ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION West Technology Group, LLC v. charafa saliou, charafa saliou Case No. D2023-4617 1. The Parties Complainant is West Technology Group, LLC, United States of America (“United States”), represented by Husch Blackwell LLP, United States. Respondent is charafa saliou, charafa saliou, United States. 2. The Domain Name and Registrar The disputed domain name (hereinafter the “Disputed Domain Name”) is registered with DreamHost, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2023. On November 8, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Proxy Protection LLC, C/O globnewswire.com) and contact information in the Complaint. The Center sent an email communication to Complainant on November 14, 2023, 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 November 17, 2023. 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 November 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2023. The Response was filed with the Center on December 11, 2023.
page 2 The Center appointed Lawrence K. Nodine, Lynda J. Zadra-Symes, and Lynda M. Braun as panelists in this matter on January 26, 2024. The Panel finds that it was properly constituted. Each member of 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 operates a newswire distribution network under the trademark GLOBE NEWSWIRE (the “Mark”) that specializes in the delivery of corporate press releases, financial disclosures, and multimedia content to media, investors, and consumers worldwide. Press releases distributed on the GLOBE NEWSWIRE platform reach 158 countries in 35 local languages. Complainant uses its Mark in connection with its domain name which resolves to a website where subscribers may create and distribute press releases. Complainant owns United States trademark registration No. 3,652,418 (registered July 7, 2009) for GLOBE NEWSWIRE. One of its wholly owned subsidiaries owns European Union trademark registration No. 018869857 (registered September 27, 2023) also for GLOBENEWSWIRE. Respondent registered the Disputed Domain Name on July 21, 2022. The Disputed Domain Name resolves to an active page which displays news articles. There is an advertising banner on the website. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, Complainant contends that the Disputed Domain Name reflects typosquatting and that Respondent is impersonating Complainant by including Complainant’s full Mark (spelled properly) on the website associated with the Disputed Domain Name (hereinafter the “Website”). B. Respondent Respondent filed the following Response: “I would like to clarify that at the time of purchasing the domain from an expired domain website, I had no knowledge of any existing trademark associated with the name GlobeNewswire. As an individual who primarily deals with expired domains, my intention was solely to acquire an available domain to build a website for my own purposes. Upon receiving your notice, I conducted a thorough investigation into the matter. While I acknowledge the similarity between the domain and your trademarked name, GlobeNewswire, it is important to note that there is a single misspelling in the domain. This distinction significantly differentiates my domain from your trademarked name and helps to minimize the likelihood of confusion among consumers. Furthermore, I would like to emphasize that the content and purpose of my website are completely unrelated to your business activities. It serves a different niche and is focused on providing [describe the nature of your website content]. Therefore, there is little potential for confusion between your well-established brand and my independent venture. Additionally, it is worth noting that I have been operating this website in good faith, without any intention to infringe upon or dilute your trademark rights. I firmly believe that I have a legitimate interest in using the domain for my lawful activities, which fall within the realm of fair use and are unrelated to your business.”
page 3 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The mark is recognizable within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although Respondent deletes one letter “e” from Complainant’s trademark in the Disputed Domain Name, the Mark is still plainly recognizable. Decisions under the Policy have uniformly found such typosquatting to be confusingly similar to a complainant trademark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, Section 1.9. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. Respondent is impersonating Complainant. While the Disputed Domain Name is , the Website uses Complainant’s GLOBE NEWSWIRE Mark (spelled properly) throughout. Additionally, the copyright notice says “Copyright © 2022 Globe NewsWire,” along with the disclaimer that “Globe NewsWire is not responsible for the content of external sites.” Respondent has no right to impersonate Complainant (using a typo domain name no less) and cannot claim any legitimate interest in this behavior. The Panel moreover rejects as spurious Respondent’s contention that his Website “serves a different niche.” Respondent pasted into its response boilerplate text that asserts this defense, but Respondent neglected to follow the instructions embedded in the text, which read “describe the nature of your website.” Consequently, the claimed defense is without merit. The Panel finds the second element of the Policy has been established.
page 4 C. Registered and Used in Bad Faith The Panel finds that Respondent registered the Disputed Domain Name in bad faith. Typosquatting is evidence of bad faith registration. Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069 (Finding typosquatting to be evidence of bad faith domain name registration); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”). The Panel rejects Respondent’s assertion in his Response that he had no knowledge of Complainant when he registered the Disputed Domain Name. The Response explicitly acknowledges Complainant’s “well-established brand.” In addition, Respondent’s inclusion of Complainant’s Mark on the Website is sufficient evidence to support a finding that Respondent was fully aware of Complainant’s rights when it registered the Disputed Domain Name and that he intended to impersonate Complainant. The Panel also finds that Respondent is using the Disputed Domain Name to generate ad revenue. In the banner at the top of the Website, there is a placeholder for advertisements. The Panel finds that Respondent is using the Disputed Domain Name in bad faith to attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, or endorsement of Respondent’s website. This is textbook bad faith use. Policy, paragraph 4(b)(iv). The Panel finds that Complainant has established the third element 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 Complainant. /Lawrence K. Nodine/ Lawrence K. Nodine Presiding Panelist /Lynda J. Zadra-Symes/ Lynda J. Zadra-Symes Panelist /Lynda M. Braun/ Lynda M. Braun Panelist Date: February 9, 2024
Full & Egal Universal Law Academy