WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Future Publishing Limited v. AK Karato, John Wong Case No. D2009-1349 1. The Parties
The Complainant is Future Publishing Limited of United Kingdom of Great Britain and Northern Ireland, represented by Stevens and Bolton LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondents are AK Karato of Japan and John Wong of Singapore. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Dynamic Dolphin, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009. On October 13 and 19, 2009, the Center transmitted by email to Dynamic Dolphin, Inc. a request for registrar verification in connection with the Domain Name. On October 21, 2009, Dynamic Dolphin, Inc. transmitted by email to the Center its verification response, providing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 23, 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 Respondents of the Complaint, and the proceeding commenced on October 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 17, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on November 27, 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.
In the absence of a Response, the Panel has checked the record to ensure that the Complaint has been properly notified to the Respondents. The courier pack containing the Complaint and Notice of Commencement of Administrative Proceeding appears to have been successfully delivered to the first-named Respondent. However, the Center's attempts to deliver the Complaint (both hard copy and email) to the second-named Respondent were unsuccessful, because the email and physical addresses provided by the second-named Respondent in the WhoIs particulars for the Domain Name were either non-existent or inadequate. (The email address provided was spam@m.com). The telephone number appearing in the WhoIs particulars, for both Respondents, was clearly fictional (in each case, +000.0000000).
Having regard to the matters just referred to, the Panel is satisfied that the Center has complied with its responsibility under paragraph 2(a) of the Rules, to “employ reasonably available means calculated to achieve actual notice” to the Respondents. 4. Factual Background The Complainant
The following (uncontested) facts are taken from the Complaint.
The Complainant is a publisher of specialist magazines in the United Kingdom. It has published a magazine called “T3” since 1996, and that magazine is the world's number 1 gadget magazine. T3 enjoys a monthly circulation of 62,000.
The Complainant operates over 70 websites, including websites at “” (the website for the T3 Magazine, launched in 2007), and at “”. The Complainant's website at “” was launched in 1996.
The Complainant runs a successful “T3 Gadget Awards” event each year, and it has licensed its T3 brand in numerous countries throughout the world.
As a result of the foregoing activities, the Complainant says that it has established goodwill in the names “T3” and “T3Tech”.
The Complainant holds two registered Community Trademarks:
(a) T3 in international classes 9, 16, 35, 36, and 41, registered under No. 001687359 with effect from June 2, 2000 in respect of (inter alia) “[p]roviding on-line electronic publications (not downloadable); publications of electronic books and journals on-line”.
(b) T3 in international class 41, registered under No. 004298964 with effect from February 21, 2005 in respect of (inter alia) “providing on-line publications (non-downloadable) ...”. The Respondents and the Domain Name
The Domain Name was registered on September 5, 2009.
The Complainant produced with the Complaint and the Amendment to the Complaint, screenshots from the website at the Domain Name (“the Respondents' website”), printed on October 9, 2009 and October 22, 2009. At the first of those dates, the first-named Respondent was the registrant; by October 22 the registration had been transferred to the second-named Respondent. The Respondents' website did not change substantially following the transfer. Both the October 9, 2009 and the October 22, 2009 versions consisted of a single page headed “This is a future home page”, with sponsored links to third party websites appearing below that, under a heading “Sponsored listings”. Both versions of the Respondents' website contained health and travel-related links, and each contained the following link:
“T3 Subscription
Never miss an issue. Get 3 issues for just £8.89
www.iSUBSCRiBE.”
On the left hand side of the Respondents' website, as it appeared on both October 9 and October 22, 2009, there was a list of click-on links grouped under the heading “Related Searches”. A number of these links were present on the Respondents' website on both dates – e.g., “Thyroid Cancer”, “Thyroid Journal”, “Thyroid Thyroid Hormone”, and “T3”.
The click-on links “Domain Name Registration”, and “Web Hosting” appeared at the foot of the Respondents' website on both dates.
The Panel visited the Respondents' website on December 4, 2009. It was substantially in the same form as it had appeared on October 22, but with different sponsored links. The sponsored links appeared to be to websites which were concerned with a variety of products, including travel, employment, health, and real estate. There was also a website through which the site owner marketed Wide Area Network access products and communications test equipment (one item of equipment sold through this website appears to have been known as a “T-3 Protection Switch”). Email Communications
On September 8, 2009, the Complainant received an email from a Mr. Dan Baron, in which Mr. Baron advised: “We acquired the domain T3T recently”. He offered to sell the Domain Name to the Complainant for €3,500, and asked the Complainant to respond before 6 pm that day if it was interested in acquiring the Domain Name.
