Complainant is Twitter, Inc. of San Francisco, California, United States of America, represented by Melbourne IT DBS Inc., United States of America.
Respondent is Geigo, Inc of Albrook Park, Panama, represented by Rome & Associates, A.P.C., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. 3. Procedural History
The Complaint in this proceeding was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2011. On July 15, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On July 25, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 July 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2011. The Response was filed with the Center August 17, 2011.
The Center appointed Miguel B. O'Farrell (presiding), Richard G. Lyon, and Harini Narayanswamy as panelists in this matter on October 19, 2011. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. Each member of 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.
On October 17, 2011, Respondent submitted a “Further Statement,” seeking leave from the Panel pursuant to paragraphs 10 and 12 of the Rules to submit additional argument. Complainant opposed this application. The Center acknowledged receipt of the Further Statement and advised the parties that the Panel would determine its admission and weight. 4. Factual Background
The Panel finds the following factual matters to have been established by competent evidence submitted by the Parties.
Complainant provides social networking and micro blogging services through its “” website. Its subscribers communicate using external telephone applications or short messaging service (SMS). Complainant currently has 145 million users worldwide. It is one of the most popular social media in the world and its website one of the most visited on the Internet.
Complainant holds a trademark for TWITTER that was registered with the United States Patent and Trademark Office in May 2009, with a claimed first use in commerce in August 2006.
Respondent is in the business of domain name parking and advertising. It has used the disputed domain name for a website with various links to cell phone websites and chat room services; in Respondent’s own words it “serves to advertise relevant products offered by third parties, such as those of Complainant as well as its competitors”.
Prior to filing its Complaint, Complainant sent several cease-and-desist letters to Respondent but received no reply. Complainant contacted by telephone a representative of Respondent, who confirmed that Respondent would not transfer the disputed domain name but would consider altering the content at the website maintained there. 5. Parties’ Contentions A. Complainant contends as follows:
1. Complainant has rights in TWITTER by virtue of its USPTO-registered trademark. The disputed domain name is a simple and intentional misspelling of TWITTER and as such is confusingly similar to Complainant’s TWITTER mark.
2. Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent has never been known by any derivation of the word “twitter”. “In the circumstances of this case, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s TWITTER trademark; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent’s name or business; and (c) the Respondent does not use the disputed Domain Name to advertise or sell its own wares and services.”
3. Respondent registered the disputed domain name in April 2011, long after TWITTER became the popular social media company that it is today. Under Policy precedent the date of Respondent’s registration of the disputed domain name, not its initial creation date in 2004, is the date used to determine whether registration and use of the disputed domain name was in bad faith.
All demonstrated use of the disputed domain name by Respondent has either imitated the look and feel of Complainant’s website or otherwise been confusingly similar to Complainant’s site. Respondent has included a “mousetrap” at its site1 that makes it difficult for an Internet user who lands there to escape without Respondent’s making commercial gain from pay-per-click revenue. Failure to reply to Complainant’s cease-and-desist letters and refusal to transfer the disputed domain name are further evidence of Respondent’s registration and use of the disputed domain name in bad faith. B. Respondent contends as follows:
1. Complainant’s trademark rights in TWITTER accrued no earlier than 2006, while the disputed domain name was created in 2004. Complainant, which bears the burden of proof on each Policy head, has thus not demonstrated rights superior to those of Respondent. Furthermore Complainant has not shown “a sufficiently powerful mark necessary to militate a transfer order of a domain which, at best, is a misspelling of a generic term.” “Twitter” is “generic because it is used to indicate a manner of communication.”
2. Domain name parking and sales are not of themselves unlawful or automatically illegitimate for purposes of paragraph 4(a)(ii) of the Policy. Respondent’s use for advertising “has nothing to do” with the services offered by Complainant and are outside the classes for which Complainant holds trademark rights. Complainant did not seek trademark rights for “advertising and marketing” until recently, so at best its rights are no better than “parallel” to Respondent’s.
3. The disputed domain name was created in 2004, two years before any demonstrated trademark rights of Complainant, and was thus not registered in bad faith. Complainant offers no evidence that Respondent first acquired the disputed domain name only in 2011, and no evidence that Respondent knew of Complainant or its mark when it registered the disputed domain name.
