Square, Inc. v. qian jin / zhang qin
Claim Number: FA1203001436661
Complainant is Square, Inc. (“Complainant”), represented by David R. Eberhart of O'Melveny & Myers LLP, California, USA. Respondent is qian jin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sqwareup.com>, <squareup.co>, <squraeup.com>, <suqareup.com>, <squiareup.com>, <sdquareup.com>, <saquareup.com>, <squyareup.com>, <squareuop.com>, <squaereup.com>, <squasreup.com>, <squareuip.com>, <squareyup.com>, <squareap.com>, <sqwuareup.com>, <squatreup.com>, <swquareup.com>, <squareupo.com>, <dsquareup.com>, <asquareup.com>, <sqyuareup.com>, <sqiuareup.com>, <squarweup.com>, <squareuyp.com>, <sauareup.com>, and <wquareup.com>, registered with Name.com LLC.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2012; the National Arbitration Forum received payment on March 27, 2012.
On March 28, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <sqwareup.com>, <squareup.co>, <squraeup.com>, <suqareup.com>, <squiareup.com>, <sdquareup.com>, <saquareup.com>, <squyareup.com>, <squareuop.com>, <squaereup.com>, <squasreup.com>, <squareuip.com>, <squareyup.com>, <squareap.com>, <sqwuareup.com>, <squatreup.com>, <swquareup.com>, <squareupo.com>, <dsquareup.com>, <asquareup.com>, <sqyuareup.com>, <sqiuareup.com>, <squarweup.com>, <squareuyp.com>, <sauareup.com>, and <wquareup.com> domain names are registered with Name.com LLC and that Respondent is the current registrant of the names. Name.com LLC has verified that Respondent is bound by the Name.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sqwareup.com, postmaster@squareup.co, postmaster@squraeup.com, postmaster@suqareup.com, postmaster@squiareup.com, postmaster@sdquareup.com, postmaster@saquareup.com, postmaster@squyareup.com, postmaster@squareuop.com, postmaster@squaereup.com, postmaster@squasreup.com, postmaster@squareuip.com, postmaster@squareyup.com, postmaster@squareap.com, postmaster@sqwuareup.com, postmaster@squatreup.com, postmaster@swquareup.com, postmaster@squareupo.com, postmaster@dsquareup.com, postmaster@asquareup.com, postmaster@sqyuareup.com, postmaster@sqiuareup.com, postmaster@squarweup.com, postmaster@squareuyp.com, postmaster@sauareup.com, and postmaster@wquareup.com. Also on April 3, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 23, 2012.
Additional Submissions were received from Claimant and Respondent on April 30, 2012 and May 7, 2012 respectively. Both Submissions were received in a timely manner according to Forum Supplemental Rule 7.
On April 27, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has registered the SQUARE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,962,489 filed August 5, 2009, registered May 17, 2011);
2. Complainant has also registered the SQUARE mark with the Chinese trademark authority, the State Administration for Industry and Commerce (“SIAC”) (e.g., Reg. No. ZC8231081SL issued May 17, 2010);
3. Respondent’s disputed domain names are confusingly similar to Complainant’s SQUARE mark;
4. Complainant has acquired rights in the SQUARE UP mark through continuous and ongoing use;
5. Complainant performs a large portion of its business online through the <squareup.com> domain name;
6. Respondent has engaged in typosquatting by registering the disputed domain names in their current format;
7. Respondent is not commonly known by the disputed domain names;
8. Complainant has not given Respondent license or permission to use the SQUARE, SQUARE UP, and SQUAREUP.COM marks in any way;
9. Respondent’s disputed domain names resolve to websites offering links to both unrelated and competing third-party businesses;
10. Respondent lacks rights or legitimate interests in the disputed domain names;
11. Respondent filed a trademark registration application with the USPTO after Complainant contacted Respondent about the infringing domain names;
12. Respondent is attempting to prevent Complainant from reflecting its mark in a domain name;
13. Respondent has also been subject to prior UDRP proceedings;
14. Respondent’s registration of multiple domain names at one time indicates bad faith;
15. Respondent has registered and is using the disputed domain names in bad faith.
B. Respondent
1. Complainant’s SQUARE and SQUARE UP marks are common and generic;
2. Respondent has filed an application with the USPTO to register the SQUAREUP and SQUREUP marks in relation to advertising services;
3. Respondent established rights in the <squareup.co> domain name;
4. Respondent has used the <squareup.co> domain name for two and a half years, a period longer than Complainant’s business has existed;
5. Respondent has devoted substantial time and money to develop the <squareup.co> domain name;
6. Respondent’s website is aesthetically and functionally different than Complainant’s;
7. Respondent provides online advertising services from its website;
8. Respondent did not intend to infringe on any third party business interests;
9. Respondent’s <squareup.co> domain name will not cause confusion amongst Internet users.
C. Additional Submissions
Both parties present timely Additional Submissions which seek to corroborate the Complaint and Response. The Panel has considered the Additional Submissions and concluded that they reiterate the initial arguments without really adding any substantive new ones.
