Complainant is The Institute of Electrical and Electronics Engineers, Incorporated of Piscataway, New Jersey, United States of America (“U.S.”) represented by Dorsey & Whitney, LLP, U.S.
Respondent is zhu, erin of Menlo Park, California, U.S. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2011. On November 14, 2011, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2011, the Registrar transmitted by e-mail 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 on November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 9, 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 following facts are asserted by Complainant, and are supported by annexes to the Complaint and/or found by the Panel to be plausible, and are not disputed by Respondent.
Complainant is the world’s largest technical society, with more than 375,000 members in 160 countries. Since 1963, Complainant has used the mark IEEE to identify, among other things, the global technical standards it provides in a variety of industries, including information technology, energy, biomedical technology, telecommunications, transportation, and others. The mark IEEE was registered with the United States Patent & Trademark Office in 1992 for services including the publication of standards in various scientific fields. Complainant has also registered the mark IEEE in numerous other countries and jurisdictions.
The Domain Name was registered on July 7, 2006. The Domain Name resolves to a website which purports to offer information about electronics equipment. The site also contains links to other sites, including one which offers “online payday loans” to consumers and another which offers the services of a “cosmetic dentist.” 5. Parties’ Contentions A. Complainant
Complainant’s salient factual assertions are set forth above. Complainant asserts that it has satisfied the three elements of the Policy. Complainant seeks transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the mark IEEE through longstanding use and registration. The Domain Name incorporates the IEEE mark in its entirety, and appends the words “think” and “standards.” The Panel finds that the addition of these two words does not diminish the confusing similarity between the mark and the Domain Name. The word “think” does not add to confusion, but does not overcome the dominance of the mark IEEE in the Domain Name. The word “standards” actually reinforces confusion, since Complainant offers standards to the public under the IEEE mark. Taken as a whole, the Panel concludes that the Domain Name is confusingly similar to Complainant’s IEEE mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Respondent has allowed the Domain Name to resolve to a page where links to loan and dental services are offered. Under the circumstances of this case, this use does not give rise to a legitimate interest on the part of Respondent.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”.
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent is in “bad faith” under paragraph 4(b)(iv) of the Policy. It is very likely that Respondent had Complainant’s mark in mind when registering the Domain Name. The inclusion of “standards” in the same Domain Name as the mark IEEE cannot be coincidence. Moreover, it may be safely inferred from the hyperlinks to sites offering dental services and payday loans that Respondent is deriving commercial gain from the Domain Name, by virtue of pay-per-click revenues or some other arrangement. Certainly Respondent has not denied that plausible allegation.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: December 12, 2011
Full & Egal Universal Law Academy