WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wecosign, Inc. v. Roderick Wright, d/b/a Jackson-Wright, / Domains by Proxy, Inc. Case No. D2009-1451 1. The Parties
The Complainant is Wecosign, Inc., Santa Ana, California, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.
The Respondents are Roderick Wright, d/b/a Jackson-Wright, Fredonia, New York, United States of America; Domains by Proxy, Inc., Arizona, United States of America (hereinafter referred to individually and collectively as “the Respondent”). 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2009. On October 28, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On October 28, 2009, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 6, 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 November 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on December 3, 2009.
The Center appointed Dennis A. Foster as the sole panelist in this matter on December 10, 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 is a United States of America company that markets financial guaranty and surety services, largely through its website found at its registered domain name, . The Complainant also possesses a valid service mark registration with the United States Patent and Trademark Office (“USPTO”) for the WECOSIGN mark (Registration No. 3,677,202, issued September 1, 2009).
The Respondent registered the disputed domain names, , , and , on April 26, 2009. Three of the names are not in use and one hosts a website that serves only to link Internet users to the websites of third party competitors of the Complainant. 5. Parties' Contentions A. Complainant
- The Complainant, a financial guaranty and surety services company based in the state of California, first used its WECOSIGN service mark in commerce on July 21, 2005. On the same date, the Complainant registered the domain name . The Complainant was incorporated in November 2007 while still making use of the mark and the domain name.
- Subsequently, the Complainant obtained a service mark registration for the WECOSIGN mark from the USPTO.
- The Complainant has received significant press exposure for its business and, by virtue of its use of its mark has established considerable goodwill. As such, the Complainant achieved common law service mark rights in the WECOSIGN mark prior to obtaining the USPTO registration.
- In late April 2009, the Respondent registered the disputed domain names , , and . All of these names are identical to the Complainant's mark.
- The Respondent has no rights or legitimate interests in the disputed domain names. None of the names is being used “in connection with a bona fide offering of goods or services.” Those names either lie dormant or host a parking page that provides links to the websites of third parties that market services competitive with those offered by the Complainant. The Respondent is not commonly known as any of the disputed domain names. The Respondent is not making legitimate noncommercial or fair use of the names.
- The Respondent registered and is using the disputed domain names in bad faith. The Respondent's actions fall under each and every circumstance listed in paragraph 4(b) of the Policy, which compels a finding of bad faith registration and use.
- The Respondent registered not only four domain names that are confusingly similar to the Complainant's marks, but has a pattern of registering domain names that infringe upon established trademarks such as VISA and SIX SIGMA. That pattern confirms the bad faith registration and use of the disputed domain names in this case.
- Furthermore, the Respondent's bad faith is demonstrated by its lack of real use of the names. Also, bad faith is suggested by the Respondent's failure to respond to the Complainant's cease-and-desist letter sent to the Respondent on June 17, 2009 and by the Respondent's use of a proxy registration service to hide the Respondent's true identity. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraphs 4(a)(i), (ii) and (iii) of the Policy, the Complainant can succeed in these proceedings and gain a transfer of the disputed domain names, , , , and , if the Complainant can demonstrate that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names were registered and are being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant's presentation to the Panel of appropriate evidence (Annex 3 of the Complaint) detailing the Complainant's valid USPTO service mark registration for WECOSIGN convinces the Panel that the Complainant has rights in that mark sufficient to satisfy the requirements of Policy paragraph 4(a)(i). See VICORP Restaurants, Inc. v. Anastasios Triantafillos, NAF Claim No. FA485933 (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office…”); and Vivendi Universal Games and Davidson & Associates, Inc. v. XBNetVentures Inc., NAF Claim No. FA198803 (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
All of the disputed domain names, , , , and , differ from the Complainant's WECOSIGN mark only by inclusion of various gTLDs. Since such differences are of no moment in a Policy examination, the Panel concludes that all of the domain names are identical to said mark. See PepsiCo, Inc. v. Pepsi SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (“the addition of the generic top-level domains (gTLDs) ‘.com' and “.net” to the said domain names is completely without legal significance.”); and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 (“The Panel points out that, it is generally accepted that the addition of ‘.com' does not take away the identicality or confusing similarity.”).