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."
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel notes that “Qian Jin” is the registrant of all but one of the disputed domain names, <wquareup.com>. Complainant asserts that “Qian Jin” also controls the final disputed domain name, <wquareup.com>. The WHOIS information for this domain indicates that it is registered by “Zhang Qin”, also of Nanjing, China. See Complainant’s Exhibit 47.
Complainant asserts that “Zhang Qin” is an alias of “Qian Jin”, for two independently sufficient reasons. First, Complainant states that “Qian Jin” has used “Zhang Qin” as an alias in registering other domain names and provides one example. Complainant submits that “Qian Jin” used the “Zhang Qin” alias to register the domain <orbitdownloader.net>. Complainant states that in 2007, that domain was registered to Qian Jin. See Complainant’s Exhibit 51. Complainant claims that later WHOIS information shows “Qian Jin” as registrant for that domain using the email address ho@live.com. See Complainant’s Exhibit 51. Complainant also states that in 2010, the domain was transferred to “Zhang Qin” but this purportedly new registrant continued to use the same ho@live.com email address previously used by Qian Jin. See Complainant’s Exhibit 51. Complainant notes that the WHOIS information was again updated to show “Zhang Qin” at “Qian Jin’s” mailing address, Guojiashan 29, Nanjing, China 210037, and using the email address zuan@vip.163.com. Complainant also contends that the <wquareup.com> domain name was registered on the same day as one of the other disputed domain names and resolves to a websites offering identical services. Complainant claims that this fact further supports a finding that the two named individuals are, in fact, one.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and shall proceed with these proceedings.
Complainant claims to have established its rights in the SQUARE mark by registering it with the USPTO (e.g., Reg. No. 3,962,489 filed August 5, 2009; registered May 17, 2011) and the SAIC (e.g., Reg. No. ZC8231081SL registered May 17, 2010).
The Panel, consistent with previous panels, finds that Complainant has established its rights in the SQUARE mark under Policy ¶ 4(a)(i) dating back to August 5, 2009, by registering it with trademark authorities throughout the world. See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant also claims that it has established its rights in the SQUARE UP mark through continuous, ongoing, and extensive use of the mark in conjunction with its business. Complainant states that the first day the mark was used was October 17, 2009, when a large scale press release announced the name and nature of its business. Complainant asserts that, since that date, its business has grown in scale to become very well-known and popular. Complainant submits multiple publications indicating that it has used the mark extensively and has gained notoriety under the mark, including articles in USA Today, the San Francisco Chronicle, and The Atlantic. See Complainant’s Exhibits 4-6.
The Panel finds that Complainant has established common law rights in the SQUARE UP mark under Policy ¶ 4(a)(i). The Panel finds that Complainant has continuously used the mark and has acquired secondary meaning in the mark. See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); 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).
Complainant contends that it has established rights in the SQUAREUP.COM mark, as well. Complainant states that it has used the mark as its domain name, <squareup.com>. Complainant declares that a majority of its business is conducted through its website, thereby creating a connection with the consumers complainant encounters. The evidence shows that the <squareup.com> website was officially launched on December 1, 2009.
The Panel finds that Complainant has established its rights in the SQUAREUP.COM mark under Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant claims that the disputed domain names are confusingly similar to its SQUARE mark. Complainant states that the disputed domain names all include the entire mark or slight misspellings or variations of the mark. Complainant also states that the disputed domain names include variations and misspellings of the term “up,” with the generic top-level domain (“gTLD”) “.com.”
The Panel finds that Respondent’s disputed domain names are confusingly similar to its SQUARE mark under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Complainant also claims that the disputed domain names are confusingly similar to its SQUARE UP mark. Complainant states that the disputed domain names are comprised of typographic errors related to the SQUARE UP mark. Complainant also states that the disputed domain names include the gTLD “.com.” Complainant contends that the disputed domain names add, delete, and transpose letters at different times.
