The Complainant is Specsavers International Healthcare Limited of Guernsey, United Kingdom of Great Britain and Northern Ireland, represented by Eversheds, LLP, United Kingdom.
The Respondent is Milan Kovac of Bratislava, Slovakia; WWWSPECSAVERS.COM Privacy--P of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2011. On June 28, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2011, the Registrar 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 June 30, 2011 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 July 4, 2011.
On June 30, 2011, the Center transmitted an email communication to the parties in both English and Slovak regarding the language of the proceeding. On the same day, the Complainant requested an extension to comment on the language of the proceeding. The Center confirmed that the due date for the Complainant to submit the language request was extended to July 6, 2011 and the due date for the Respondent to submit the language request was accordingly extended to July 8, 2011. On July 4, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 July 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on August 3, 2011. 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 the owner of several trademark registrations for SPECSAVERS, such as the Community Trademark Nos. 449082, filed on January 14, 1997, in classes 5, 9, 35 and 42; and 449256, filed on January 14, 1997, in classes 5, 9, 35 and 42.
The Complainant is also the registrant of numerous domain names incorporating the mark SPECSAVERS, including , registered on June 12, 1996 and , registered, according to the WhoIs database, before August 1996.
The disputed domain name was registered on November 8, 2006. 5. Parties’ Contentions A. Complainant
The Complainant points out that it is a leading optical brand and contact lens supplier in the United Kingdom, trading in various goods and services including glasses, contact lenses and opticians’ services. The Complainant informs the Panel that its business was established in 1984 and highlights that, as a result of its extensive promotional and trading activities, it has built up significant goodwill and reputation in the mark SPECSAVERS both in the United Kingdom and internationally.
The Complainant emphasizes that the mark SPECSAVERS is very well-known and widely recognized among consumers as well as traders and businesses in the optical industry as being distinctive of the Complainant and its products and services. The Complainant operates 1,503 stores worldwide and the Complainant’s group turnover in 2009/2010 amounted to £1.36 billion.
The Complainant contends that the disputed domain name is virtually identical to the mark SPECSAVERS in which the Complainant has rights since the only difference between the disputed domain name and the Complainant’s trademark is the presence, in the disputed domain name, of the letters “www” which, in the context of domain names, simply indicates the “World Wide Web” prefix to an online address.
The Complainant states that the Respondent registered the disputed domain name in order to capture traffic from users mistyping “www.” (the Complainant’s genuine site) into their browser by omitting the full stop after “www” and redirecting them to the Respondent’s website. The Complainant underlines that this practice is commonly referred to as “typo-squatting” and has been the subject of numerous decisions under the Policy, including a recent UDRP decision, Pocket Kings Limited v. Owen Webster, WIPO Case No. D2011-0613.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not and has never been connected to, affiliated with or authorised by the Complainant in any way and has no legitimate interest whatsoever in using the mark SPECSAVERS. The Complainant highlights that SPECSAVERS has no usage in common language and is not being used by the Respondent for any descriptive purposes.
The Complainant contends that the Respondent is not using the disputed domain name in connection with any legitimate trade or bona fide offering of goods or services, since the disputed domain name has been redirected to a pay-per-click website which imitates the layout and style of the Complainant’s website “www.” and provides links to third party sites related to optical services.
The Complainant highlights that, by creating the false impression that the website is connected with the Complainant, and by placing numerous pay-per-click advertisements on it, the Respondent is seeking to take advantage of the reputation and pull of the SPECSAVERS brand and to deliberately mislead the Complainant’s customers or potential customers, for a commercial gain.
The Complainant also states that there is no evidence that the Respondent has ever used or been known by the mark SPECSAVERS and that the disputed domain name has been registered and has been used by the Respondent with the deliberate aim of creating confusion with the Complainant’s website and seeking to profit from that confusion.
The Complainant concludes, with reference to the issue of the rights or legitimate interests, that the Respondent does not have any rights or legitimate interests in the disputed domain name as it has been registered purely in order to trade off the Complainant’s trademark, goodwill and reputation.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent has registered the disputed domain name with the specific aim of attracting the Complainant’s customers or potential customers to the Respondent’s website by using a typo-variant of the Complainant’s legitimate website address, and then deriving a commercial gain from the third party links displayed on the website.
The Complainant highlights that such use of the disputed domain name is likely to tarnish the Complainant’s goodwill and reputation in its mark SPECSAVERS and points out that the suppliers of goods promoted on the website include the Complainant’s competitors, which in turn is capable of diverting sales away from the Complainant.
The Complainant also states that the lack of response to the Complainant’s cease and desist letters and the Respondent’s use of a privacy service in order to conceal its real identity and contact details, also strongly suggest that the disputed domain name has been registered and is being used by the Respondent in bad faith.
