WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wecosign, Inc. v. Jackson-Wright Case No. D2010-0285 1. The Parties
Complainant is Wecosign, Inc. of California, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.
Respondent is Jackson-Wright of New York, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , and (the “Disputed Domain Names”) are registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2010. On February 24, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 24, 2010, the Registrar transmitted by email to the Center its verification response indicating registrant and contact information for the Disputed Domain Names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 1, 2010 providing the registrant and contact information indicated by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 1, 2010. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on March 3, 2010. On March 3, 2010, the Center verified that the Complaint together with the amendment to the Complaint and the amended 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 Respondent of the Complaint, and the proceedings commenced on March 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on March 24, 2010.
The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on April 8, 2010. 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 offers financial guaranty and surety services to renters and landlords in the United States, Canada, and the United Kingdom of Great Britain and Northern Ireland. Complainant has offered services under the mark WECOSIGN since 2005. In July 2005, Complainant registered the domain name , where it operates a commercial website (“www.”). In conducting its business, Complainant relies heavily on its website to provide information about its services and to attract potential customers.
Complainant is the owner of United States Service Mark Registration No. 3,677,202 for the mark WECOSIGN, registered September 1, 2009 on the Principal Register, for “financial guaranty and surety services for renters” in Int. Class 36, with a first use in commerce of July 21, 2005.
Respondent registered the Disputed Domain Names with the Registrar in early May 2009. Complainant provided evidence that Respondent is using the Disputed Domain Names for commercial purposes, namely, to provide “click-through” links to various websites.
Complainant also states that, in late April 2009, Respondent registered the domain names , , , and . These domain names were the subject of a prior WIPO proceeding, in which the panel ordered the domain names transferred to Complainant (the “Prior Adverse WIPO Decision”). See Wecosign, Inc. v. Roderick Wright, d/b/a Jackson-Wright, / Domains by Proxy, Inc.,WIPO Case No. D2009-1451. 5. Parties' Contentions A. Complainant
In its Complaint, Complainant contends that the Disputed Domain Names are confusingly similar to its WECOSIGN mark. Complainant contends that the Disputed Domain Names incorporate Complainant's mark in its entirety and that the addition of the generic term “will” does not alter the meaning of the Disputed Domain Names or materially alter the overall appearance of the Disputed Domain Names. Complainant further contends that the Disputed Domain Names were deliberately formulated to prey upon consumers with imperfect recollections or those who mistakenly turn Complainant's mark into a phrase. Complainant contends that the potential for injury caused by Respondent's registration of the Disputed Domain Names is particularly great because Complainant relies heavily upon consumers' ability to access Complainant's legitimate website, “www.”.
In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant contends that Respondent has not used or made demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. Complainant also contends that Respondent has not been commonly known by the Disputed Domain Names. And Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, but rather, is using the Disputed Domain Names to host a parking page featuring sponsored links, including links to competitors' financial services.
Finally, Complainant contends that Respondent registered and is continuing to use the Disputed Domain Names in bad faith. Among numerous other contentions, Complainant contends that Respondent's registration of the Disputed Domain Names and the domain names involved in the Prior Adverse WIPO Decision evidence a pattern of conduct that may have been intended to prevent Complainant from reflecting its mark in the corresponding domains. Complainant further contends Respondent has registered many other domain names, several of which include the registered trademarks of third parties (e.g., VISA and SIX SIGMA). And Complainant contends that the fact that Respondent has already been found to have engaged in bad faith registration and use of domain names, and has been ordered to transfer the domain names, should be considered further evidence of the Respondent's course of conduct and its bad faith registration and use of the Disputed Domain Names. In addition, Complainant contends that Respondent may have registered the Disputed Domain Names in order to intentionally divert customers to its website for financial gain. Finally, Complainant contends that Respondent failed to respond to Complainant's attempt to resolve this matter amicably and that Respondent's failure to respond or take any action whatsoever after receiving actual notice of Complainant's asserted rights to the WECOSIGN mark is strong evidence of bad faith and willfulness.
In support of its contentions, Complainant has made several references to previous UDRP decisions. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Panel's jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of each of the Disputed Domain Names under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, the Policy, paragraph 4(a), requires Complainant to prove each of the following:
(i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in the Disputed Domain Names; and
(iii) that the Disputed Domain Names registered by Respondent have been registered and are being used in bad faith.
In view of Respondent's failure to submit a Response, the Panel will decide this administrative proceeding based on Complainant's undisputed allegations for which there are support, pursuant to the Rules, paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, paragraph 14(b). A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names are confusingly similar to Complainant's WECOSIGN mark. The Panel notes that, in view of Respondent's failure to submit a response, Respondent has not challenged the distinctiveness of the WECOSIGN mark, nor has it challenged Complainant's assertion that the Disputed Domain Names are confusingly similar to Complainant's mark.
