The Complainant is Pedone & Partners, Inc. of New York, New York, United States of America (“United States”), represented by Frankfurt Kurnit Klein & Selz, PC, United States.
The Respondent is Pedone and Partners of New York, New York 10011, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2012. On April 19, 2012, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On April 20, 2012, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 24, 2012.
The Center verified that the Complaint 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 the Respondent of the Complaint, and the proceedings commenced on April 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on May 30, 0212. 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 a New York-based branding and advertising agency founded in 1987. Specializing in a variety of areas, including retail, the Complainant’s clients include the Clorox Corporation, Hermes of Paris, L’Oreal United States, and the Swatch Group. The Complainant asserts unregistered trademark rights in PEDONE based on some 25 years of continuous and substantially exclusive use of the mark in commerce in relation to the Complainant’s services. The Complainant owns the domain names and , both of which resolve to the Complainant’s website, which provides information about the Complainant’s agency, its history, clients, work, people, as well as providing contact information.
The Respondent registered the disputed domain name on March 22, 2012. At or near the time the Complainant first became aware of the disputed domain name in April 2012, the disputed domain name resolved to a website virtually identical to the Complainant’s website. It appears that the only change to the website content were on the “contact” page, consisting of the deletion of the Complainant’s telephone and fax number and the alteration of the email address of the Complainant’s President and CEO, Michael Pedone, from “mfp@” to “mfp@” on the “contact” page of the website.
Upon further investigation, the Complainant discovered that a person using the name “Jim Vu” and claiming to be the Complainant’s “Head of Online Marketing” had been contacting the Complainant’s clients, business partners and vendors by email. After making this discovery, the Complainant through its legal counsel sent a cease and desist letter dated April 4, 2012, which included a demand for transfer of the disputed domain name, to which the Respondent did not reply. According to the Complainant, the Respondent’s website remained active at the time the Complainant was submitted, but the Panel notes that the disputed domain name currently does not appear to be in active use. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its PEDONE mark and name. The Complainant asserts common law trademark rights in PEDONE based on continuous and exclusive use for more than 25 years in connection with the Complainant’s advertising agency. According to the Complainant, the PEDONE mark is recognized as an indicator of source for the Complainant’s services by its clients, competitors, and advertising and marketing industry groups and associations. The Complainant submits that upwards of USD 12.5 million has been invested in advertising and promotion of the PEDONE mark, including UDS 30,000 in the development of the Complainant’s “www.” website. The Complainant further points to unsolicited press attention in the advertising industry and numerous awards and recognitions, including 13 EFFIE awards.
The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent registered the disputed domain name over 25 years after the founding of the Complainant, and many years subsequent to the Complainant’s registration of the and domain names, in 1998 and 2007, respectively.
According to the Complainant, the Respondent is not now and has never been employed by or affiliated in any way with the Complainant, or authorized to use the Complainant’s PEDONE mark, logo or name, or the Complainant’s website. The Complainant maintains that the Respondent is using the disputed domain name to redirect Internet users to a virtually identical copy of the Complainant’s website, including the PEDONE mark and logo, and falsifying the contact information thereon, in furtherance of a campaign of corporate identity theft. The Complainant has submitted evidence that the Respondent, using the name “Jim Vu” and passing himself off as the Complainant’s “Head of Internet Advertising”, is using the disputed domain name to redirect unsuspecting Internet consumers looking for the Complainant’s services to a website controlled by the Respondent, which is virtually identical to the Complainant’s website save for the altered email addresses and telephone numbers used by the Respondent in the perpetration of this fraudulent scheme.
In view of the foregoing, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith, in a deliberate attempt to attract, for commercial gain, Internet users to the Respondent fraudulent website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or services offered thereon. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark or service mark rights in PEDONE. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. It is undisputed in the record before this Panel that the Complainant has used PEDONE for over 25 years in association with its services. Given the length and continuity of the Complainant’s use of PEDONE, together with advertising and promotion using the mark and unsolicited media attention, the Panel accepts that over time PEDONE has come to be regarded by the relevant purchasing public as an indication of source for the Complainant’s services.
The Panel, turning to the question of identity or confusing similarity, finds that for purposes of paragraph 4(a)(i) of the Policy the disputed domain name is confusingly similar to the Complainant’s PEDONE mark. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
There are differing views as to what is meant by “confusingly similar” in this context. In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 the panel applied a test which expressly disavowed any call for a likelihood of Internet user confusion; by contrast in SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648, the panel took a diametrically opposed view. The range of views is discussed in Apple Inc. v. Fred Bergstrom, Lotta Carlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.
In this instance, the disputed domain name incorporates the Complainant’s PEDONE mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, whichever test is applied. In the Panel’s view, the confusing similarity of the disputed domain name to the Complainant’s PEDONE mark is not overcome merely by the addition of descriptive or dictionary word “media”, which is likely to call to mind the Complainant and its services. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name incorporates the Complainant’s PEDONE mark in its entirety and is confusingly similar. It is undisputed that the Respondent has not been authorized to use the Complainant’s PEDONE mark. The Respondent notwithstanding has used the disputed domain name with a website that is virtually identical to if not a direct copy of the Complainant’s website, to which the Respondent has inserted fictitious contact information, apparently in furtherance of an identity theft scheme.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record before the Panel, the Respondent clearly had the Complainant’s PEDONE mark in mind when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in order exploit and profit from the Complainant’s rights in the PEDONE mark and name through the creation of initial interest confusion. Considering that the Respondent’s website is virtually identical if not a direct copy of the Complainant’s website, including the prominent display of the Complainant’s PEDONE logo and mark, Internet users diverted to the Respondent’s website could easily believe they have arrived at the Complainant’s official website, or at the very least be confused whether the website they have arrived at is affiliated with or have the endorsement or sponsorship of the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. Indeed, based on the record before the Panel, the Respondent intentionally is attempting to deceive Internet users into believing that they have arrived at the Complainant’s website.
In short, the record does not reflect the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods are services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent has been commonly known by the disputed domain name or authorized to use the Complainant’s mark. To the contrary, the record convincingly shows that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondent was well aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. The record plainly evinces that the Respondent’s primary motive in relation to the registration and use of the disputed domain names was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the deliberate creation of Internet user confusion, and in all likelihood in furtherance of a scheme of identity theft and fraud. In view of all of the foregoing, the Panel concludes that the Respondent registered and has used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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.
William R. Towns
Sole Panelist
Dated: June 11, 2012
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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