The Complainant is The Institute of Electrical and Electronics Engineers, Incorporated (“IEEE”) of New Jersey, United States of America, represented by Dorsey & Whitney LLP, United States of America (“the United States”).
The Respondent is Marketing Express, Domain Administrator of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and MediationCenter (the “Center”) on November 12, 2011. On November 14, 2011, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On November 14, 2011, R Corp. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2011.
The Center appointed Ross Wilson as the sole panelist in this matter on December 23, 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 world’s largest technical society. It has more than 375,000 members in 160 countries. It is a leading authority in technical areas such as computer engineering, biomedical technology, telecommunications, electric power, aerospace and consumer electronics. It is well-known in the engineering and technology related industries worldwide.
The Complainant’s organizational unit, the Institute of Electrical and Electronics Engineers Standards Association (IEEE SA) develops global standards in a broad range of industries including power and energy, biomedical and health care, information technology, telecommunication, transportation, nanotechnology and information assurance.
The IEEE trademark is well-known to many members of the general public through the numerous technical devices that embody standards developed by IEEE SA such as standards for wireless networking known as WI-FI, the Ethernet family of frame-based computer technology technologies for local area networks, bi-directional parallel communications between computers and printers and serial bus interfaces commonly referred to as FireWire or iLink. For over a century IEEE SA or its predecessor organisations have developed technical standards pursuant to a program that offers balance, openness, due process and consensus. It has done so under the IEEE mark since 1963. IEEE SA currently maintains a portfolio of over 900 standards and more than 600 standards under development. The Complainant has spent considerable sums of time, effort and money for the research and development of its products and services that are promoted and sold under the IEEE mark.
The Complainant has used and registered the IEEE trademark in a number of jurisdictions including the United States, the European Union, Canada, Australia, China, Egypt, Hong Kong, China, Mexico, Republic of Korea, Russian Federation, Singapore, Switzerland and Taiwan Province of China. The earliest registered trademark was in 1993.
The disputed domain name was created on May 30, 2000. 5. Parties’ Contentions A. Complainant
The Complainant contends that as a result of its long and prominent use of its IEEE mark for and in connection with its products and services, its mark has acquired worldwide recognition as identifying exclusively the Complainant’s products and services as well as vast and valuable goodwill.
The Complainant contends that the disputed domain name is identical or confusingly similar to the IEEE mark since the disputed domain name incorporates the IEEE mark in its entirety and adds only the word “standards” which actually represents the most prominent and popular goods offered by the Complainant under the IEEE mark.
The Complainant claims that the Respondent cannot demonstrate that it has any rights or legitimate interests in the disputed domain name. It has not authorised the Respondent to use the IEEE mark. Also, the Respondent is not using the disputed domain name with a bona fide offering of goods or services or for legitimate noncommercial or fair use. Rather the disputed domain name initially resolved to a pay-per-click website from which it derives revenue and later to a website with “pop-up” advertisements. According to the Complainant the Respondent is commonly known as Marketing Express not IEEE or IEEE Standards.
According to the Complainant the Respondent registered the disputed domain name without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of the Complainant’s IEEE mark. The Respondent was well aware of the IEEE mark as the website at the disputed domain name consisted almost entirely of sponsored listings for engineering products and services including for standards offered by the Complainant itself under the IEEE mark. In addition to registering the disputed domain name in bad faith the Respondent also used it in bad faith by initially creating an online directory of links to other websites from which the Respondent derived income based on the number of times visitors clicked on those sites and subsequently used the website for “pop-up” advertisements. The Complainant considers such uses are likely to cause confusion with its mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Overall, the Complainant believes that the Respondent is clearly free riding on the vast goodwill associated with the Complainant’s well-known IEEE mark and the Internet traffic intended for the Complainant’s websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The onus is on the complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence demonstrating that it has numerous registered rights in the trademark IEEE – the earliest since 1993.
The disputed domain name consists of the Complainant’s trademark, in its entirety, together with the term “standards”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a disputed domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The only difference between the Complainant’s trademark and the disputed domain name is the addition of the descriptive word “standards” which cannot be considered distinctive. As found in Revlon Consumer Products Corporation v. Amar Fazil,WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc. / Jerald Blume,WIPO Case No. D2004-0871 the addition of a descriptive term does not serve to distinguish a disputed domain name but, serves to accentuate rather than to diminish the confusing similarity. Also, the addition of a word that describes a complainant’s goods or services is even more likely to confuse Internet users (see Ansell Healthcare Products Inc. v. Australian Therapeutic Supplies Pty. Ltd.,WIPO Case No. D2001-0110 and Eveready Battery Company, Inc. v. Oscar Haynes,WIPO Case No. D2003-1005).
In view of the above, the Panel finds that the Complainant’s trademark is readily recognizable as such within the disputed domain name despite the addition of the word “standards” and, overall, it is likely to lead to Internet user confusion. Therefore, the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has not filed any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. Consequently, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Panel finds that the Respondent is trying to benefit from the reputation of the Complainant’s widely-known trademark. The Respondent has chosen to use a domain name that contains the Complainant’s trademark in its entirety without authorisation by the Complainant. Based on the information provided the disputed domain name initially resolved to a pay-per-click website. Subsequently, supported by evidence provided by the Complainant, the website resolved to pop-up advertisements. No rights or legitimate interests derive from either type of use of the Complainant’s trademark. Previous UDRP panels have held that rights or legitimate interests cannot be created where the respondent would not choose such a domain name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda,WIPO Case No. D2001-0067).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In addition, the Complainant has denied having any connection with the Respondent or authorisation at all. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Despite the opportunity provided through this administrative procedure, the Respondent has chosen not to rebut the Complainant’s case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In this case, the Respondent has not rebutted the Complainant’s prima facie case. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith.
In the Panel’s view the Respondent’s registration of the disputed domain name represents deliberate disregard of the Complainant’s trademark rights. Clearly the Respondent knew of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name and the website initially resolved to a pay-per-click on-line directory consisting of sponsored listings for engineering products and services including the standards offered by the Complainant. As stated in Oakley, Inc. v. Joel Wong/Blue H- INC., WIPO Case No. D2010-0100 “It is inconceivable that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, where the selection of domain names is so obviously connected to the complainant’s trademark their very use by someone with no connection with the company suggests opportunistic bad faith. Similarly, in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409, where the respondent registered a number of domain names incorporating a well-known trademark in its entirety, the panel stated, “that it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”
Evidence provided by the Complainant indicates that the disputed domain name was subsequently changed to resolve to a website that serves “pop-up” advertisements misleadingly suggesting that the visitor has won a prize. Such “pop-up” advertisements can be used to derive revenue through collecting personal information. Prior panels have held that the use of a confusingly similar domain name to trigger pop-up advertisements for third party websites and products is evidence of bad faith (seeThe Paragon Gifts Holdings, Inc. v. Click Cons. Ltd.,WIPO Case No. D2007-0304 citing, inter alia, Best Western International, Inc. v. Azra Khan, NAF Claim No. 0125265).
Noting that the Respondent has not rebutted any of the Complaint the Panel considers that the Respondent’s choice of the disputed domain name was a deliberate action to gain a commercial advantage.
On the basis of the above, the false address given by the Respondent when registering the disputed domain name and the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and 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 disputed domain name be transferred to the Complainant.
Ross Wilson
Sole Panelist
Dated: January 6, 2012
Full & Egal Universal Law Academy