WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION S, LLC v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc. Case No. D2010-0753 1. The Parties
The Complainant is S, LLC. of Boca Raton, Florida, United States of America, represented by Robert M. Schwartz, P. A., United States of America.
The Respondent is Whois Privacy Protection Service, Inc./ Demand Domains, Inc. both of Bellevue, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2010. On May 12, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On May 12, 2010, eNom, Inc transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 17, 2010, 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 Amended Complaint on May 21, 2010. The Center verified that the Complaint as amended 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 May 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2010. The Response was filed with the Center on June 14, 2010.
The Center appointed William R. Towns as the sole panelist in this matter on June 21, 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. Due to unforeseen circumstances, the date for the Panel to submit its decision to the Center was extended to July 19, 2010. 4. Factual Background
The Complainant markets and sells inspirational and motivational products under the SUCCESSORIES mark, and it the owner of several United States registrations of the SUCCESSORIES mark for self-improvement and motivational products and services, the first of which was issued by the United States Patent and Trademark Office (USPTO) on August 1, 1995.
The disputed domain name currently resolves to a webpage displaying sponsored links to third-party websites offering for sale motivational products and recognition awards in competition with the Complainant. The disputed domain name was registered through a privacy protection service. The registrar eNom, Inc disclosed the underlying registrant1 after receiving notice of the Complaint. 5. Parties' Contentions A. Complainant
The Complainant asserts that, through its predecessor in interest, it has continuously marketed and sold inspirational and motivational products using the SUCCESSORIES mark since as early as 1990. The Complainant is the owner of two United States registrations for the mark, which the Complainant asserts has become well-known as a result of extensive and continuous use.
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant's SUCCESSORIES mark, the only difference being the omission of the final letter “s” from the “success” portion of the Complainant's mark. The Complainant contends that the Respondent is engaged in typosquatting in order to divert Internet traffic to the Respondent's website, which features advertising links to other websites offering motivational products competing with those of the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has not authorized the Respondent to use the Complainant's mark, the Respondent is not commonly known by the disputed domain name, and the Respondent before any notice of this dispute was not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, according to the Complainant, the Respondent registered and is using the disputed domain name in bad faith to generate revenue from advertising links to third-party sites selling products in competition with the Complainant.
The Complainant maintains that typosquatting is presumptive if not conclusive evidence of registration of the disputed domain name in bad faith, and that the Respondent's use of the disputed domain name with a pay-per-click website including references or links to the Complainant's competitors clearly demonstrates the Respondent's awareness of the Complainant's mark and reinforces a finding of bad faith. The Complainant further maintains under the circumstances of this case that the use of a proxy registration service supports an inference of bad faith. B. Respondent
The Respondent affirms that it is the registrant of the disputed domain name, which the Respondent asserts it obtained without knowledge that the domain name might conflict with the Complainant's asserted trademark rights. Nevertheless, after reviewing the Complaint, the Respondent asserts that it contacted the Complainant and, without admitting any liability, offered several times to transfer the disputed domain name to the Complainant without cost. According to the Respondent, the Complainant has never responded.
The Respondent denies any bad faith in connection with the registration and use of the disputed domain name, but consents to the remedy requested by the Complainant and requests that the Panel “simply endorse Respondent's offer to transfer the domain to Complainant”, without reaching a decision on the merits. 5. Preliminary Issues A. Respondent's “Consent to Transfer”
As noted above, the Respondent unilaterally consents to the transfer the disputed domain name to the Complainant, provided the Panel orders the transfer without deciding whether the Complainant has satisfied the three elements of the Policy. As noted in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, panels in similar situations have taken three different approaches. Some panels have granted the relief requested on the basis of Respondent's consent without a review and analysis of the facts supporting the claim. See, e.g., Williams Sonoma, Inc. v. EZ Port,WIPO Case No. D2000-0207. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. See, e.g., Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. See, e.g., Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,WIPO Case No. D2003-0745.
In view of the paragraph 4 of the Policy and paragraphs 15(a) of the Rules, the Panel is reluctant to order a domain name transfer without determining that the Complainant has satisfied the three elements of the Policy. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, supra. In the circumstances of this case, without the mutual consent of both parties to the transfer, and in the absence of any concession by the Respondent that the three elements of the Policy have been satisfied, this Panel has determined to proceed to a decision on the merits. 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 SUCCESSORIES mark, 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 is identical to the Complainant's SUCCESSORIES mark save for the omission of the final letter “s” from the “success” portion of the Complainant's mark, which does not diminish the confusing similarity of the domain name to the Complainant's mark in terms of sight, sound and connotation. Further, this is 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 maintains that it registered the disputed domain name without any knowledge of the Complainant or its trademark rights, but the totality of circumstances in the record before this Panel convincingly indicates otherwise. The Complainant's SUCCESSORIES mark is a “coined” word. Yet as noted above, the disputed domain name is identical to the Complainant's mark but for the omission of a single “s”. This is strongly indicative of typosquatting, given the fanciful nature of the Complainant's mark. See Red Bull GmbH v. Grey Design, supra.
The nature of typosquatting is such that the engaging in this practice in and of itself can constitute evidence of bad faith registration, as it makes manifest the Respondent's knowledge of the Complainant's mark, particularly when coupled with the use of the confusingly similar domain name to divert Internet users to the Respondent's website. See Research In Motion Limited v. PrivacyP/Pluto Domain Services Private Limited.WIPO Case No. D2009-0324. See also Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474 (subsequent use of domain name with links to complainant's competitors reinforces such knowledge and constitutes bad faith use).
Based on the totality of the circumstances in the record before it, 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, which contains advertising links to third-party sites where products competing with the Complainant's are sold. 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 clear 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: July 19, 2010
1 Demand Domains was identified by eNom as the underlying registrant, and the Response submitted on behalf of this entity. Demand Domains hereinafter is referred to as the “Respondent”.
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