WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BR IP Holder LLC v. Registrant [1966810]: Tech Administrator Case No. D2009-1358 1. The Parties
The Complainant is BR IP Holder LLC, Canton, Massachusetts, United States of America, represented by Plave Koch PLC, United States of America.
The Respondent is Registrant [1966810]: Tech Administrator, Afghanistan. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2009. On October 13, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On the same day, Moniker Online Services, LLC 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 October 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 10, 2009.
The Center appointed Richard Tan as the sole panelist in this matter on November 23, 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's principal place of business is in Canton, Massachusetts, United States of America. The Complainant, its predecessors in title and franchisees of the Complainant's BASKIN-ROBBINS trade marks provide ice cream throughout the United States (“U.S.”) and elsewhere around the world under the trade mark BASKIN-ROBBINS.
The Complainant, its predecessors, affiliates and franchisees have extensively used and promoted the BASKIN-ROBBINS name and trade marks since 1953. They have obtained more than a dozen registrations for the trade mark in the United States, including but not limited to U.S. Registration No. 1185045 (issued on January 5, 1982) and U.S. Registration No. 1783116 (issued on July 20, 1993). The Complainant has also obtained trade mark registrations for its BASKIN-ROBBINS trade mark in more than 35 countries around the world.
The Baskin-Robbins system is the world's largest hard serve ice cream franchise, with more than 6,000 outlets in 35 countries, serving more than 3.7 million people weekly. The Complainant promotes its BASKIN-ROBBINS name and trade marks through a variety of media, including the Internet. It also maintains a website using the domain name .
The Respondent's disputed domain name was registered in March 2001. 5. Parties' Contentions A. Complainant
The Complainant contends as follows:
(a) The disputed domain name is almost identical and is confusingly similar to the Complainant's registered trade mark BASKIN-ROBBINS and differs only in that the disputed domain name omits the second “b” in the word “Robbins” in the trade mark BASKIN-ROBBINS.
The Complainant contends that its trade mark is a well-known and famous mark, having regard to the extensive use of the trade mark around the world since 1953, and for which trade mark registrations have been obtained in more than 35 countries around the world. Its ice cream is also sold in more than 6,000 outlets around the world under the trade mark BASKIN-ROBBINS and to more than 3.7 million customers weekly.
The Complainant contends that this is a clear case of typosquatting. The disputed domain name is visually confusingly similar to the Complainant's registered trade marks and the name of the Complainant's official website. The slight misspelling or modification of a well-known trade mark does not alter the fact that the disputed domain name is confusingly similar to the registered trade mark of the Complainant.
Previous cases under the UDRP have shown that where the registration of the domain name constitutes typosquatting, the disputed domain name is, by definition, to be regarded as confusingly similar. The present case should be considered as a case of typosquatting as Internet users searching for the Complainant's official website may easily mistype the name and reach the website of the Respondent instead.
(b) The disputed domain name has not been registered with the consent or authorization of the Complainant. The Complainant has never granted the Respondent any express or implied license to use its trade marks. Neither the Respondent nor its website makes any bona fide offering of goods or services using the name “baskinrobins” or a similar name.
The Respondent has sought to capitalize on the Complainant's goodwill by directing Internet users to the Respondent's website and promoting the Respondent's website to other businesses to obtain advertising revenue. The Respondent's website has been designed to create the belief that the Respondent's website is affiliated with the Complainant but then provides links to other sites that, in many instances, identify retailers of ice cream that may compete with the Complainant. There are also links to sites offering weight loss products, the treatment of digestive problems and depression and dating services. The Complainant contends that the Respondent is using its website for commercial gain by soliciting third parties to advertise on its website or to otherwise generate advertising revenue. The Complainant accordingly contends that the Respondent's use of the disputed domain name is for commercial gain with the intent of wrongfully diverting consumers to other websites, and is not a legitimate, bona fide use of the mark and does not confer legitimate interests in the disputed domain name. For these reasons, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
(c) The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant alleges the following:
The Respondent has ignored the Complainant's attempts to enforce its trade mark rights. The Complainant, through its counsel, sent a cease and desist letter to the Respondent but the Respondent has failed to acknowledge receipt or respond to the letter. The Complainant argues that such failure to reply is capable of supporting an inference that a domain name was registered in bad faith.
