The Complainant is Stratfor Enterprises, LLC of Austin, Texas, United States of America, represented by Jim Boeckman, Esq., United States of America.
The Respondent is Leviticus Wilson of Goodyear, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2013. On February 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name. The Complainant filed an amendment to the Complaint on February 21, 2013.
The Center verified that the Complaint, together with the amendment to the 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 February 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on March 26, 2013. 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 asserts common law trademark rights in STRATFOR in connection with a subscription based website providing geopolitical intelligence and guidance to its clients. The Complainant has used STRATFOR to designate its services for more than a decade, and filed an application to register STRATFOR with the United States Patent and Trademark Office (“USPTO”) on September 27, 2011, which is pending. According to the sworn affidavit of the Complainant’s marketing director, the Complainant expends significant resources in advertising, marketing and promoting its web based subscription services using the STRATFOR mark, sending daily emails regarding the Complainant’s geopolitical analysis to more than 24,000 subscribers, displaying the STRATFOR mark, as well as sending weekly marketing emails promoting the mark to more than 200,000 email addresses. The Complainant also submits that since 2008 it has spent up to USD 82,000 annually for third-party advertising of its STRATFOR mark and services. Since March 2007, the Complainant’s subscription based website has received between 600,000 and 3,600,000 page views per month. The Complainant also promotes its STRATFOR mark though social media.
The Respondent registered the disputed domain name on or about December 21, 2012. The disputed domain name redirects Internet users to a webpage posting information on a December 2011, hacking of the Complainant’s computer systems, in which customer credit card and other information including email was stolen, and data and servers destroyed. This incident also has been reported on the Complainant’s own website. It appears that the contact information provided by the Respondent to the Registrar when registering the disputed domain name most likely was inaccurate, false, or fictitious, based on the Complainant’s unsuccessful attempts to deliver several letters by FedEx to the Respondent’s WhoIs postal address, and the Center’s experiences in providing notification of the Complaint to the Respondent by electronic mail and courier relying on the Respondent’s WhoIs contact information. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to its STRATFOR mark, in which the Complainant asserts common law rights. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has not authorized the Respondent to use the STRATFOR mark, and as there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that the Respondent’s objective in registering the disputed domain name was to damage and disrupt the Complainant’s business, operations, reputation and employee morale, tarnish the Complainant’s trademark, and mislead the Complainant’s customers. According to the Complainant, the Respondent intentionally has attempted to divert and attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark and falsely suggesting an affiliation of the Respondent’s website with the Complainant’s “www.m” website. For all of the foregoing reasons, the Complainant also submits that the Respondent registered and is using the disputed domain name in bad faith. 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 disputed domain name registered 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is 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 a right or legitimate interest in the 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 STRATFOR. 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; and 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. Based on evidence submitted by the Complainant attesting to the continuous and exclusive use of the distinctive term STRATFOR for more than 10 years as a designation of source for the Complainant’s services, including the sworn declaration of the Complainant’s marketing director, the Panel is persuaded that the Complainant has demonstrated common law trademark rights in STRATFOR.
Turning to the question of identity or confusing similarity, the Panel finds that the disputed domain name is identical to the Complainant’s STRATFOR mark. In considering this issue, 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. In this case, the disputed domain beyond question is identical to the Complainant’s STRATFOR mark for purposes of the Policy.
The Panel finds 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 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 is identical to the Complainant’s mark, and it is undisputed that the Respondent has not been authorized to use the Complainant’s mark or commonly known by the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name 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 name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he or she has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, 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 formal 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. Based on the record in this proceeding, the Panel considers it beyond contravention that the Respondent was aware of the Complainant and had the Complainant’s STRATFOR mark in mind when registering the disputed domain name. The Respondent plainly appropriated the Complainant’s distinctive mark without authorization, and the record before the Panel is bereft of any indication of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Nor is the Panel persuaded in the circumstances at hand that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The right to express one’s views freely on the Internet is one thing, but in this Panel’s view that does not necessarily extend to a right to do so through a domain name which deceptively comprises the Complainant’s trademark. See, e.g., WIPO Overview 2.0, paragraph 2.4, “View 1”, and the cases cited therein. See also The First Baptist Church of Glenarden v. Melvin Jones,WIPO Case No. D2009-0022 (by intentionally selecting complainant's mark to present his views, respondent has not made a legitimate use of disputed domain name); Kirkland & Ellis LLP v. DefaultD, American Distribution Systems, Inc.,WIPO Case No. D2004-0136 (right to express views does not include deceptively identifying one’s self by another’s name).
The Panel would have looked forward to a response including any explanation. However, given the absence of any response, the Respondent’s deliberate appropriation and use of a domain name identical to the Complainant’s mark to divert Internet users to the Respondent’s website, and having in mind the Respondent’s apparent provision of inaccurate or false contact information when registering the disputed domain name, the record in the Panel’s judgment reflects that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds 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 circumstances where the registrant seeks to exploit or otherwise take advantage of the trademark of another. See 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 evinces bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent clearly was aware of, and had, the Complainant’s distinctive mark in mind when registering the disputed domain name. In the overall circumstances of this case as reflected in the record, the Respondent’s intentional appropriation and use of a domain name identical to the Complainant’s mark in order to create a likelihood of confusion and divert Internet users to the Respondent’s website constitutes bad faith, regardless of the content of the Respondent’s website. See The First Baptist Church of Glenarden v. Melvin Jones, supra; Kirkland & Ellis LLP v. DefaultD, American Distribution Systems, Inc., supra (right to express views does not include deceptively identifying one’s self by another’s name). The Respondent’s apparent provision of inaccurate or false contact information also suggests bad faith. Given the totality of circumstances, and in the absence of any reply by the Respondent, the Panel finds the Respondent registered and is using the disputed domain name in bad faith.
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
Date: April 22, 2013
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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