Complainant is The Institute of Electrical and Electronics Engineers, Incorporated of Piscataway, New Jersey, United States of America ("US"), represented by Dorsey & Whitney, LLP, US.
Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Queensland, Australia / Domain Admin of Las Vegas, Nevada, US. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 24, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 27, 2014. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on October 27, 2014.
The Center verified that the Complaint together with the 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 October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 18, 2014.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on November 27, 2014. 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 well-established non-profit organization that has for several decades maintained a worldwide technical society acting as a resource in engineering, technical standards, and other fields. Complainant owns numerous registrations worldwide for its IEEE mark, including for example US Trademark Registration number 1,770,511, dated May 11, 1993 in International Class 41, with a first use in commerce of January 1963.
The disputed domain names were registered August 26, 2014 and route to websites displaying sponsored advertising links and an offer to sell the disputed domain names for USD 3,800 each. 5. Parties' Contentions A. Complainant
Complainant avers that it has been organizing a project for the purpose of sharing information about research through an online system, with a planned launch in early 2015. Complainant avers that it maintained secrecy about its plans, having only disclosed details of the project and project name internally within IEEE. In anticipation of the planned launch, Complainant submitted applications in August and September 2014 to the US Patent and Trademark Office, filing for registrations of the "IEEE COLLABRATECH" mark on August 22, 2014. Four days later, using a privacy registration service, Respondent registered the disputed domain names, each containing the term "ieeecollabratech."
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain names are confusingly similar to Complainant's trademark, (2) Respondent has no rights or legitimate interests in the disputed domain names, and (3) the disputed domain names were registered and are being used in bad faith, all in violation of the Policy.
Complainant seeks transfer of the disputed domain names. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Notification of Proceedings
The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center sent to Respondent by courier and email notification of these proceedings, using the contact information provided both by the Complainant and by the Registrar. The courier notification was not deliverable at the address provided.
The Panel is satisfied that by sending communications to the contact details verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent. B. Substantive Rules of Decision
Complainant must establish that (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. Policy, paragraph 4(a).
Complainant must establish these elements even if Respondent submits no Response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425. C. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to trademarks in which Complainant has rights.
However, the Panel declines the Complaint's invitation to rule that the disputed domain names are identical to Complainant's pending IEEE COLLABRATECH and IEEE COLLABRATEC trademarks. There is no proof that the alleged IEEE COLLABRATEC and IEEE COLLABRATECH marks exist: registrations do not yet appear to have issued, and, as the Complaint elaborates, the terms do not yet enjoy use in commerce.
In any case, Complainant has well-established rights covering the IEEE mark.
UDRP decisions commonly disregard generic Top-Level Domain ("gTLD") suffixes in determining whether a disputed domain name is identical or similar to a complainant's marks. Removing the ".com" and ".org" suffixes from the disputed domain names leaves only the term "ieeecollabratech." Respondent has fully included the IEEE abbreviation and mark in the disputed domain names. The Panel finds that the addition of the term "collabratech" does not alleviate the confusion that users would experience.
The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
The Panel accepts Complainant's undisputed allegations that Respondent has no authorization to use its trademarks and that Respondent is not commonly known by the disputed domain names. Similarly, the Panel accepts Complainant's allegations that Respondent is not making bona fide use of the disputed domain names under the Policy.
Respondent presumably receives revenues when it routes traffic through links to third parties. The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 ("[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit […] in consideration of directing traffic to that site" (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079. The Panel therefore finds that Respondent's use of the disputed domain names demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the disputed domain names, without intent for commercial gain to misleadingly diver consumers e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
The Complaint makes out a prima facie case. Filing no response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in use of the disputed domain names.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. E. Registered and Used in Bad Faith
The Panel also finds that registration and use in bad faith of the disputed domain names is also established under Policy paragraph 4(a)(iii), as explained below.
Complainant contends, among other things, that bad faith is established under Policy paragraph 4(b)(i) since the websites to which the disputed domain names route post a sales price of USD 3,800 each (presumably in excess of the costs of registration). There is no showing or allegation that Respondent targeted its offer to Complainant or its competitors, however. In the absence of any such showing, under the plain language of the Policy, it does not appear to the Panel that paragraph 4(b)(i) applies.
Nonetheless, in the Panel's view, the record clearly establishes bad faith under Policy paragraph 4(b)(iv). Given the use of sponsored advertising, the complete inclusion of the IEEE mark, and the circumstances and timing of Respondent's registrations, the Panel concludes that Respondent "intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] website [...] by creating a likelihood of confusion with the complainant's mark."1 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 names and be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: December 9, 2014
1 It is noted that the Complaint alleges that the IEEE marks are well known. The Panel finds that it is unnecessary to rule on that question. In any case, no evidence was submitted supporting that allegation.
Full & Egal Universal Law Academy