The Panel notes that the disputed domain names also remove the space between the terms. The Panel finds that Respondent’s disputed domain names are confusingly similar to its SQUARE UP mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); 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).
Complainant further contends that the disputed domain names are confusingly similar to its SQUAREUP.COM mark. Complainant posits that the disputed domain names are made up of misspellings and slight variations of its SQUAREUP.COM mark. The Panel notes that the disputed domain names include additional letters at times, delete letters at times, and transpose letters at other times.
The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s SQUAREUP.COM mark under Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
While Respondent argues that its registration of the disputed domain names predates Complainant’s alleged rights in the marks, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain names are identical or confusingly similar to Complainant’s marks. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Additionally, Respondent contends that the disputed domain names are comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark.
The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Rights or Legitimate Interests
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain names. The Panel notes that Respondent does not claim to be commonly known by any of the disputed domain names but the <squareup.co> domain name. The Panel also notes that the WHOIS information for all disputed domain names lists “qian jin / zhang qin” as the registrant.
Based upon the evidence available, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant maintains that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant claims that the disputed domain names all resolve to parked websites offering links to various third-parties that are unrelated to Complainant. Complainant states that the purpose of the websites is to generate revenue for Respondent.
Previous panels have held that such a use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Respondent claims that it has established its rights in the <squareup.co> domain name by making a bona fide offering of online advertising services. Respondent states that it has used the <squareup.co> domain name since its registration to advertise other companies on the Internet. As previously mentioned, the Panel notes that Respondent does not claim to be using any of the other disputed domain names in any way. Respondent states that it has spent a substantial amount of time and money on developing its website and has been using it to offer advertising services for over two and a half years. Respondent also states that it has filed an application with the USPTO to register the SQUAREUP mark in association with its advertising services.
Previous panels have found that pay-per-click websites are not in and of themselves unlawful or illegitimate where the respondent was using the disputed domain name in order to provide bona fide goods and/or services or pursuit of a noncommercial interest See McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); see also Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding rights or legitimate interests in the <portofhelsinki.com> domain name because the respondent was using the disputed domain name in order to provide information about services available in different ports around the world).
The Panel visited the web site associated with the domain <squareup.co> and observed that the very first entry on the said site referred customers to another web site which offered a variety of services including some services similar to Complainant’s. There were also related links to sites which offer services similar those offered by Complainant. If the internet user were unfamiliar with the Claimant’s web site, it could very well be lured into pursuing those competing services found on Respondent’s web site. This situation cannot be considered as being in pursuit of a bona fide offering of goods and/or services, nor a noncommercial interest; rather as profiting from Complainant’s more familiar brand.
Accordingly, the Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).
Complainant argues that all of the disputed domain names include only the mark while adding, deleting, and/or transposing letters to form a typographical error, which is typosquatting. The Panel notes that this argument only applies when comparing the disputed domain names to the SQUARE UP mark, as the addition of a term (as occurs when comparing the disputed domain names to the SQUARE mark) traditionally removes a disputed domain name from typosquatting status.
Based on the circumstances and the lack of activity of all but one of the domain names, together with the registration of most of the said names on or about the same time, the Panel finds that Respondent has engaged in typosquatting, providing further justification that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Respondent also argues that the terms of all of the disputed domain names are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
However, the Panel finds that Respondent’s use of the domain name to redirect customers to parked websites offering links to various third-parties, some of which compete with Complainant, and which activity generates revenue for Respondent, does not constitute a bona fide offering of goods and/or services nor is to be considered a noncommercial or fair use of the domain name. Further, Complainant enjoys first-in-time registration rights to the mark.
Registration and Use in Bad Faith
Complainant asserts that Respondent’s disputed domain names disrupt its business. Complainant states that some of the links offered from the resolving websites divert Internet users to its competitors in the payment systems industry.
The Panel has visited the resolving web site and has observed that some of the links do indeed divert internet users to competitor web sites in the payment systems industry.
Respondent argues that it had no malicious intent when it registered the <squareup.co> domain name. Respondent avers that its website is aesthetically and functionally different from that of Complainant’s. Respondent affirms that it provides online advertising services from its website whereas Complainant provides different services, which limits confusion. Respondent declares that this use is not and was not intended to infringe on any third-party business interests. Respondent also asserts that its <squareup.co> domain name will not cause confusion among Internet users.
