Walpole Woodworkers Inc. v. orville smith and technology services ltd
Claim Number: FA0806001212786
Complainant is Walpole
Woodworkers, Inc. (“Complainant”), represented by Neil T. Smith of Goodwin Procter LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwwalpolewoodworkers.com>, registered with Dotster.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint June 27, 2008.
On June 27, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <wwwwalpolewoodworkers.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster verified that Respondent is bound by the Dotster registration agreement and thereby has 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 8, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 28, 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 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.
On August 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <wwwwalpolewoodworkers.com>, is confusingly similar to Complainant’s WALPOLE WOODWORKERS mark.
2. Respondent has no rights to or legitimate interests in the <wwwwalpolewoodworkers.com> domain name.
3. Respondent registered and used the <wwwwalpolewoodworkers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Walpole Woodworkers Inc., was founded in 1933
and has continuously operated its design, manufacture, and installation of
fences and wood products business under the WALPOLE WOODWORKERS mark. Complainant has a registered trademark for the
On March 23, 2006, Respondent registered the <wwwwalpolewoodworkers.com> domain name. The disputed domain name current resolves to a website that displays hyperlinks to Complainant’s direct competitors.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant need not have a registered mark in order to achieve UDRP standing, so long as Complainant can demonstrate sufficient secondary meaning and common law rights in the mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts that it has operated under the WALPOLE WOODWORKERS mark since 1933, and that it has expended significant revenues in advertising in recent years and realized substantial annual revenues. Moreover, Complainant operates across numerous states in 16 locations, and has maintained an Internet presence for almost 10 years. Therefore, the Panel finds that Complainant demonstrated common law rights in its WALPOLE WOODWORKERS mark, which has achieved the requisite secondary meaning under Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
The disputed domain name, <wwwwalpolewoodworkers.com>, contains Complainant’s entire and unaltered mark, while adding the generic prefix “www,” which represents an attempt to manipulate Internet users who unsuspectingly omit the customary and conventional period between the prefix and the domain name. The Panel also notes that the disputed domain name shadows Complainant’s <walpolewoodworkers.com> domain name, which supports an inference of Respondent’s improper intent and purpose behind the addition of the “www” prefix. Moreover, the addition of the generic top-level domain “.com” is irrelevant under Policy ¶ 4(a)(i). Accordingly, the Panel finds that the <wwwwalpolewoodworkers.com> domain name is confusingly similar to Complainant’s WALPOLE WOODWORKERS mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Because the Panel finds that Complainant met its burden of demonstrating a prima facie case in support of its allegation that Respondent lacks rights and legitimate interests in the disputed domain name, the burden shifts to Respondent to show that it does have such rights or legitimate interests. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
Respondent’s failure to respond to the Complaint leaves the Panel without evidence to suggest that Respondent is commonly known by the disputed domain name. Nonetheless, the Panel examines the only evidence before it, the WHOIS information, which shows that Respondent is listed as “orville smith and technology services ltd,” which despite its assuredly novel name, does not indicate a resemblance to the disputed domain name. Moreover, Complainant contends that it gave no license or permission to Respondent to use its mark in any fashion, much less in a confusingly similar domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii), because Respondent produced no evidence of rights or interest in the domain name and Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s disputed domain name resolves to a website that features links to Complainant’s direct competitors. The Panel may presume that Respondent engages in such activity for commercial benefit through “click-through” fees. No other function, use, or purpose to the disputed domain name is suggested other than what has been presented before the Panel. Therefore, the Panel finds that Respondent has not created a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees … is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent has engaged in a textbook case of “typosquatting,” which refers to the registration of a domain name that manipulates common typographical errors that Internet users commit. Not only does the addition of the “www” prefix capitalize on the common omission of the period upon submission of an Internet user’s search query, but it also provides only a frail barrier between the disputed domain name, Complainant’s mark, and Complainant’s own domain name. The Panel finds that Respondent’s engagement in typosquatting is clear evidence of its lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“Respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because Respondent's addition of the prefix "www-" to Complainant's AMAZON.COM mark constitutes typosquatting.”); see also Canadian Tire Corp. v. domain adm’r email@example.com 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent lacked rights and legitimate interests in the <wwwcanadiantire.com> domain name where it used the domain name as a part of the complainant’s affiliate program in exchange for specified commissions).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website that
attempts to route Internet users to Complainant’s direct competitors. The Panel finds that Respondent intended
primarily to disrupt Complainant’s business, and that therefore Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the
disputed domain name to operate a commercial search engine with links to the
complainant’s competitors); see also
Internet users seeking Complainant are likely to be diverted to the confusingly similar disputed domain name, given the confusing similarity to Complainant’s mark and Complainant’s own legitimate domain name. The Panel finds that the proof before the Panel supports an inference that Respondent intended this confusion with Complainant’s offer of services and that Respondent intended to divert Internet users seeking Complainant to Respondent’s website for Respondent’s commercial gain. Therefore the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Respondent preys upon the common errors of Internet users that would seek Complainant and its services; those who happen to make the mistake of the omission of the period after the prefix “www” will be diverted to Respondent’s competitive website and be subjected to advertisements for Complainant’s competitors. This practice, known as typosquatting, supports findings of bad faith registration and use against Respondent under Policy ¶ 4(a)(iii). See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that the respondent’s registration of the <wwwremax.com> domain name, incorporating the complainant’s entire mark, was done with actual notice of the complainant’s rights in the mark prior to registering the infringing domain name, evidencing bad faith); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“In typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing [<wwwmedline.com>] domain name.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwwalpolewoodworkers.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 18, 2008.
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