The Disputed Domain Names fully incorporate Complainant's 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 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). The mere addition of a generic top-level domain and the generic term “will” to Complainant's mark in each of the Disputed Domain Names is not sufficient to avoid this finding. With respect to the first point, it is well established in many panel decisions that suffixes such as “.com”, “.org”, or “.net” should not be taken into account when considering the issue of whether a domain name is identical or confusingly similar to a trademark. See, e.g., Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (stating that “the addition of the generic top-level domain (gTLD) name ‘.com' is . . . without legal significance since use of a gTLD is required of domain name registrants”). With respect to the second, it has been recognized that “[f]orming a domain name by adding to a complainant's mark a word which is descriptive or suggestive of the very services offered by the complainant under that mark, effectively ensures that the domain name will convey the same idea, or impression, as the mark.” World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642. Moreover, the Panel believes that consumers searching for Complainant or the services Complainant provides under the WECOSIGN mark might mistakenly add the term “will”, turning the mark into a phrase that is evocative of Complainant's mark and the nature of its services. The addition of this generic term to Complainant's mark in the Disputed Domain Names does not change the meaning of the Disputed Domain Names, but rather ensures that the Disputed Domain Names will convey the same idea, or impression, as the mark.
For these reasons, the Panel concludes that the Disputed Domain Names are confusingly similar to the WECOSIGN mark, a service mark in which Complainant has rights. B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue Policy, paragraph 4(c).
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognized that the information needed to prove such a right or interest is normally in the possession of the respondent. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of production passes to the respondent to show that it does indeed have such a right or interest. See, e.g., Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
Complainant contends that Respondent has no rights or legitimate interests in the mark WECOSIGN, the designation “wewillcosign”, or the Disputed Domain Names. Respondent has not submitted any arguments or evidence to counter Complainant's prima facie case.
Nothing in the record suggests that Respondent is commonly known by any of the Disputed Domain Names or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. In fact, Complainant has offered evidence that Respondent has used, and is still using, the Disputed Domain Names to re-direct Internet users to other websites offering goods and services that may compete with Complainant's goods and services. Respondent's use of the Disputed Domain Names to provide links to goods and services that are related to those of Complainant does not constitute a bona fide offering of goods or services. See, e.g., St. Baldrick's Foundation Inc. v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0705 (stating that prior panels “have decided that the use of confusingly similar domain names in connection with a ‘click-through' scheme does not serve to establish a bona fide offering of goods or services”).
In addition, the undisputed record indicates that Respondent registered the Disputed Domain Names less than two weeks after it registered the domain names
- , , , and - domain names that are identical to Complainant's WECOSIGN mark. Given the record before the Panel, it is a reasonable inference that Respondent was aware of Complainant and Complainant's business when Respondent registered the Disputed Domain Names and that Respondent deliberately incorporated Complainant's WECOSIGN mark in the Disputed Domain Names in order to suggest an association between the Disputed Domain Names and Complainant.
In short, there is simply no evidence in the record from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Names.
The Panel, especially in the absence of any response from the Respondent, considers that the circumstances described in the Policy, paragraph 4(c), of proof of legitimate interest by Respondent in the Disputed Domain Names, are not likely to exist.
For these reasons, in accordance with the Policy, paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names. C. Registered and Used in Bad Faith
Complainant also argues that Respondent registered and is using the Disputed Domain Names in bad faith. Complainant has made numerous assertions in support of its position.
As already mentioned, the Panel finds that it is likely that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Names, which evidences bad faith on Respondent's part. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Moreover, the Panel is further convinced of Respondent's bad faith because Respondent has engaged in a pattern of registering confusingly similar domain names against Complainant. And, as the panel found in the Prior Adverse WIPO Decision, Respondent has engaged in a pattern of conduct in registering at least 26 other confusingly similar domain names against various third parties, several of which domain names incorporate established marks such as VISA and SIX SIGMA. These patterns of conduct unquestionably violate the Policy, paragraph 4(b)(ii). See Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 (a “pattern of conduct” can involve registration of multiple domain names directed against either a single complainant or multiple complainants). In the absence of any response from Respondent, the Panel doubts that there was any legitimate reason for Respondent's choice of the Disputed Domain Names incorporating Complainant's WECOSIGN mark.
Finally, Complainant has submitted evidence that the Disputed Domain Names resolve to an advertising portal with links to various third party financial services. In other words, Respondent appears to have used the Disputed Domain Names in order to intentionally trade on the goodwill in the WECOSIGN mark and to attract traffic to other websites for commercial gain (pay-per-click revenue), which previous panels have concluded may support a finding of bad faith. See St. Baldrick's Foundation Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through' sites, can be considered to be evidence of bad faith.”).
In this case, the Panel finds that the totality of the circumstances supports the conclusion that Respondent registered and is using the Disputed Domain Names in bad faith. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied. 7. Decision
For all the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the Disputed Domain Names, , , , and , be transferred to Complainant.
Steven M. Auvil
Sole Panelist
Dated: April 22, 2010
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