Complainant is Segway Inc. of Bedford, New Hampshire, United States of America (“United States”), represented by Burns & Levinson LLP, United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Arthur Andreasyan, NIM of Tujunga, California, United States, represented by Fritz Law Group Trademarks & Patent, United States. 2. The Domain Name and Registrar
The Disputed Domain Names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2016. On April 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name . On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for that Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 15, 2016, 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 April 20, 2016, naming the disclosed registrant and adding the Disputed Domain Name . The Registrar confirmed on April 26, 2016 that Respondent is listed as the registrant of the Disputed Domain Name and again provided Respondent’s contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2016. The Response was timely filed on May 16, 2016, and received by the Center on May 17, 2016.
The Center appointed Mark Partridge as the sole panelist in this matter on June 1, 2016. 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
Segway Inc. has had trademark rights in SEGWAY since 2001 (See SEGWAY, United States Patent and Trademark Office (USPTO) Registration No. 2891587) and has continuously used the Mark for electric, two-wheeled, self-balancing transportation devices. According to Complaint, Complainant has worldwide success through extensive sales and marketing of high quality products and services. Segway has applications and registrations for its SEGWAY Marks in over 50 countries. In the United States alone, Segway owns over a dozen federal registrations for its SEGWAY Marks. Segway owns the domain name .
Respondent registered the Disputed Domain Names and on November 28, 2015 and March 23, 2016, respectively. The Disputed Domain Name is used to promote two-wheeled, personal transportation devices branded as “SEGAWAY.” The Disputed Domain Name features a coming soon page with no additional information. “SEGAWAY” is not a registered trademark with the USPTO. Furthermore, Respondent did not claim rights in any other country.
On March 21, 2016, Complainant, through its counsel, sent a cease and desist letter to Respondent demanding, among other things, the Disputed Domain Name, , be transferred. The letter was sent to the contact information provided on the Disputed Domain Name. Two days following the mailing of the letter, Respondent registered the second Disputed Domain Name, . As of the filing of the Complaint, Respondent had not responded to the cease and desist letter. 5. Parties’ Contentions A. Complainant
Complainant contends that Respondent’s use of “SEGAWAY” is confusingly similar to Complainant’s SEGWAY Mark. Respondent’s use of the generic term “hoverboard” does not create a distinguishable mark. The Disputed Domain Names are meant to confuse consumers looking for authorized SEGWAY products.
Complainant contends that Respondent does not have rights or legitimate interests in the Disputed Domain Names because any commercial use is based on its unauthorized appropriation of the SEGWAY Marks. Furthermore, Complainant claims Respondent registered and currently uses the Disputed Domain Names in bad faith because Respondent knew or should have known about Complainant’s rights in the SEGWAY Marks. A simple Internet search would have revealed Complainant’s extensive use of the SEGWAY Marks. Complainant contends that Respondent must have expected use of the Disputed Domain Names to cause harm to Complainant because of Segway’s extensive use of its Mark. Complainant asserts that Respondent’s failure to provide a disclaimer as to association is indicative of bad faith. Respondent registered the Disputed Domain Name after receiving the Complainant’s cease and desist letter, further evidencing bad faith. B. Respondent
Respondent claims its use of “SEGAWAY” is a parody and fair use because the sites use satire and intend to make fun of Complainant’s SEGWAY Marks. Respondent asserts that because Complainant’s Marks are recognizable, consumers will understand Respondent’s use is a parody. Respondent also contends that the SEGWAY Mark is already diluted and, therefore, only entitled to little protection. Respondent claims the Mark is diluted because there are concurrent trademarks and applications predating Complainant’s Mark for tours using Complainant’s product. Further, Respondent asserts that SEGWAY creates a different commercial impression than SEGAWAY, so the Disputed Domain Names are not confusingly similar to Complainant’s Mark. Respondent’s Mark, SEGAWAY, has a different commercial impression because of the emphasis on “AWAY” in the Mark, while Complainant’s Mark creates the commercial impression of being famous. Because of dilution and different commercial impressions, Respondent’s use of the Disputed Domain Names is in good faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) That the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and,
(iii) That the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant must first establish that the Disputed Domain Names are identical or confusingly similar to Complainant’s trademark. Complainant has demonstrated that it owns registered trademark rights in the Mark SEGWAY. The Disputed Domain Names are confusingly similar to the Complainant’s Marks. Respondent has merely added the letter “a” to Complainant’s established Mark. The addition of a single letter creates only a small visual difference and slight difference in sound, and may well be overlooked by Interent users. It is not sufficient to create enough difference to avoid confusion. See SEGWAY INC. v. Perfect Privacy, LLC / Oliver Weisfeld, Swegway,WIPO Case No. D2015-2340 (transferring to Segway). Respondent’s contention that “AWAY” creates a different commercial impression also fails because SEGAWAY and SEGWAY do not have distinct commercial impressions when viewed as a whole.
The inclusion of the generic terms “hoverboard” and “board” do not distinguish the Disputed Domain Names from the Marks. “Domain name jurisprudence long ago established that domain names composed of registered and well-known marks and generic suffixes or prefixes are confusingly similar.” Wal-Mart Stores, Inc. v. DomainsbyP, Inc.,WIPO Case No. D2014-1695. “Hoverboard” is a generic term for a self-propelled personal mobility device, which both parties offer. The same reasoning applies to the addition of the apt descriptive phrase “board.”
