Complainant is Oneida Ltd. of United States of America (“United States”), represented by The Law Office of Robert E. Purcell, United States.
Respondent is PrivacyP of Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2011. On July 14, 2011, the Center first transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the Domain Name. Having received no reply to the initial request and subsequent reminders of July 18, 20, and 21, 2011, the Center informed Power Brand Center Corp. that it would proceed based on the information gathered from the Complaint and the public WhoIs database on July 22, 2011. As Complaint did not name the registrant of the Domain Name indicated in the public WhoIs database as Respondent, the Center issued a Complaint Deficiency Notification providing the registrant and its contact information provided in the public WhoIs database on July 25, 2011. Complainant filed an amended Complaint on July 26, 2011.
The Center verified that the Complaint together with 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 July 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2011.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 24, 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
Complainant is a manufacturer of tableware and other products to serve and prepare food. Complainant owns a number of trademark registrations of the trademark ONEIDA, including one filed in the United States on December 8, 1995, registered under no. 75036465 for a variety of tableware products.
The Domain Name was registered on June 21, 2001. 5. Parties’ Contentions A. Complainant
Complainant contends that is identical or confusingly similar to the ONEIDA trademarks of Complainant. The Domain Name constitutes a classic example of typo squatting, Complainant submits, where Respondent seeks to profit from confusion among internet users seeking for Oneida products.
According to Complainant, the Domain Name directs to a landing page which features links to websites featuring Complainant’s products as well as websites which refer to products of competitors of Complainant. The Domain Name thus offers Respondent a pay-per-click source of revenue, Complainant states. Complainant has not licensed or otherwise authorized Respondent or any other entity to use .
Furthermore, Complainant submits that the website under falsely appears to be connected with, sponsored, endorsed, or owned by Complainant and misleadingly diverts prospective customers away from Complainant’s own website that offers its products for sale. This constitutes that bad faith registration and use as set out in article 4(b) (IV) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Respondent Identity
The Complaint was initially brought against Power Brand Center Inc. According to an online WhoIs database for the Domain Name, the identity of Respondent is shielded by the privacy service. The Center sent several formal and informal reminders to the concerned Registrar, Power Brand Center Corp. to respond to the Center’s request for registrar verification, but the Registrar failed to provide any reply. Subsequent to the Center’s Complaint Deficiency Notification, Complainant amended the Complaint, upon which PrivacyP. was stated as Respondent.
Any final determination as to the proper identity of the respondent(s) is at the sole discretion of the Panel. In the absence of the concerned Registrar’s verification of the registrant of the Domain Name, the Panel decides that for practical purposes here the proper Respondent in these proceedings is PrivacyP. (the privacy service provider).
As is evidenced by many decisions (see The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057; Research In Motion Limited v. PrivacyP/Pluto Domain Services Private Limited,WIPO Case No. D2009-0324; RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894), privacy services such as PrivacyP are often used by cybersquatters to hide their identity. In order to maintain the effectiveness of the UDRP procedure, several panels have taken a pragmatic approach by rendering their decision in respect of both the privacy service and the underlying registrant, and indeed also upholding Complainant elections to bring a Complaint against both. (See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320 and cases referred herein). In that manner there is reasonable certainty that the registrar, in case of a decision to transfer the domain name, would be unlikely to refuse to transfer the domain name to the Complainant on the ground that the privacy service (and not the disclosed underlying registrant) is the registrant of record in the WhoIs. This Panel concurs with that view and therefore identifies PrivacyP as Respondent. B. Identical or Confusingly Similar
Complainant has shown that it has rights in the ONEIDA trademark.
ONEIDA and the domain name are confusingly similar, because they only differ by the typo “ie” instead of “ei”, while the suffix “.com” is generally recognized as denoting the top level domain and is therefore a generic or descriptive element which does not change the confusing similarity. Therefore, the Panel concludes that the Domain Name is confusingly similar to Complainant’s trademark. C. Rights or Legitimate Interests
Once a Complainant establishes a prima facie case against a Respondent in relation to this element, the burden is on the Respondent to provide concrete evidence of its right or legitimate interests under paragraph 4(c) of the Policy: Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
Complainant states that it has not licensed or otherwise authorized Respondent or any other entity to use the Domain Name. Furthermore, there is no evidence that Respondent was known by the Domain Name.
Based on the evidence submitted, the Panel concludes that the Domain Name (which is currently not connected to a website) at some stage connected to a landing or parking page, which contains links to websites, some of which according to the Complainant relate to products of competitors of Complainant. The Panel notes that, since the link with the landing page currently is not active, it relies on the documentary evidence provided by Complainant, which has not been refuted by Respondent. In this context, the Panel remarks that Complainant has provided a copy of the screen print of the landing page which in itself does not contain any indication that the links on the website, visible on that screen print, connect to websites where products of competitors are offered for sale. Therefore, Complainant has failed to provide evidence of its statement that through this parking page the Internet User is drawn to websites containing competitive products.
However, the evidence before the Panel leads it to the conclusion that the Domain Name is not being used (and has not been used in the past) in connection with a bona fide offering of goods or services. This is based on a combination of the following facts:
Respondent has used a privacy service when registering the Domain Name and has not responded to e-mails from Complainant and the notices from the Center sent to its address as provided by the privacy service;
the Domain Name contains a typographical error on the trademark ONEIDA;
the Domain Name was used for a parking page;
the Domain Name does not connect to any website; and
Respondent has failed to provide a Response.
Therefore, the Panel concludes that Respondent has no right or legitimate interest in the Domain Name. D. Registered and Used in Bad Faith
The registration of the ONEIDA trademark on which Complainant relies predates the Domain Name registration by several years. The Panel deems it likely that Respondent was aware of Complainant’s trademark when registering the Domain Name. A simple trademark register search would have informed Respondent of the existence of Complainant’s trademarks, while a Google search on “oneida” as carried out by the Panel, leads to a great number of results referring to tableware and other products offered for sale under Complainant’s ONEIDA trademark.
Therefore, even if Respondent had not actually been aware of Complainant’s rights, a small effort on its part would have revealed those rights. If Respondent has not made that effort, this comes for its accord, since that would imply that Respondent has been willfully blind to such rights.
Taking also into account the circumstances referred to under section C above, in particular Respondent’s apparently evasive conduct in reaction to the notices from the Center and the fact that the website connects to a landing page, Respondent has registered and uses the Domain Name to attempt to attract Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark as to the source, affiliation, or endorsement of Respondent’s website.
Under these circumstances, the Panel concludes that the Domain Name has been registered and is being used in bad faith. 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 Domain Dame be transferred to Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: September 7, 2011
Full & Egal Universal Law Academy