national arbitration forum

DECISION

Claim Number: FA0707001029513

PARTIES

Complainant is Register.com, Inc. (“Complainant”), represented by Brett E. Lewis, of Lewis & Hand, LLP, 45 Main Street, Suite 818, Brooklyn, NY 11201. Respondent is Elias Skander c/o Web Registration Service Dot Liban (“Respondent”), PO Box 56002, 1500 Atwater Av., Montreal, PQ H3Z 3G3, CA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <ergister.com> and <rewgister.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2007.

On July 9, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ergister.com> and <rewgister.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On July 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 2, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ergister.com and postmaster@rewgister.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On August 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <ergister.com> and <rewgister.com> domain names are confusingly similar to Complainant’s REGISTER.COM mark.

2. Respondent does not have any rights or legitimate interests in the <ergister.com> and <rewgister.com> domain name.

3. Respondent registered and used the <ergister.com> and <rewgister.com> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Register.com, Inc., is a global leader in providing domain name registration services. Complainant has been responsible for the direct registration of top-level domains both domestically and overseas under the REGISTER mark since 1994. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”), including both the REGISTER mark (Reg. No. 2,664,968 issued December 24, 2002, filed April 28, 1999), and the REGISTER.COM mark (Reg. No. 2,664,968 issued December 24, 2002, filed April 26, 1999). Additionally, Complainant operates a website at the <register.com> domain name, and also operates an affiliate program where Internet users are referred to Complainant’s website through third-party websites.

Respondent registered the <ergister.com> and <rewgister.com> domain names on December 11, 2000. After registering the disputed domain names, Respondent enrolled in Complainant’s affiliate program, which generated revenue for Respondent as the disputed domain names diverted Internet users, who committed typographical errors while attempting to access Complainant’s website, back to Complainant’s website. Respondent has also been Respondent to several other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant’s trademark registrations with the USPTO sufficiently establish Complainant’s rights in the REGISTER mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.")

Furthermore, the Panel finds that those rights predate back to the application filing dates of the mark REGISTER, which precedes the registration date of the <ergister.com> and <rewgister.com> domain names, pursuant to Policy ¶ 4(a)(i). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).

The Panel finds that Respondent’s <ergister.com> and <rewgister.com> domain names are confusingly similar to Complainant’s REGISTER mark under Policy ¶ 4(a)(i). The disputed domain names are simply misspellings of Complainant’s REGISTER mark. Moreover, the addition of the generic top-level domain “.com” does nothing to relieve the confusing similarity under Policy ¶ 4(a)(i), as a top-level domain is a requirement for all domain names. Accordingly, the Panel finds that Respondent’s disputed domain names are confusingly similar under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant must first establish that Respondent lacks rights and legitimate interests with respect to the <ergister.com> and <rewgister.com> domain names. Once Complainant makes a prima facie case, the burden of proof shifts to Respondent, who must then prove that it has rights or legitimate interests in the disputed domain name. The Panel finds Complainant has met its burden, shifting the burden to Respondent. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

Respondent is using the <ergister.com> and <rewgister.com> domain names in a tactic commonly known as “typosquatting.” In using this technique, Respondent is taking advantage of Internet users’ typographical errors and redirecting them back to Complainant’s website, in an effort to gain revenue through Complainant’s affiliate program. The tactic does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, a misspelling of the complainant’s mark, the respondent intended to profit off the domain name at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)).

Additionally, Respondent’s WHOIS information does not indicate, and there is nothing in the record to suggest, that Respondent is commonly known by the <ergister.com> or <rewgister.com> domain names. Furthermore, Complainant asserts that it has neither authorized nor licensed Respondent to use the REGISTER or REGISTER.COM marks in any way. This evidence leads the Panel to find that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).

Moreover, Respondent’s registration of the <ergister.com> and <rewgister.com> domain names in Complainant’s affiliate program is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain names. Such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat. Arb. Forum Jan. 9, 2003) (finding that registering a domain name which differs by one letter from the complainant’s commercial website, and using that domain name to redirect Internet consumers to the complainant’s website as a part of the complainant’s affiliate program is not a bona fide offering of goods or services nor a noncommercial use of the domain name). Accordingly, the Panel finds that Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The Panel finds that Respondent uses a technique known as “typosquatting,” in which Internet users are redirected to Complainant’s website after accidentally typing Respondent’s <ergister.com> and <rewgister.com> domain names. Typosquatting, on its own, is considered bad faith under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).

Based on the uncontroverted evidence presented by Complainant, the Panel finds that Respondent receives revenues and commissions through its registrations of the <ergister.com> and <rewgister.com> domain names in Complainant’s affiliate program. The Panel finds that the use of such tactics constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” and therefore registered and used the domain name in bad faith); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).

Furthermore, the Panel finds that Respondent has been the Respondent in several other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings. See Expedia, Inc. v. El Hinn dba Dot Liban dba Ixpedia.Com, D2002-0900 (WIPO Nov. 7, 2002); see also Expedia, Inc. v. Dot Liban, Hanna El Hinn, D2002-0433 (WIPO July 3, 2002); see also Germanwings GmbH v. Web Registration Service Dot Liban /Elias Skander, D2006-1124 (WIPO Nov. 27, 2006). Accordingly, the Panel finds bad faith registration and use under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <ergister.com> and <rewgister.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: August 22, 2007

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page

National Arbitration Forum