Australia, New Zealand, Hong Kong, Europe, and, indeed, globally via the Complainant's ASIA REGISTRY website, email newsletters, targeted promotions, and Twitter social networking. This record might or might not prove sufficient to establish common-law rights in a contested trademark case in any particular jurisdiction, but the Panel finds that it is sufficient to meet the requirement for a “mark” within the meaning of the Policy, paragraph 4(a)(i). Additionally, (as further discussed below in relation to bad faith under the Policy, paragraph 4(a)(iii)) the very fact that the Respondent (ostensibly located in Samoa) took the trouble to register ten Domain Names based on slight misspellings of the mark, to offer a competing service through a website with text and graphics misleadingly similar to those displayed by the Complainant, indicates that the Respondent itself was well aware that the name was used as a mark and that it had commercial value. The Respondent has not come forward to claim otherwise.
Each of the ten Domain Names is a misspelled version of the Complainant's mark. Nine of the Domain Names are simply missing a single letter in the mark, and the tenth, , replaces “s” with “z” and is phonetically identical with the mark.
The Panel concludes that all of the Domain Names are confusingly similar to the Complainant's ASIA REGISTRY mark. B. Rights or Legitimate Interests
The Complainant asserts, and the Respondent does not deny, that the Complainant has not authorized the Respondent's use of any domain name that is confusingly similar to the Complainant's ASIA REGISTRY mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Names, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
There is no evidence in the record, or from a perusal of a screen shot of the website formerly associated with the Domain Names, that the Respondent has been known by a name corresponding to the Domain Name or has relevant trademark rights. The use of the Domain Names was patently commercial and in direct competition with the Complainant. The commercial use of multiple Domain Names misleadingly similar to the Complainant's mark, associated with a website designed to emulate the Complainant's, cannot be considered a use in connection with a bona fide commercial offering.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as it has in this case). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Respondent has not done so, and the Panel therefore concludes that the Complainant has established the second element of the Complaint. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including these two on which the Complaint implicitly relies:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
There is insufficient evidence to conclude that the Respondent's “primary” purpose was to disrupt the Complainant's business, even though the Respondent's conduct would foreseeably have that effect.
However, the evidence in this record amply supports a finding of bad faith under paragraph 4(b)(iv). The Respondent plainly and systematically registered no fewer than ten slightly misspelled versions of the Complainant's mark. The misspellings do not form words or phrases in English but reflect the addresses that an Internet user seeking the Complainant's website might mistakenly input by making a simple typographical error of a single letter. This is a clear case of typosquatting, which is itself often cited as an indication of bad faith. See, e.g., A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517 (and cases cited therein). The purpose of the typosquatting is also evident: to divert Internet users to the Respondent's website for commercial gain, consistent with the example given in paragraph 4(b)(iv) of the Policy. The Respondent was directly competing with the Complainant. There can be no doubt that the Respondent attempted to trade on the Complainant's reputation, since in addition to registering confusingly similar Domain Names, the Respondent associated those Domain Names with a website that borrowed copyrighted images and text from the Complainant's website and offered many of the same services available through the Complainant's website.
The Panel concludes that the Domain Names were registered and used in bad faith within the meaning of the Policy, paragraphs 4(a)(iii) and 4(b). 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.
W. Scott Blackmer
Sole Panelist
Dated: October 21, 2009
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