Respondent denies that its website is similar to Complainant’s. As to the cease-and-desist letters, Respondent asserts that it attempted to negotiate a settlement in good faith to avoid any confusion, and in any event there is no obligation under the Policy to reply to such letters. Complainant has not met its evidentiary burden to demonstrate Respondent’s bad faith.
In its Further Statement Respondent cites a recent decision of the United States Court of Appeals for the Ninth Circuit that holds that initial registration of a domain name is the date to on which registration in bad faith (or not) should be measured. 6. Discussion and Findings A. Procedural Matter – Respondent’s Further Statement
The Panel has reviewed Respondent’s proposed Further Statement, which consists of (i) reargument of matters included in the Response and (ii) a reference to GoPets Ltd. v. Hise, 2011 Westlaw 4394353, decided by the United States Court of Appeals for the Ninth Circuit on September 22, 2011. As noted Respondent argues that this case bears upon the matters at issue in this proceeding.
As the GoPets case was decided after the date of the Response and so could not have been considered or anticipated at that time, the Panel determines to admit the Further Statement to the extent of its reference to that decision.2 The Panel denies the balance of the Further Statement as matters that could have been included in the Response. Submissions beyond the two expressly authorized by the Policy and Rules are allowed only upon a finding of exceptional circumstances,3 and Respondent has shown nothing exceptional here.4 B. Identical or Confusingly Similar
Under well-established Policy precedent, a complainant’s rights in a mark are determined as of the date the complaint is filed. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4; Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino,WIPO Case No. D2007-0416 (“The vitality of a complainant’s marks in a Policy proceeding is determined as of the date the complaint is filed, not the date the respondent registered the disputed domain name.”) Complainant’s USPTO-registered mark predates the date the present Complaint was filed (July 15, 2011). The date trademark rights accrued and the strength of the mark are normally not relevant under paragraph 4(a)(i), though obviously pertinent to the latter two elements of paragraph 4(a). As the disputed domain name differs from Complainant’s mark by only a single letter, Complainant has demonstrated confusing similarity. C. Rights or Legitimate Interests; Used in Bad Faith
Complainant has not authorized Respondent to use its mark, and there is no evidence that Respondent has ever been known by the word “twiter” or any variant of it or “twitter”, so Complainant has made its prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain name for purposes of the second element of the Policy.
The fact that Internet parking and advertising are not per se unlawful or improper, or automatically illegitimate under the Policy, does not allow the Respondent to make knowing use of another’s trademark for commercial gain. That is true even when the mark at issue may also be a common word or (to use Respondent’s description) “generic,” when – as Complainant has demonstrated and Respondent has admitted in part – use of the domain name emphasizes the mark and not any so-called “generic” meaning of the word.
All demonstrated pre-dispute use of the disputed domain name has played upon the value of Complainant’s marks and therefore has not been legitimate for Policy purposes. Pay-per-click hyperlinks to Complainant and its competitors, a use admitted by Respondent, is a classic example of cybersquatting – taking advantage of the renown of Complainant’s mark to attract Internet users to a website for commercial gain. A close misspelling of Complainant’s mark can – and in this proceeding does – demonstrate typosquatting, a practice almost universally found to be male fide for purposes of paragraph 4(a)(ii) and use in bad faith under paragraph 4(a)(iii) of the Policy. Such conduct reveals both Respondent’s knowledge of the mark and an intent to profit from it. Indeed Respondent admits knowledge of Complainant’s mark, though denying its strength and scope. Respondent’s contention that Complainant’s rights are limited to certain commercial activities and that Respondent’s use is thus not infringing are matters for a trademark infringement action in court; they do not create a right or legitimate interest under the Policy or obviate use of the disputed domain name in bad faith. D. Registered in Bad Faith
Policy precedent is clear that the question of Respondent registration in bad faith (or otherwise) is determined on the date of Respondent’s registration (or if not the original creator, acquisition) of the disputed domain name, not the date the domain name was first created. WIPO Overview 2.0, paragraph 3.7 (“the transfer of a domain name to a third party does amount to a new registration”); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062. In proper circumstances a transfer between related parties (BME, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service,WIPO Case No. D2008-0882; ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J.,WIPO Case No. D2009-0785), or (some panels have found in certain cases) a renewal of an existing registration (Eastman Sporto Group LLC v. Jim and Kenny,WIPO Case No. D2009-1688) may also constitute a new registration.