The Respondent's use of a variant (as noted above) of the Complainant's trade mark amounts to typosquatting and constitutes, of itself, bad faith.
The Respondent's use of its website with the disputed domain name is or was for commercial gain. It has wrongfully diverted consumers looking for information on the Complainant's products to other websites which the Respondent is using to generate revenue. Such use is not bona fide and evidences the Respondent's bad faith attempt to trade on the Complainant's goodwill and famous trade marks.
The Respondent's use of its website with the disputed domain name is also, in part, undertaken for the purpose of disrupting the Complainant's business. Such action reduces the number of visitors to the Complainant's website, which may adversely affect the Complainant's business, and constitutes bad faith use. Competing with the Complainant for the attention of Internet users is sufficient evidence of bad faith.
The Respondent must have been aware of the fame of the Complainant's trade mark but used an obvious and deliberate misspelling of the same in the disputed domain name for the purpose of creating confusion.
In addition to the direct evidence of bad faith shown by the content of the Respondent's website, there is additional evidence of bad faith by the Respondent's pattern of registration of domain names in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name. The Complainant relies on the Respondent's registration of other domain names identical or similar to famous marks belonging to third parties like , , and others and has exhibited evidence thereof in its Complaint. B. Respondent
The Respondent has not filed a Response or replied to the Complainant's contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer or cancellation of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trade mark 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.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from that party's failure to comply with the Rules “as it considers appropriate.”
As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel decides the dispute based on the Complaint and accepts as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
The Respondent's default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, the requirements of the Policy: World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Complainant's trade mark BASKIN-ROBBINS has been registered in more than 35 countries around the world. Its ice cream is also sold in more than 6000 outlets around the world under the trade mark BASKIN-ROBBINS and to more than 3.7 million customers weekly. It has been in use since 1953. It has been shown that the trade mark has been advertised and used extensively and for a long period of time around the world. This Panel has no hesitation in finding that the trade mark is a widely-known mark and that the Complainant owns and enjoys a substantial goodwill and reputation in the trade mark and has rights in that trade mark.
The disputed domain name differs only from the Complainant's trade mark by the omission of the second “b” in the word “robbins” in the trade mark BASKIN-ROBBINS. The Complainant's trade mark BASKIN-ROBBINS is clearly distinctive. The minor misspelling does not distinguish the disputed domain name from the Complainant's trade mark. It is well established that the mere addition of generic and non-distinctive terms would not be enough to prevent a finding of confusing similarity.
This Panel accepts the Complainant's contention that this is a case of typosquatting. The disputed domain name is clearly confusingly similar to the Complainant's registered trade mark and the name of the Complainant's official website. A slight misspelling or modification of a well-known trade mark does not alter the fact that the disputed domain name is confusingly similar to the registered trade mark of the Complainant and may indeed, of itself, be evidence of typosquatting. See DD IP Holder LLC v. Registrant [923455], Domain Administrator,WIPO Case No. D2009-0271 and ESPN, Inc. v. XC2,WIPO Case No. D2005-0444. Internet users searching for the Complainant's official website may easily mistype or misspell the name and reach the website of the Respondent instead.
This Panel accordingly finds that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the respondent] 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 [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [the respondent] 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 trade mark or service mark at issue.
The Respondent has not filed a Response to the Complaint. It has not attempted to demonstrate that it has any rights or legitimate interests in the disputed domain name.
In the absence of any Response, this Panel accepts the Complainant's contentions that it has no commercial relationship or association with the Respondent and has not granted the Respondent any express or implied authorization or license to use its trade marks. There is no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent has not made any bona fide offering of goods or services using the name “baskinrobins” or a similar name.