The Complainant responded on September 14, 2009, referring to the Complainant's claimed trademark rights, and requesting that the Domain Name be transferred to the Complainant.
Mr. Baron emailed a one-word reply on September 14, saying: “Sold”.
The Complainant then checked the WhoIs details for the Domain Name, and noted that the first-named Respondent was still then listed as the owner of the Domain Name. The present proceeding was then commenced against the first-named Respondent alone. At some subsequent point, the second-named Respondent became registered as the owner of the Domain Name, and when the Center advised the Complainant of that fact, the Complainant amended its Complaint to add the second-named Respondent to the proceeding. The Complainant's Investigations
The Complainant has undertaken a “reverse WhoIs search” on the name of the first-named Respondent. The Complainant says that its search revealed that there were 59 domain names registered to the first-named Respondent at the time of the search, and another 258 historical registrations (the Panel did not in fact note any reference to the first-named Respondent on the face of the search result which was produced).
The Complainant also undertook a “” search of “ehdigital” (the stem of the email address which had been used by Mr. Baron when he made the offer to sell the Domain Name to the Complainant). This search turned up links to various websites, one of which was entitled “How can I make money from this recession”. The Complainant stated that when a browser clicked on that link, he or she was taken to a web page article which provided advice regarding the registration of domain names which are similar to legitimate business domains, in order to divert consumers to web pages on which advertising links could be placed for commercial gain. 5. Parties' Contentions A. Complainant
The Complainant contends:
1. The Complainant is the owner of substantial goodwill in the names “T3” and “T3Tech”. The dominant part of the Domain Name is “t3” (“tech” being indicative of “technology”), and that dominant part is identical to the Complainant's registered T3 trademark. In addition, the Complainant has significant goodwill in the name T3 used in conjunction with “Tech”.
The foregoing factors demonstrate that the Domain Name is confusingly similar and/or identical to the names “T3” and “T3TECH”, in which the Complainant has rights.
2. The Respondents have no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondents have not made any bona fide or legitimate commercial use of the Domain Name.
(ii) The Complainant is not aware of any other use of the Domain Name by the Respondents other than the use described in the Complaint.
(iii) The Complainant is not aware of any evidence that the Respondents might be entitled to rely on any of the examples of a right or legitimate interest which are provided at paragraph 4(c) of the Policy.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) The Respondents made an offer to sell the Domain Name to the Complainant only 3 days after registering it. That demonstrates that the Respondents registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant, for valuable consideration in excess of the Respondents' out-of-pocket costs directly related to the Domain Name.
(ii) By using the Domain Name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents' website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' website or of a product or service on the Respondents' website.
(iii) The first-named Respondent's actions in transferring the Domain Name to the second-named Respondent, and the provision of false postal and email addresses and a false telephone number in the WhoIs particulars for the Domain Name, provide further evidence of the Respondents' bad faith. Those actions evidence an attempt to prevent the Complainant from seeking to recover the Domain Name.
(iv) The fact that the first-named Respondent is the registered owner of 59 domain names, and has previously owned as many as 258 domain names, when put together with the results found on undertaking the search on the “stem” of Mr. Baron's email address, together show that the Respondents have engaged in a pattern of abusive domain name registrations, such as to divert Internet users and to prevent trademark owners from registering domain names corresponding to their marks. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g., by failing to file a response) as the Panel considers appropriate. B. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint.
The Complainant is the registered proprietor of the Community Trademark T3. That mark is included in its entirety in the Domain Name, and numerous panels deciding cases under the Policy have regarded that as a significant factor pointing in favour of confusing similarity (see for example, Nokia Group v. Mr. Giannattasio Mario,WIPO Case No. D2002-0782, referred to by the three-member panel in The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137, and by this Panel in Quintessentially (UK) Limited v. Mark Schnorrenberg/ Quintessentially Concierge,WIPO Case No. D2006-1643).
The Panel also accepts the Complainant's submission that the expression “tech” would be regarded by many Internet users as an abbreviation for “technology”. Many panels have noted that any confusing similarity caused by the respondent's use of the complainant's trademark in a disputed domain name will probably be exacerbated when the domain name has been formed simply by adding to the complainant's mark an expression which is descriptive of the very goods or services which the complainant sells under that mark. That is precisely the position here: adding the descriptive or suggestive expression “tech” to the Complainant's mark would only have added to the impression of Internet users who were familiar with the Complainant's technology magazine, that the Domain Name must be connected in some way with the Complainant.
