Matthew Bender & Company, Inc. and Matthew Bender
Properties Inc. v. Domain Administrator
Claim Number: FA0804001181072
Complainant is Matthew Bender & Company, Inc and Matthew
Bender Properties Inc. (“Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski, Washington, D.C., USA. Respondent is Domain Administrator (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mathewbender.com>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 27, 2008
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@mathewbender.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mathewbender.com> domain name is confusingly similar to Complainant’s MATTHEW BENDER mark.
2. Respondent does not have any rights or legitimate interests in the <mathewbender.com> domain name.
3. Respondent registered and used the <mathewbender.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Matthew Bender & Company, Inc., is a
licensee of Complainant Matthew Bender Properties Inc. Complainant offers a variety of legal,
medical and other business publications under its MATTHEW BENDER mark. Complainant first registered its MATTHEW
BENDER mark with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the disputed domain name 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 has provided evidence of the registration of its
MATTHEW BENDER mark with the USPTO. The
Panel finds this is sufficient to establish Complainant’s rights in its mark
pursuant to Policy ¶ 4(a)(i). See
Respondent’s <mathewbender.com>
domain name fully incorporates Complainant’s MATTHEW BENDER mark with the
deletion of the letter “t,” and the addition of the generic top-level domain
(“gTLD”) “.com.” A common typographical
error such as the deletion of a letter, and the addition of a top-level domain
which is a required element of every domain name, does not sufficiently
distinguish Respondent’s disputed domain name from Complainant’s mark. Therefore, the Panel finds Respondent’s
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Guinness UDV N. Am., Inc. v.
Dallas Internet Servs., D2001-1055 (WIPO
Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar
to the complainant’s SMIRNOFF mark because merely removing the letter “f” from
the mark was insignificant); see
also Neiman Marcus Group, Inc. v. Party Night,
Inc., FA 114546 (Nat. Arb. Forum July 23,
2002) (finding that the <neimanmacus.com>
domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was
evidence that the domain name was confusingly similar to the mark); see also Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent lacks rights and legitimate
interests in the disputed domain name.
Complainant must establish a prima
facie case to support these assertions, and the Panel finds Complainant has
done so in these proceedings. Once
Complainant has produced a sufficient prima
facie case, the burden shifts to Respondent to establish it does have
rights or legitimate interests in the disputed domain name. Respondent failed to submit a response to
these proceedings, thus the Panel may infer Respondent lacks rights and
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests pursuant to
Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO
Respondent’s disputed domain name resolves to a website
which displays pop up advertisements offering goods and services which compete
with Complainant, as well as providing links to websites offering goods and
services which compete with Complainant.
The Panel finds Respondent’s use of the disputed domain name to promote
goods and services which compete with Complainant is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum
Additionally, the Panel finds Respondent lacks rights and
legitimate interests in the <mathewbender.com>
domain name pursuant to Policy ¶ 4(a)(ii) because it is using a disputed domain
name which contains a misspelling of Complainant’s mark, to promote goods and
services which compete with Complainant.
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 LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb.
Forum
Furthermore, the record and WHOIS information do not
indicate Respondent is commonly known by the <mathewbender.com>
domain name. The WHOIS information lists
“Domain Administrator,” as the registrant and the record does not indicate
Complainant has authorized Respondent to use the MATTHEW BENDER mark in any
manner. Therefore, the Panel concludes
the Respondent is not commonly known by the <mathewbender.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name redirects Internet users
to pop-up advertisements and links to third-party websites which compete with
Complainant’s business. The Panel finds
Respondent’s use constitutes disruption and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Respondent is using the website resolving from its
confusingly similar disputed domain name to display pop-up advertisements and
links to goods and services which compete with Complainant. Respondent presumably profits from these uses
of the confusingly similar disputed domain name in the form of click-through
fees. Additionally, Respondent’s use of
Complainant’s MATTHEW BENDER mark creates a likelihood of confusion regarding
the source of the content resolving from the disputed domain name. The Panel finds this is an attempt by
Respondent to profit from the goodwill associated with Complainant’s mark. Therefore, the Panel finds Respondent’s
attempt to profit from its use of the confusingly similar disputed domain name
constitutes registration and use in bad faith pursuant to Policy ¶
4(b)(iv).
Additionally, Respondent’s domain
name contains a common typographical error and is being used by Respondent to
profit from Complainant’s MATTHEW BENDER mark.
The Panel finds Respondent’s actions constitute typosquatting and are
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional
misspelling of words with [the] intent to intercept and siphon off traffic from
its intended destination, by preying on Internauts who make common typing
errors. Typosquatting is inherently
parasitic and of itself evidence of bad faith.”); see also Sports Auth.
The Panel finds 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 <mathewbender.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 9, 2008
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