Previous panels have determined that offering links to a Complainant’s competitors indicates bad faith registration where respondent, as in the present case, intended to prevent the complainant from reflecting its mark in a corresponding domain name so as to disrupt the complainant’s business, or to intentionally attract the complainant’s customers to the respondent’s site by creating a likelihood of confusion. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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). As stated previously, the Panel did visit Respondent’s web site and did observe that Respondent’s site contained links to third parties which competed with the Complainant.
The Panel finds that Respondent’s disputed domain names do disrupt Complainant’s business and accordingly concludes that Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant says that Respondent has registered and is using the disputed domain names for its own commercial gain. Complainant states that by offering links to third parties, both competing and unrelated, Respondent has created a diversionary system whereby it collects a click-through fee for each Internet user diverted the to the linked sites.
The Panel agrees and concludes from this use that Respondent has registered and is using the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent contends that its domain name registration predates Complainant’s trademark registration or common law rights. Respondent claims that it has used the <squareup.co> domain name for two and a half years, a period longer than Complainant’s business has existed.
The Panel notes that Complainant’s filing date for the SQUARE mark with the USPTO is August 5, 2009 and the registration date for the earliest disputed domain name is October 18, 2009. The Panel further notes that Respondent has not provided any evidence of use prior to the registration date of the disputed domain names. The Panel believes that mere assertions of prior use of the domain name for two and one-half years without evidence is not sufficient to establish said prior use.
Complainant further alleges that Respondent’s registration and use was opportunistic based on the registration’s timing. Complainant states that the first domain name registered in this dispute was registered one day after a large-scale press release leaked on October 17, 2009 about the nature and name of Complainant’s business.
Complainant argues further that Respondent has been subject to prior UDRP proceedings. See ZocDoc, Inc. v. Qian Jin, DCO2011-0029 (WIPO June 20, 2011).
Previous panels have held that a party to a current dispute may have prior disputes counted against them when determining whether bad faith registration and use has occurred. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant also argues that Respondent’s registration of multiple domain names in one instance is further evidence of bad faith.
The Panel concludes that Respondent’s past experiences with UDRP proceedings taken in the present context, together with the vast amount of domain names registered by Respondent and involved in this current proceeding support a finding of bad faith under Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).
The Panel also finds, based on the evidence in the record, that Respondent has opportunistically registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”).
Complainant also claims that Respondent has engaged in typosquatting, which further indicates bad faith registration and use.
The Panel has previously noted that Complainant’s claims regarding typosquatting are limited to the comparison of the disputed domain names to Complainant’s SQUARE UP mark, as the addition of the term “up” to the domain names removes them from a typosquatting analysis with regard to the SQUARE mark.
Complainant states that the disputed domain names are comprised of common typographic errors that Internet users may make when attempting to type its mark into their web-browser.
The registration of so many names on or about the same dates and in particular where all but one of the domain names are inactive does indicate that Respondent is engaged in typosquatting.
The Panel finds that Respondent is engaged in typosquatting and accordingly determines that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Prior panels have held that a respondent was commonly known by a disputed domain name because the respondent presented evidence that its customers associated the disputed domain name with the respondent’s business. See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”); see also Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).
However, in the matter before this Panel, the Respondent has not presented any evidence that it is known by the disputed domain name and accordingly the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent contends that all of the disputed domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s SQUARE and SQUARE UP marks. Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith.
The Panel holds that Respondent is not free to register the domain name currently in dispute because 1) Complainant’s rights in the mark predate any interest that Respondent may have in the domain name; 2) Respondent is not commonly known by the disputed domain name; 3) Respondent registered the disputed domain name in bad faith. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis.").
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 <sqwareup.com>, <squareup.co>, <squraeup.com>, <suqareup.com>, <squiareup.com>, <sdquareup.com>, <saquareup.com>, <squyareup.com>, <squareuop.com>, <squaereup.com>, <squasreup.com>, <squareuip.com>, <squareyup.com>, <squareap.com>, <sqwuareup.com>, <squatreup.com>, <swquareup.com>, <squareupo.com>, <dsquareup.com>, <asquareup.com>, <sqyuareup.com>, <sqiuareup.com>, <squarweup.com>, <squareuyp.com>, <sauareup.com>, and <wquareup.com>
domain names be TRANSFERRED from Respondent to Claimant
Calvin A. Hamilton, Panelist
Dated: May 11, 2012
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