The foregoing factors are more than sufficient to establish the Complainant's case of confusing similarity. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) “Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the Complainant's T3 mark, and the Complainant has not authorized the Respondents to use that mark, whether in a domain name or otherwise. There is nothing to suggest that either of the Respondents might be commonly known by the Domain Name, or that any business operated by them or either of them might be so known. There is therefore nothing to suggest that the Respondents might have claimed a right or legitimate interest of the kind described at paragraph 4(c)(ii) of the Policy.
The Respondents do not appear to be conducting any substantial business through the Respondents' website – the Respondents' website only provides sponsored links to third party websites, one of which appears to offer subscriptions to the Complainant's T3 Magazine.
The foregoing circumstances constitute sufficient prima facie evidence that the Respondents have no right or legitimate interest in respect of the Domain Name, so the evidentiary onus on this part of the Complaint shifts to the Respondents. No response has been filed, so that evidentiary onus has not been discharged. The Complainant must therefore succeed on this part of the Complaint.
In addition, for the reasons which are set out in the next part of this decision, the Panel is satisfied that the Respondents' use of the Domain Name has been neither “fair”, “legitimate”, nor “bona fide”, as those expressions are used in paragraphs 4(c)(iii) and 4(c)(i) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) “circumstances indicating that [a respondent has] registered or acquired [a disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 [the respondent's] documented out-of-pocket costs directly related to the [disputed] domain name; or
(ii) [the respondent has] registered the [disputed] domain name in order to prevent the owner of the trademark or service mark from reflecting the [complainant's] 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 [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location.
The Panel is also satisfied that the Complainant has made out its case in this part of its Complaint. The Panel has come to that view for the following reasons.
1. The Domain Name is confusingly similar to the Complainant's T3 mark, and the Complainant has not authorized the Respondents to use that mark.
2. On September 8, 2009, only three days after the Domain Name was created, Mr. Baron (apparently acting on behalf of the first-named Respondent) contacted the Complainant offering to sell the Domain Name to it. And a little over one month after the Domain Name was created, there was a sponsored link on the Respondents' website to a third party website offering subscriptions to the Complainant's T3 Magazine. In the absence of any Response, those facts are in combination sufficient for the Panel to draw the inference that the first-named Respondent was aware of the Complainant and its T3 Magazine at the time the Domain Name was registered.
3. Although the Respondents' website contains a statement “This is a future home page”, there is no evidence of the Respondents or either of them having operated any business supplying goods or services through the Respondents' website, and nor is there any evidence of either of them having made demonstrable preparations to do so. Instead, the Respondents' website has all the hallmarks of a typical landing page, at which sponsored links to third party websites generate pay-per-click or other forms of revenue for the site operator.
4. In the absence of any explanation from the Respondents, the only sensible inference the Panel can draw from the offer to sell the Domain Name to the Complainant three days after it was acquired, is that the first-named Respondent registered the Domain Name with the intention of selling it to the Complainant. The first-named Respondent would not have acquired the Domain Name for the purpose of on-sale unless it intended to make the on-sale at a profit, so it is likely that his sale price of €3,500 was higher than any out-of-pocket costs he had incurred in respect of the Domain Name.
Those circumstances fall squarely within paragraph 4(b)(i) of the Policy.
5. When the Complainant declined to pay the €3,500, the first-named Respondent appears to have transferred the Domain Name to the second-named Respondent. However, it is by no means clear that the second-named Respondent is in fact a separate person from the first-named Respondent. On that issue, the Panel notes that the Respondents' website remained in substantially the same form following the apparent transfer, with the heading “This is a future home page”, the sponsored link headed “T3 Subscription”, and a number of the thyroid-related links on the menu of “Related Searches”, all retained. The second-named Respondent also provided obviously false contact details.
In the absence of any Response, that combination of circumstances justifies the inference that the second-named Respondent is either the same person as the first-named Respondent, or if different, has taken the Domain Name from the first-named Respondent with full knowledge of the Complainant's claims and in an attempt to collude with the first-named Respondent to defeat those claims.
6. In any event, the Panel is satisfied that the second-named Respondent has registered or acquired the Domain Name for the bad faith purpose described at paragraph 4(b)(iv) of the Policy: by using the Domain Name (i.e., by pointing it to the Respondents' website), the second-named Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondents' website, by creating a likelihood of confusion with the Complainant's T3 mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' website.
The Complainant having proved all elements of its Complaint, the Domain Name must be transferred to 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 Name, , be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: December 8, 2009
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