The Complainant is T. Rowe Price Group, Inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2019. On August 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 14, 2019 consolidating two complaints into a single proceeding after receiving confirmation that both Complaints have the same registrant.
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 the Respondent of the Complaint, and the proceedings commenced on August 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on September 27, 2019. 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 T. Rowe Price Group, Inc., a United States corporation with its global headquarters in Baltimore, Maryland founded in 1937 by Thomas Rowe Price, Jr.
The Complaint is based upon the Complainant’s trademark/service mark, T. ROWE PRICE, amongst others United States trademark No. 1493517, registered on June 21, 1988 for services in class 36 with first use in commerce in 1937.
The disputed domain names were registered on July 17 and July 29, 2019, respectively. They redirect to revolving web content, including parking pages containing pay-per-click advertising links.
The disputed domain names are listed for sale to the general public through the Sedo domain name marketplace, at a minimum offer price of USD 500 per domain name. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant points out that the disputed domain names are confusingly similar to the registered mark in which the Complainant has rights. The only difference between the Complainant’s T. ROWE PRICE mark and the disputed domain names are certain typographical variations and the “.com” generic Top-Level Domain (“gTLD”) extension. It is well established that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. In particular, the Complainant has never authorized the Respondent to use the T. ROWE PRICE marks as part of the disputed domain names. Furthermore, the disputed domain names do not reflect the Respondent’s common name or organization name. Finally, the disputed domain names and the content to which they lead enable the Respondent to collect fees associated with the redirected web traffic, through the underlying redirection services hosted by various monetization platforms.
Finally, the Respondent’s registration and use of the disputed domain names constitutes – in the Complainant’s view – bad faith under several aspects: The disputed domain names are advertised and listed for sale to the general public, including through the Sedo domain name marketplace. Furthermore, the Respondent has engaged in a bad faith pattern of targeting domain names relating to the Complainant’s T. ROWE PRICE mark, given the registration of the disputed domain names, each of which is a different typographical variation of this mark. In addition, the Respondent has been the losing respondent in numerous prior UDRP proceedings involving other third-party trademarks. Finally, the disputed domain names have been used to redirect Internet users to various revolving content, including sites potentially distributing malware, and which are otherwise generating fees for the Respondent through the use of various monetization platforms. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel is satisfied that the registrant of record for the disputed domain names is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to said mark.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the verbal element T. ROWE PRICE. Reference is made in particular to United States trademark No. 1493517, registered on June 21, 1988 for services in class 36 with first use in commerce in 1937.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark for purposes of the first element, where it consists of a common, obvious, or intentional misspelling of a trademark (cf. section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel shares the same view and notes that the Complainant’s registered trademark T. ROWE PRICE is fully included in the disputed domain name (except for the dot after the “t”). Merely a “p” has been included, which is, however, an adjacent keyboard letter to the “o” which follows the “p”. In the second disputed domain name , the “p” has been omitted while the “i” has been doubled. Therefore, the Panel concludes that in both cases, the disputed domain names contain sufficiently recognizable aspects of the mark T. ROWE PRICE.
Furthermore, and according to previous UDRP decisions, the applicable gTLD suffix “.com” in both disputed domain names is to be disregarded under the confusing similarity/identity test.
Hence, this Panel finds that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names.
First, it results from the Complainant’s uncontested evidence that the disputed domain names resolve to revolving web content, including parking pages containing pay-per-click advertising links. Such use cannot – in this Panel’s view – be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark and are therefore likely to mislead Internet users (cf. WIPO Overview 3.0 at section 2.9). In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain names. In particular, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the T. ROWE PRICE trademarks for registering the disputed domain names comprising which are confusingly similar.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain names in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might target a 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 pursuant to paragraph 4(c)(iii) of the Policy. In particular, the Panel is satisfied that the registered trademark T. ROWE PRICE is distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain names consisting of this term. In addition, the disputed domain names are used, amongst others, for parking pages that are commercial, so that a noncommercial use is excluded from the outset.
It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular, but without limitation, be evidence of the disputed domain names’ registration and use in bad faith. One of these circumstances is that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names (paragraph 4(b)(i) of the Policy).
It is the view of this Panel that the Respondent has actually registered the disputed domain names primarily for the purpose of selling them either to the Complainant or to third persons, in particular to one of the Complainant’s competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names. According to the Complainant’s uncontested allegations the Respondent has offered the disputed domain names for sale on the public auctioning website SEDO for a minimum price of USD 500. This Panel finds that this sum is in excess of any out-of-pocket costs directly related to the disputed domain names (see Linatex Limited v. Yunkook Jung,WIPO Case No. D2019-1784).
Furthermore, the use of misspelling indicates an intention on the part of the Respondent to confuse users and, the use of pay per click advertising links is evidence of bad faith use as per paragraph 4(b)(iv).
In addition, this finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following:
(i) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use;
(ii) the implausibility of any good faith use to which the disputed domain name may be put;
(iii) the Respondent having been involved previously in several other UDRP cases, where the transfer of the disputed domain name has been ordered and bad faith being found;
(iv) the disputed domain names resolving to a parking page with links to pay per click links (see section 3.5 of WIPO Overview 3.0); and
(v) the Respondent hiding its identity behind a privacy shield.
In the light of the above the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to 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 names and be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: October 15, 2019
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