As an additional circumstance evidencing bad faith, the Complainant points out that previous UDRP panel decisions were issued against the Respondent (Intensa Sanpaolo S.p.A v. Milan Kovac,WIPO Case No. D2010-1159, regarding the domain name , and Revlon Consumer Products Corporation v. Privacy-P / Milan Kovac,WIPO Case No. D2010-1806, concerning the domain name ). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
On the question of the language of the proceeding, the Center invited the parties to comment, as the language of the proceeding is normally the same as the language of the Registration Agreement, in this case, Slovak. The Respondent did not comment on this question by the specified due date. The Complainant requested the Panel to decide that the language of the proceeding in this case be English for several reasons advanced in its language submission of July 4, 2011. According to paragraph 11(a) of the Rules, the Panel has the authority to determine a different language other than the one in the Registration Agreement, having regard to the circumstances of the administrative proceeding. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836; Intensa Sanpaolo S.p.A v. Milan Kovac,WIPO Case No. D2010-1159; Revlon Consumer Products Corporation v. Privacy-P / Milan Kovac,WIPO Case No. D2010-1806), decides that the language of the proceeding be English.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the registered trademark SPECSAVERS owned by the Complainant. The Panel shares the finding that the addition of the prefix “www” constitutes a typosquatting that does not exclude the confusing similarity between the Complainant’s trademark and the disputed domain name.
See, along these lines, Pocket Kings Limited v. Owen Webster, WIPO Case No. D2011-0613, regarding the domain name , in which it was stated: “[t]he inclusion of “www”, even without a period between the two terms does not alter how the term “fultiltpoker” will be read by an Internet user. The “www” prefix, as it is normally used, with a period, is an irrelevant consideration when considering whether a domain name is similar to a trademark (see cases referred to by the Complainant such as Rockstar Games v. Juan Carlos Azurdia, WIPO Case No. D2007-1557) and in this instance, even without the period, is an irrelevant consideration. All differences between the disputed domain name and the Complainant’s trademarks are immaterial and therefore, the disputed domain name is confusingly similar to the Complainant’s trademarks”. See also Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286, Trustmark National Bank v. Henry Tsung,WIPO Case No. D2004-0274; Bayer Akiengesellschaft v. Yongho Ko,WIPO Case No. D2001-0205 ( confusingly similar to BAYER); and Pfizer, Inc. v. Seocho and Vladimir Snezko,WIPO Case No. D2001-1199 ( confusingly similar to PFIZER).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that, when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
In addition, the Panel finds that the Respondent, whose true identity was obscured by the privacy shield, has not shown that it is commonly known by the disputed domain name, as stated in Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435. As found in Harrah’s License company, LLC v. WHOIS IF Theft Protection, NAF Case No. FA797840, “[r]espondent cannot be commonly known by the disputed domain name pursuant to Policy 4(c)(ii). The Panel wishes to emphasize that the use of identity protection services does not, as a Rule, prevent a respondent from being commonly known by the subject domain name. Rather, Policy 4(a)(ii) requires a showing that Respondent is commonly known by the domain name in question. Here, Respondent has failed to come forward with evidence that suggests that it is commonly known by the disputed domain name”.
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
The Panel notes that the disputed domain name has been pointed and is currently pointing to a sponsored pay-per-click web site mainly aimed at directing visitors to third party commercial web sites, including sites promoting opticians’ services.
The Panel finds that, under the circumstances of the case, the use of the disputed domain name merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the disputed domain name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the disputed domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept.,WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name ] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith, the Respondent has simply added the prefix “www” to the Complainant’s SPECSAVERS trademark. The Panel finds that this particular kind of typosquatting, consisting of the registration of a domain name with the mere addition of the acronym “www” to a registered trademark, should be regarded as a clear circumstance evidencing the Respondent’s bad faith at the time of the registration (Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
The Panel finds that Internet users, in light of the contents of the web page linked to the disputed domain name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, in all likelihood, the Respondent profits by earning pay-per-click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site and of the websites linked thereto.
In accordance with prior decisions, the Panel also finds that the Respondent’s failure to respond to the Complainant’s cease and desist letters is a further evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises,WIPO Case No. D2008-1003, in which the Panel stated: “[a]ny such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting”.
The Panel also considers that the use of a privacy shield is, under the circumstances of the present case, an additional circumstance evidencing bad faith. See, along these lines, Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743 (): “[h]ere, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith”.
The Respondent has also been the subject of two other UDRP proceedings (see Intensa Sanpaolo S.p.A v. Milan Kovac,WIPO Case No. D2010-1159 and Revlon Consumer Products Corporation v. Privacy-P / Milan Kovac,WIPO Case No. D2010-1806), concerning the registration by the Respondent of domain names containing registered trademarks of third parties. This is a further evidence of the Respondent’s bad faith conduct.
As a final remark with reference to the circumstances evidencing bad faith, the Panel notes that there has been no Response and, in such case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146, it is open for the Panel, in appropriate circumstances, to infer a prima facie case of bad faith registration.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For 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 the Complainant.
Luca Barbero
Sole Panelist
Dated: August 17, 2011
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