Complainant is Wecosign, Inc. of Santa Ana, California, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.
Respondent is Associated Concents Group LLC of La Jolla, California, United States of America. 2. The Disputed Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2010. On July 26, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 27, 2010, GoD, Inc. transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on July 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2010. Despite evidence that the Complaint was delivered to the address of Respondent, Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2010.
The Center appointed James H. Grossman as the sole panelist in this matter on August 26, 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 and provides financial guaranty services for renters and landlords across of the United States. Complainant registered the domain name (“Domain Name”) on July 21, 2005. The underlying website provides information about Complainant’s services as well as providing an online application form, whereby potential customers can submit an application to obtain Complainant’s services.
Complainant received a registered service mark from the United States Patent and Trademark Office for WECOSIGN on September 1, 2009 (Reg. No. 3,677,202). The registration refers to the fact that Complainant has used the mark in commerce since July 2005.
Respondent registered the Disputed Domain Name on July 4, 2010. 5. Parties’ Contentions A. Complainant
Complainant argues that the Disputed Domain Name incorporates Complainant’s Domain Name as well as its service mark in its entirety, together with the geographically generic or descriptive term “USA.” At the Disputed Domain Name site, Respondent appears to advertise and offer services identical to those of Complainant. In addition, Complainant states that, based on information and belief, Respondent may be engaging in fraudulent activity in that it accepts payment but fails to render the promised services. Complainant believes and alleges that Respondent has no rights or legitimate interests in respect to the Disputed Domain Name and that it was registered and is being used in bad faith.
After learning of Respondent’s registration of the Disputed Domain Name, Complainant sent Respondent a cease and desist letter in which Complainant asserted its right to the Disputed Domain Name and alleged that the Disputed Domain Name infringed upon Complainant’s service mark and Domain Name. A further letter was sent by counsel for Complainant. During its investigation of the matter, Complainant alleges that it learned of at least one customer who engaged Respondent’s services and claims to have been defrauded. Finally, Complainant advises that Respondent has registered several other domain names incorporating trademarks of third parties with similar confusingly similar names – as Complainant states, this is a form of so-called typosquatting on the marks of others. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no right or legitimate interests with respect to the Disputed Domain Name; and
iii.. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
Complainant has a registered trademark for WECOSIGN, therefore satisfying the Policy requirement for rights in a mark. As Complainant points out, it will typically be the case “that a domain name consisting of a (locally) well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.” Gannett Co., Inc. v. Henry Chan,WIPO Case No. D2004-0117. So where as in this case a domain name incorporates a complainant’s mark in it’s entirely and merely adds a geographically generic or descriptive term such as “USA,” such domain name is confusingly similar to the complainant’s mark. Also see Lacoste Alligator S.A. v. China Bizseas,WIPO Case No. D2009-0493 to the effect that a “domain name that wholly incorporates [a] registered trademark establishes confusing similarity.” In this case it seems to the Panel quite evident that a consumer could easily mistake the Disputed Domain Name as a service of Complainant. As Complainant suggests this is especially true for a business which relies to such an extent on its website for its marketing.
The Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the trademark in which Complainant has rights and therefore is sufficient to satisfy the first criterion set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant states that based on information and belief, Respondent has no rights or legitimate interests in the Disputed Domain Name but that Respondent has the opportunity in responding to the Complaint to demonstrate any such rights. For some unknown reason, Complainant does not expressly state that it has never granted to Respondent any rights to use the Disputed Domain Name; however, the Panel overlooks this immaterial omission for purpose of the present Policy proceeding in that from all the evidence or record here it seems clear that no such permission was ever given. Complainant does assert that Respondent intentionally attracts, for commercial gain, Internet users to its website with the intent of creating the likelihood of confusion with Complainant’s mark and that such use is not a bone fide use. E. Gluck Corporation v. James L. Clark d/b/a Animationwerks,WIPO Case No. D2000-1651.
The Panel accepts that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondent. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy, and accordingly, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name. Finally, the use by Respondent of the Disputed Domain Name is obviously commercial and not a fair use in that it is intended for commercial gain and seeks to divert consumers through use of the Disputed Domain Name of Complainant’s WECOSIGN mark. C. Registered and Used in Bad Faith
The Panel finds there is little doubt that Respondent’s use of the Disputed Domain Name is likely to cause consumer confusion, mistake and deception as to the source or sponsorship of the Disputed Domain Name. Thus, it is likely that a consumer could well believe that the Disputed Domain Name or content on it has been approved, sponsored or affiliated with Complainant which is apparently not the case. The timing of Respondent’s registration of the Disputed Domain Name suggests that Respondent was aware of Complainant’s mark and/or Domain Name and that Respondent’s act of registration was itself evidence of bad faith. AQUAQUEEN International Pty Ltd v. Caroldean Ross / Caroldean El Paseo,WIPO Case No. D2008-1971; Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
While it appears from the Complaint that Respondent has registered similar infringing domain names and thus has established a pattern of such conduct which evidences bad faith conduct (Volvo Trademark Holding AB v. Cup International Limited,WIPO Case No. D2000-0338), the Panel has determined to focus solely on the facts of this particular case in which it seems clear that Respondent has acted in bad faith. While Complainant advises that it has learned of at least one customer who has been defrauded by Respondent, Complainant did not present sufficient evidence of this particular situation to be considered by the Panel. Notwithstanding any lack of evidence in that particular situation, the Panel finds nevertheless sufficient evidence of bad faith to satisfy the third criterion of paragraph 4 (a) 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 Disputed Domain Name be transferred to Complainant.
James H. Grossman
Sole Panelist
Dated: September 8, 2010
Full & Egal Universal Law Academy