The evidence presented by the parties does not conclusively establish when Respondent registered the disputed domain name. While Complainant does not furnish evidence that fixes Respondent’s precise registration date, Complainant’s evidence, which Respondent does not challenge, does show that entities other than Respondent owned the disputed domain name at various times. In January 2008 the disputed domain name was registered at the registrar R Corp., an entity also shown to be the registrar of the disputed domain name in March 2011. Complainant’s evidence indicates at least three registrants and two registrars for the disputed domain name since its original date of registration. Respondent does not state when it registered the disputed domain name, and provides no evidence to counter Complainant’s showing. So there is nothing in the record to indicate that Respondent is affiliated with any of the prior registrants identified by Complainant. The only reference to Respondent’s (as opposed to another entity’s) ownership is a reference to its copyright notice dated 2009.
While Complainant bears the burden of proof on each Policy element, for several reasons the Panel believes that Respondent has the burden of production to demonstrate that any earlier transfer was among affiliates (and thus not to a third party) and for bona fide business reasons, and thus should not be treated as a new registration. First, without even an allegation of its own pre-trademark registration of the disputed domain name, Respondent is asserting what is called in United States civil procedure an affirmative defense, and so should be required to make out that defense with evidence – particularly when Complainant’s evidence (and not just unsupported allegations) indicates strongly that it was not Respondent that created the disputed domain name in 2004. Second, the burden of production under the Policy should rest upon a party seeking an exception to an Overview Consensus View. Perhaps most importantly, evidence of inter-affiliate transfers and a valid business purpose, if it exists, resides within Respondent’s control, and will likely not be available to Complainant. Compare Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383.
Had Respondent made the initial registration in 2004 and maintained ownership through 2011 the Panel would likely have reached a different outcome about Respondent’s having registered the disputed domain name in bad faith. But Respondent has not even alleged that it or an affiliate owned the disputed domain name continuously since 2004, and has offered no proof (indeed no allegation) that it is or was affiliated with any prior owner. The available evidence, not contested by Respondent, shows another owner as late as March 2011.
The GoPets decision cited in Respondent’s Futher Statement furnishes some surface support for treating the creation date of the disputed domain name as the date used to determine whether the domain name was registered in bad faith, at least under the Anti Cybersquatting and Consumer Protection Act of 1999 (ACPA), the statute at issue in that case. In GoPets the defendant registered the domain name in 1999. Five years later the plaintiff started a business under the name GoPets Ltd. and developed it into a successful pet supply company. After plaintiff unsuccessfully attempted to acquire the domain name from defendant it commenced a Policy proceeding, GoPets Ltd. v. Edward Hise, WIPO Case No. D2006-0636, seeking transfer. The panel summarily denied the UDRP complaint, finding that defendant had not registered the domain name in bad faith. Shortly thereafter defendant transferred the disputed domain name to a corporation owned by himself and his brother. When further discussions over sale of the domain name failed, defendant added content to its website and registered many other domain names that included the name “gopets”. Plaintiff brought suit under ACPA, several California unfair competition laws, and for trademark infringement under federal and state law.
The ACPA claims in GoPets turned on whether the original registration in 1999 or the re-registration in 2006 following transfer was the “registration” for purposes of ACPA. The Ninth Circuit noted only one other court case directly on point, by another Court of Appeals, Schmidheimy v. Weber, 319 F. 3d 581 (3d Cir. 2003), in which the court held that a re-registration made out a new “registration” for purposes of the statute. The Third Circuit’s logic was:
We do not consider the “creation date” of a domain name to control whether a registration is subject to [ACPA], and we believe that the plain meaning of the word “registration” is not limited to “creation registration.”
The words “initial” and “creation” appear nowhere in § 1129 [of ACPA], and Congress did not add an exception for “non-creation registrations” in § 1129(1)(B). See United States v. Johnson, 529 U.S. 53, 58, (2000) (explaining that when Congress provides exceptions in a statute, a court should infer that Congress considered the issue of exceptions and limited the exceptions to the ones set forth). The District Court’s rationale that “if Congress chose to treat re-registrations as registrations, it could have used words appropriate to impart that definition,” is not a sufficient reason for courts to infer the word “initial.” Instead, we conclude that the language of the statute does not limit the word “registration” to the narrow concept of “creation registration.” See Sweger v. Chesney, 294 F.3d 506, 516 (3d Cir.2002) (holding that if the language of a statute is plain, we need look no further to ascertain the intent of Congress).
