Register.com, Inc. v. Elias Skander c/o Web Registration Service Dot Liban
Claim Number: FA0707001029513
Complainant is Register.com, Inc. (“Complainant”), represented by Brett
E. Lewis, of Lewis & Hand, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <ergister.com> and <rewgister.com>, registered with Enom, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
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 email@example.com and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
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.
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>
domain names on
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.
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>
domain names, pursuant to Policy ¶ 4(a)(i).
See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO
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
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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
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.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
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
Based on the uncontroverted evidence presented by
Complainant, the Panel finds that Respondent receives revenues and commissions
through its registrations of the <ergister.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
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
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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
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