WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION John L. Scott, Inc. v. Dealwave Case No. D2010-0512 1. The Parties
The Complainant is John L. Scott, Inc. of Washington, United States of America, represented by Graham & Dunn, PC of the United States of America.
The Respondent is Dealwave of Maryland, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2010. On April 6, 2010, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On April 7, 2010, F transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 14, 2010. The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2010.
The Center appointed William R. Towns as the sole panelist in this matter on May 17, 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
The Complainant is a real estate brokerage company doing business in the United States, and owns a U.S. trademark registration for JOHN L. SCOTT for real estate services and real estate related services, which has been used in commerce since at least 1948. The Complainant asserts common law trademark rights in JOHN L. SCOTT REAL ESTATE based on use going back as far as 1931, which is reflected in the record. Since 1996, the Complainant has operated a website offering real estate listing information and access to real estate related services, such as mortgages and insurance. The Complainant registered and uses the domain names and , with its website.
The Respondent is the registrant of the disputed domain name . The disputed domain name resolves to a website featuring sponsored listings and advertising links related to real estate, insurance and mortgage services. Before instituting this proceeding, the Complainant sent a demand letter to the Respondent seeking the transfer of the disputed domain name, to which the Complainant received no response. 5. Parties' Contentions A. Complainant
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy. According to the Complainant, the Respondent's registration of the disputed domain name is an obvious case of typosquatting, which the Complainant maintains in and of itself is sufficient to establish bad faith.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has not been authorized to use the Complainant's marks, and is not commonly known by the disputed domain name. The Complainant further maintains that the Respondent's use of the disputed domain name to divert Internet users to the Respondent's website does not constitute use of the domain name in connection with a bona fide offering of goods or services, nor qualify as a legitimate noncommercial or fair use of the disputed domain name.
In view of the foregoing, the Complainant concludes that the Respondent is in bad faith under the Policy, and requests that the disputed domain name be transferred. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred as provided for in paragraph 4(i) of the Policy:
(i) The domain name registered by the Respondent is 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus panel view is that paragraph 4(c) 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. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's JOHN L. SCOTT and JOHN L. SCOTT REAL ESTATE marks, in which the Complainant has established rights through registration and use. Regarding the question of identity, the inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. The disputed domain name in this case incorporates the dominant portion of both of the Complainant's marks, and would be identical to the JOHN L. SCOTT REAL ESTATE mark save for the omission of the letter “e” in the word “estate”.
The foregoing circumstances are strongly evocative of the practice commonly referred to as “typosquatting” – the intentional registration and use of a domain name that is a common misspelling of a distinctive mark. In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by Internet users seeking the complainant's commercial website and divert them to the respondent's website. Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
In view of the strong indicia of typosquatting, coupled with the Respondent's use of the disputed domain name to divert Internet traffic to a pay-per-click parking site, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy, shifting the burden of proof to the Respondent under paragraph 4(c) to come forward with evidence of rights or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
To the contrary, the Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the initial interest confusion between the domain name and the Complainant's mark, intending to attract Internet users to the Respondent's website. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under the preceding headings, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. This is a classic case of typosquatting. The Panel finds that the Respondent registered and is intentionally using the domain name for commercial gain, to divert Internet users to its pay-per-click parking site, relying on typographical errors made by Internet users seeking the Complainant's website. See, e.g., Red Bull GmbH v. Grey Design, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
William R. Towns
Sole Panelist
Dated: May 31, 2010
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