Register.com,
Inc. v. Mike Torres a/k/a Click 5 a/k/a Texas Internet a/k/a Sakamoto Ent.
Claim
Number: FA0302000145209
Complainant is
Register.com, Inc., New York, NY (“Complainant”). Respondent is
Mike Torres a/k/a Click 5 a/k/a Texas Internet a/k/a Sakamoto Ent., Los
Angeles, CA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <regiser.com> and <registr.com>,
registered with Tucows, Inc. and <registe.com>, registered
with Intercosmos Media Group, Inc. d/b/a directNIC.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr. as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 7, 2003; the Forum received a hard copy of the
Complaint on February 10, 2003.
On
February 7, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
names <regiser.com> and <registr.com> are registered
with Tucows, Inc. and that Respondent is the current registrant of the names.
Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc.
registration agreement and has thereby agreed to resolve domain-name diputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy). On February 10, 2003, Intercosmos Media Group,
Inc. d/b/a directNIC.com confirmed by e-mail to the Forum that the domain name <registe.com>
is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a directNIC.com has also verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a directNIC.com registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with the Policy.
On
February 11, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 3, 2003 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@regiser.com, postmaster@registr.com
and postmaster@registe.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 6, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <regiser.com>,
<registr.com> and <registe.com> domain names are
confusingly similar to Complainant’s REGISTER.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <regiser.com>, <registr.com> and
<registe.com> domain names.
3. Respondent registered and used the <regiser.com>,
<registr.com> and <registe.com> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for REGISTER (Reg. No. 2,664,968, registered December 24,
2002) and REGISTER.COM (Reg. No. 2,664,967, registered December 24, 2002)
related to computer and business services, namely hosting the websites of
others on a computer server for a global computer network and providing
information about website development, electronic mail and electronic commerce.
Complainant
operates a website at <register.com> in connection with the provision of
domain name registration services, online search engine services, website
hosting and development services, electronic mail services and other related
services.
Respondent
registered the <regiser.com> domain name on March 26, 2000, the
<registr.com> domain name on May 10, 2000 and the <registe.com>
domain name on February 5, 2000. Respondent used the <registr.com> domain
name to redirect Internet users to <directory.engine54.com>, which
displays advertisements and links to online gambling, travel and other
services. Since April 18, 2002, Respondent has been using the <regiser.com>
and <registe.com> domain names to redirect Internet traffic to
Complainant’s website. As an enrollee of Complainant’s affiliate program,
Respondent earns a commission of up to 50% for all customers redirected to
Complainant’s website who then register domain names on Complainant’s website.
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.
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
established rights in the REGISTER.COM mark through registration with the USPTO
and continuous use of the mark in commerce since 1994.
Respondent’s <regiser.com>,
<registr.com> and <registe.com> domain names are
confusingly similar to Complainant’s REGISTER.COM mark because each of the disputed
domain names differs from the mark by only one letter. The deletion of one
letter from Complainant’s mark capitalizes on common misspellings of the mark.
These deletions do not create distinct characteristics capable of overcoming a
Policy ¶ (4)(a)(i) confusingly similar challenge. See State Farm Mut. Auto. Ins. Co. v. Try
Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that
the domain name <statfarm.com> is confusingly similar to the
Complainant’s STATE FARM mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8,
2000) (finding that the domain names, <davemathewsband.com> and
<davemattewsband.com>, are common misspellings and therefore confusingly
similar).
Thus, the Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not submitted a Response in this proceeding. Therefore, the Panel may accept
all reasonable inferences and allegations included in the Complaint as true. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Furthermore, it
is presumed that Respondent lacks any rights or legitimate interests in the
disputed domain names because of Respondent’s failure to respond. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent
has no rights or legitimate interests in the domain name because the Respondent
never submitted a response nor provided the Panel with evidence to suggest
otherwise).
Respondent has
registered numerous domain names that incorporate common misspellings of
well-known marks. Moreover, Respondent is using the <registr.com> domain
name to divert Internet traffic to <directory.engine54.com>, a website
that features online gambling, travel and other services. The Panel may presume
that Respondent receives a fee for redirecting Internet users who click on the
provided links. It is not necessary for the Panel to presume that Respondent
receives a commission for redirecting Internet traffic to Complainant’s website
from the <regiser.com> and <registe.com> domain names
because Respondent is an enrollee of Complainant’s affiliate program. This use
of a confusingly similar domain name is not connected with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June
7, 2000) (finding that fair use does not apply where the domain names are
misspellings of Complainant's mark).
Respondent has
not come forward with any evidence to establish that it is commonly known as
REGISER, REGISTR, REGISTE, <regiser.com>, <registr.com> or
<registe.com>. Therefore, Respondent has failed to establish that it
has any rights or legitimate interests in the disputed domain names pursuant to
Policy ¶ 4(c)(ii). See Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known by the mark); see also
Charles Jourdan Holding AG v. AAIM, D2000-0403
(WIPO June 27, 2000) (finding no rights or legitimate interests where (1)
Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in
the domain name precede Respondent’s registration; (3) Respondent is not
commonly known by the domain name in question).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
engaged in a practice called “typosquatting.” This practice redirects Internet
users who misspell Complainant’s mark for Respondent’s commercial gain. Panels
have consistently held that “typosquatting” is a bad faith use of a domain name
pursuant to Policy ¶ 4(b)(iv). See, e.g., L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar.
12, 2001) (finding that Respondent acted in bad faith by establishing a pattern
of registering misspellings of famous trademarks and names); see also Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a
misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and
<davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to
Complainant).
Furthermore,
Respondent Mike Torres, through Global Media Consulting, Dallas Internet, Texas
Internet and other aliases, has established a pattern of registering domain
names that are common misspellings of marks. See Bally Total Fitness, Inc.
v. Torres a/k/a Dallas Internet Service, a/k/a Global Media Consulting ,
D2001-0546 (WIPO July 11, 2001) (finding that respondent has registered many other domain
names which are variations on well-known marks -- a pattern manifesting
classical cybersquatting). A pattern of registering domain names to prevent the
owner of the trademark or service mark from reflecting the mark in a
corresponding domain name is evidence of bad faith pursuant to Policy ¶
4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., 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
Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000)
(finding bad faith where the Respondent engaged in the practice of registering
domain names containing the trademarks of others).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <regiser.com>, <registr.com> and
<registe.com> domain names be TRANSFERRED from Respondent to
Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 11, 2003
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