Complainant has met its burden of showing the Disputed Domain Names are confusingly similar to Complainant’s Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides the following circumstances which can demonstrate a respondent’s rights or legitimate interests in a domain name:
(1) Before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparation 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
(2) respondent has been commonly known by the domain name, even if respondent hasn’t acquired trademark or service mark rights; or
(3) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain or misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent registered the first Disputed Domain Name in November 2015, long after Complainant registered the SEGWAY Marks in 2001. Respondent’s use is not a legitimate noncommercial or fair use because Respondent is using this Disputed Domain Name for commercial gain by selling a device similar to Complainant’s product.
Respondent’s dilution claim provides no defense. Respondent asserted that it has a right to use the Disputed Domain Names because Complainant’s Mark is a highly diluted and generic term. Respondent claimed that third-party registrations including SEGWAY lead to the Mark being diluted. Yet, the evidence presented by both parties does not support this contention. Because Respondent admits Complainant’s Mark is famous, Respondent cannot successfully claim that it is a diluted mark or generic term.
While Respondent does sell its hoverboards under the name “SEGAWAY” through the Disputed Domain Name , this does not establish a legitimate interest in using a confusingly similar mark. “A deliberate infringement of another’s trademark rights does not entail a bona fide offering of goods or services.” Oorah, Inc. v. Simchat Torah Beit Midrash,WIPO Case No. DTV2007-0003 (denying Complaint to transfer ). In a similar case, Gen-Probe Incorporated sold medical equipment under the mark TIGRIS and filed a complaint for the transfer of . Gen-Probe Incorporated v. Tigris Medical Company / Dr. Loay H. Al-Fahad / Ahmed Alazawi, Alsadeer,WIPO Case No. D2014-0236 (transferring ). Respondent, Tigris Medical Company, registered to sell its medical equipment. Id. The Panel in that case noted that Respondent used TIGRIS in essentially the same manner and locations as Complainant. Id. Gen-Probe Incorporated established trademark rights in TIGRIS well before Tigris Medical Company registered the domain name. Id. Therefore, Tigris Medical Company did not establish a legitimate interest in using the domain name. Similarly here, Segway established trademark rights in SEGWAY dating back to 2001 and Respondent conceded SEGWAY is a famous mark. Respondent is using a confusingly similar mark in essentially the same manner as Complainant, which does not give Respondent a legitimate interest in the Disputed Domain Names.
The passive holding of likewise does not give rise to any rights or legitimate interests.
Thus, it appears that Respondent lacks any rights or legitimate interest in the Disputed Domain Names under paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, a complainant must establish the domain name was registered and used in bad faith by the respondent. Several ways to demonstrate bad faith are found in paragraph 4(b) of the Policy.
(i) Circumstances indicating that respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a patter of such conduct; or
(iii) respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, respondent intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s web site or location or of a product or service on respondent’s web site or location.
In this case, Respondent sells products that are similar to Complainant’s products using a confusingly similar mark with full knowledge of Complainant’s famous mark. The obvious purpose is to divert Internet traffic for Respondent’s financial benefit and to disrupt Complainant’s business. “Conduct of diverting traffic for the purpose of disrupting the business of a competitor for monetary gain is considered bad faith under the Policy. JL Audio, Inc. v. Danielle M. Calvert,WIPO Case No. D2007-1765 (finding bad faith because Respondent’s website offered products incorporating Complainant’s marks.) In a similar case involving “SEGWAY” and “SWEGWAY,” the panel found bad faith. SEGWAY, INC. v. Perfect Privacy LLC / Oliver Weisfeld, Swegway,supra. “The circumstances are that Respondent registered a confusingly similar domain name to the Complainant’s trademark for the purpose of selling products which appear to be covered by the scope of Complainant’s registered trademark.” Id. Because Respondent’s use of the Disputed Domain Names created a likelihood of confusion to sell a product covered by the scope of Complainant’s trademark, Respondent’s use of Disputed Domain Names is in bad faith, unless he can avail himself of a defense.
Respondent asserted the Disputed Domain Names are permitted as a parody of Segway’s Marks. While parody can be used as a UDRP defense, Respondent’s use does not meet the standard for fair use. See CFA Properties, Inc. v. Domains By Proxy, LLC and John Selvig,WIPO Case No. D2012-1618. To prevail under the parody defense, a respondent’s name must convey two separate messages: it must call the original mark to mind and simultaneously must convey that is it not the original. Id. Second, the Disputed Domain Name “must poke fun at the goods or services associated with Complainant’s marks.” A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen,WIPO Case No. D2001-0900. Here, Respondent fails both parts of the test. First, the Disputed Domain Names do not convey the two messages. Because the Disputed Domain Names are confusingly similar to Complainant’s mark, they do indeed call the original to mind. However, the Disputed Domain Names do not adequately convey that they are not the original. Moreover, the Disputed Domain Names do not “poke fun at the goods associated with Complainant’s marks.” Respondent merely uses confusingly similar names to sell products related to Complainant’s products (in the case of ) or for “coming soon” holding pages (in the case of ). Respondent has thus failed to satisfy the parody defense.
Accordingly, Respondent has registered and currently uses the Disputed Domain Names 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 names and be transferred to the Complainant.
Mark V.B. Partridge
Sole Panelist
Date: June 23, 2016
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