The Ninth Circuit declined to follow that reasoning, concluding that Congress in enacting ACPA had meant to address only the initial registration:
We see no basis in ACPA to conclude that a right that belongs to an initial registrant of a currently registered domain name is lost when that name is transferred to another owner. The general rule is that a property owner may sell all of the rights he holds in property. GoPets Ltd.’s proposed rule would make rights to many domain names effectively inalienable, whether the alienation is by gift, inheritance, sale or other form of transfer. Nothing in the text or structure of the statute indicates that Congress intended that rights in domain names should be inalienable.
The GoPets case is factually distinguishable from this proceeding, as the transfer in GoPets was concededly between affiliates, from one person to a company controlled by him and his brother, and was arguably for a valid business reason – commercial exploitation of the domain name. There is no evidence of either such circumstance here. Nevertheless, on one reading, the court’s holding appears absolute and not factually dependent, and thus could be said to differ from the Policy precedent that the Panel has discussed above:
The primary question before us is whether the term “registration” applies only to the initial registration of the domain name, or whether it also applies to a re-registration of a currently registered domain name by a new registrant. We hold that such re-registration is not a “registration” within the meaning of [ACPA].
A UDRP panel owes great deference to the national courts. Their rulings may well be part of “applicable law” that a panel must consider (Rules, paragraph 15(a)), may become directly relevant in relation to mutual jurisdiction in the event of a court challenge (Policy, paragraph 4(k)), and are forged upon a record developed through full adversary proceedings. Nevertheless there are occasions when a Policy panel may decline to follow a court’s interpretation. The Schmidheimy case cited but not followed by the Ninth Circuit and its reasoning offer grounds for this Panel to follow the Third Circuit’s holding. These two courts are co-equal; any difference in their rulings can only be resolved by the Supreme Court of the United States or superseding legislation. This Panel finds the Third Circuit’s reasoning in Schmidheimy more convincing than the Ninth Circuit’s in GoPets. The latter’s holding would appear to immunize for all time a domain name once innocently registered from any action under ACPA, regardless of subsequent transfers or change in website content. It seems to this Panel that such result would neither be required by the language of ACPA nor consistent with that statute’s other provisions or overall intent. Admittedly the Panel is influenced by Schmidheimy’s conformance to Policy precedent on this issue.
In any case, the language of paragraph 4 of the Policy differs markedly from that in the ACPA. Each subparagraph of paragraph 4(a) speaks expressly of “you” – the registrant. ACPA, in contrast, refers to a more general “any person.” ACPA does not contain any counterpart to the affirmative representation the Policy (paragraph 2; emphasis supplied) requires from a registrant: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”. To this Panel, these differences are further reason to distinguish a single court case from longstanding Policy precedent.
In the present case, measuring bad faith at March 2011 makes the Panel’s conclusion on registration in bad faith an easy one. At that date, or even in 2009, the earliest date that any evidence or allegation indicates ownership by Respondent, Respondent (indeed anyone involved in Internet activities) could not credibly deny knowledge of Complainant or its TWITTER mark. That all use of the disputed domain name played upon the renown of that mark merely reinforces the conclusion that registration was undertaken to profit from that renown – bad faith under a wealth of cases. 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.
Miguel B. O'Farrell
Presiding Panelist
Richard G. Lyon
Panelist
Harini Narayanswamy
Panelist
Dated: November 2, 2011
1 Complainant provides no evidence to support the mousetrapping charge, so the Panel gives it no weight. Complainant’s evidence does support to some extent the other factual assertions that underpin its assertions. The date of Respondent’s registration of the disputed domain name is discussed in Section 6.D below.
2 Indeed Respondent should be commended for drawing the Panel’s attention to this recently decided case.
3 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2 (“Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances”). Mani Brothers, LLC v. Lincoln Gasking,WIPO Case No. D2008-0097; Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com,WIPO Case No. D2008-0103.
4 Given the Panel’s acceptance of only the reference to the GoPets case it is not necessary to permit Complainant to respond to the Further Statement. The Panel’s resolution of this proceeding makes any such response academic.
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