Accordingly, the Complainant has shown that the disputed domain names are identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Given the conclusion drawn by the Panel in the section above and the absence in the record of any license or authorization between the Complainant and the Respondent with respect to use of the WECOSIGN mark, the Panel believes that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Thus, it becomes the Respondent's duty to demonstrate that it possess those rights or interests. See Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474 (“…the consensus view is that Complainant need only put forward a prima facie case that Respondent lacks rights or a legitimate interest, whereupon the burden of production shifts to Respondent to allege specific facts establishing rights or a legitimate interest.”); and AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
Having not submitted a Response, the Respondent has failed to present the Panel with any evidence to counter the Complainant's prima facie case. Looking elsewhere in the record, the Panel finds no other rebuttal evidence. The Complainant has furnished good evidence (Annex 7 of the Complaint) that there is no functioning website connected with the disputed domain names, , and , so that the Panel can discover no reason to rule that the Respondent is using, or even plans to use, those names “in connection with a bona fide offering of goods or services” per the legitimizing rationale suggested in paragraph 4(c)(i) of the Policy. Furthermore, the use to which the fourth disputed domain name, , is being put, as implied by the uncontested evidence (Annex 8 of the Complaint) supplied by the Complainant – i.e., to simply provide Internet users with links to websites owned by the Complainant's competitors – also fails to constitute such a bona fide offering. See Brink's Network, Inc. v. Asproductions,WIPO Case No. D2007-0353 (“Respondent…used the Domain Name in connection with a website that offered sponsored results that provided links to websites that promote the goods and/or services of Complainant's competitors. Such commercial use does not constitute use of the Domain Name in connection with a bona fide offering of goods or services…”); and Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231 (“Use [of the disputed domain name] for a portal linking to websites of the Complainant's competitors is not a bona fide offering…”).
As to the possible application of paragraph 4(c)(ii) in the Respondent's favor, the Panel detects no resemblance between the Respondent's name and any of the disputed domain names. So the Panel concludes that it is extremely unlikely that the Respondent is commonly known by any of them. Similarly, the use, or nonuse, to which the disputed domain names are being rendered, as described above, does not equate to “legitimate noncommercial or fair use” of the same, meaning that the Panel does not believe that application of paragraph 4(c)(iii) is warranted in this case.
As a result, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Complainant has put forth many reasons for finding that the disputed domain names have been registered and used in bad faith by the Respondent. The Panel need not consider and analyze each such rationale for the purpose of this proceeding. One circumstance prompting a finding of bad faith is sufficient.
In the present case, the Panel is struck by the circumstance that the Respondent has registered not one but four domain names that are identical to the Complainant's mark. As contended by the Complainant without contradiction from the Respondent – who did not see fit to reply to the Complaint – the registration of multiple domain names that would likely infringe on the rights of others appears to be in keeping with the Respondent's general practices. The Complainant has furnished the panel with compelling evidence (Annex 46 of the Complaint) that the Respondent has registered at least twenty-six other such names involving established marks such as VISA and SIX SIGMA. This reprehensible pattern is sufficient, in and of itself, for the Panel to conclude that the Respondent has registered and is using the disputed domain names in bad faith. See, for example, Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556 (“[T]he practice of registering domain names containing the trademarks of other companies can indicate that the contested domain names were registered and are being used in bad faith. Ownership of numerous domain names that corresponds to the names or marks of well-known business entities suggests intent to profit from the activities of others.”); and NFL Properties Inc., et. al. v. Rusty Rahe,WIPO Case No. D2000-0128 (“a pattern of registration of domain names of other well-known entities is evidence of bad faith registration and use of the disputed Domain Names.”).
In view of the above, the Panel finds that the disputed domain names were registered and are being 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 the Complainant.
Dennis A. Foster
Sole Panelist
Dated: December 24, 2009
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