The contents of the Respondent's website do not show that the Respondent was at any time making any legitimate noncommercial or fair use of the disputed domain name. On the contrary, there was and is no apparent legitimate reason for the Respondent to use the very slightly modified Complainant's trade mark as part of its domain name. It is apparent to the Panel from the facts presented by the Complainant, which are not disputed by the Respondent, that the Respondent has been seeking to capitalize on the Complainant's goodwill by directing Internet users to the Respondent's website and promoting the Respondent's website to other businesses (including retailers of ice cream that may compete with the Complainant, businesses that offer weight loss products and treatment of digestive problems and depression and businesses that offer dating services). This Panel accepts that the Respondent is or has been using its website for commercial gain by soliciting third parties to advertise on its website or to otherwise generate advertising revenue. The Respondent's use of the disputed domain name was clearly with the intent of wrongfully diverting consumers to other websites and was and is not a legitimate, bona fide use of the mark and does not confer legitimate interests in the disputed domain name.
This Panel finds, for the reasons contended by the Complainant, that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:
(i) circumstances indicating that you [the respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [the respondent] 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 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 your website or location or of a product or service on your website or location.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel accepts the Complainant's submissions that the Respondent's use of the disputed domain name which is confusingly similar to the Complainant's trade mark – the only difference being a very minor and obviously deliberate misspelling of the Complainant's trade mark – amounts to typosquatting. As noted by the panels in DD IP Holder LLC v. Registrant [923455], Domain Administrator,WIPO Case No. D2009-0271, ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 and A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, typosquatting may be evidence of bad faith registration of a domain name.
It is also evident from the Respondent's use of its website that the Respondent's intention was to divert consumers looking for information on the Complainant's products to other websites, for the Respondent's own commercial gain. Those other businesses had no connection with the Complainant. Such use by the Respondent was plainly not bona fide and evidenced the Respondent's bad faith registration and use of the disputed domain name by intentionally seeking to attract business by wrongfully trading on the Complainant's goodwill and trade marks.
The Panel also accepts the Complainant's contentions, absent any response or reply from the Respondent, that the Respondent's use of its website with the disputed domain name was also, in part, undertaken for the purpose of disrupting the Complainant's business. Such actions are capable of reducing the number of visitors to the Complainant's website and may adversely affect the Complainant's business. As noted in Estée Lauder Inc. v. , and Jeff Hanna, WIPO Case No. D2000-0869, competing for the attention of Internet users (even in circumstances in which the respondent is not selling directly competing products) may be evidence of bad faith.
The Panel also accepts the Complainant's contention that the Respondent must have been aware of the Complainant's trade mark and used an obvious and deliberate misspelling of the same in the disputed domain name for the purpose of creating confusion and for commercial gain. In similar circumstances, other panels have held that such conduct constituted bad faith: see e.g. BR IP Holder LLC v. Ali Abdelwahed (AEORG-MAHMEDO), WIPO Case No. DAE2009-0003. This Panel similarly finds that the Respondent must have known of the Complainant's distinctive trade mark and that its deliberate use of a confusingly similar mark for the purposes earlier discussed was clearly bad faith use.
The Panel also notes the Complainant's arguments that in addition to the direct evidence of bad faith shown by the content of the Respondent's website, there is additional evidence of bad faith by the Respondent's pattern of registration of domain names in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name. The Complainant relies on the Respondent's apparent registration of other domain names identical or confusingly similar to well-known marks belonging to third parties like , , and others. In the absence of a Response from the Respondent, the Panel accepts the assertions of the Complainant as to the facts, infers that the Respondent has engaged in a pattern of such conduct in order to, inter alia, disrupt the Complainant's business and finds that such conduct constitutes bad faith registration.
Accordingly, for all the foregoing reasons, the Panel finds that the disputed domain name has been 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 name be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: December 7, 2009
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