Twitter, Inc. v. Jae Gong
Claim Number: FA1507001630753
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Jae Gong (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tiwtter.com>, registered with GoDaddy.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2015; the Forum received payment on July 27, 2015.
On July 28, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tiwtter.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 July 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2015 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@tiwtter.com. Also on July 29, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant, Twitter, Inc., owns and operates Twitter, the public communciation platform. Complainant has rights in the TWITTER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,619,911, registered on May 12, 2009, filed on April 26, 2007). In addition, Complainant has common law rights in the TWITTER mark dating back to its first use in commerce on August 31, 2006. Respondent’s <tiwtter.com> domain name is confusingly similar to the TWITTER mark because it is identical to the mark except for the transposition of the letters “i” and “w,” and the addition of the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent, Jae Gong, is not commonly known by the <tiwtter.com> domain name because the available WHOIS information lists “Jae Gong” as Registrant and because Respondent is not authorized by Complainant to use the TWITTER mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website alternatively attempts to deliver malware to Internet users, redirects to survey websites, or host pay-per-click links.
Policy ¶ 4(a)(iii)
Respondent uses the <tiwtter.com> domain name in bad faith because the resolving webpage alternates between attempting to deliver malware, redirecting to survey websites, and hosting pay-per-click links. Respondent registered the disputed domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the TWITTER mark, and because it did so in a manner constituting opportunistic bad faith. Additionally, Respondent’s registration of the <tiwtter.com> domain name constitutes typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and operates Twitter, the public communciation platform.
Complainant has rights in the TWITTER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,619,911, registered on May 12, 2009, filed on April 26, 2007). In addition, Complainant has shown common law rights in the TWITTER mark prior to Respondent’s registration of the <tiwtter.com> domain name.
Respondent registered the <tiwtter.com> domain name on March 11, 2007. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website alternatively attempts to deliver malware to Internet users, redirects to survey websites, or host pay-per-click links.
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.
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.”).
Complainant has rights in the TWITTER mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 3,619,911, registered on May 12, 2009, filed on April 26, 2007). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s registration date of the <tiwtter.com> domain name predate both the registration date and filing date of Complainant’s rights in the TWITTER mark with the USPTO. However, Policy ¶ 4(a)(i) does not require registration with a trademark authority, if a Complainant can demonstrate having common law rights. See 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 alleges that it has rights in the TWITTER mark dating back to its first use in commerce on August 31, 2006. In order to have common law rights, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning can include media recognition and sales and use figures. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant has shown secondary meaning prior to Respondent’s registration of the <tiwtter.com> domain name through media recognition and through use and sales figures. Therefore, Complainant has common law rights in the TWITTER mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <tiwtter.com> is confusingly similar to the TWITTER mark under Policy ¶ 4(a)(i), because it is identical to the mark except for the transposition of the letters “i” and “w,” and the addition of the gTLD “.com.”
Respondent is not commonly known by the <tiwtter.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information lists “Jae Gong” as Registrant. Respondent is not authorized by Complainant to use the TWITTER mark. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent fails to use the <tiwtter.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to alternatively attempt to deliver malware to Internet users, redirect to survey websites, or host pay-per-click links. See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). The Panel finds that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Respondent uses the <tiwtter.com> domain name in bad faith and for the purpose of commercial gain because the resolving webpage alternates between attempting to deliver malware, redirecting to survey websites, and hosting pay-per-click links. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that, where a disputed domain name offers incentives for the completion of surveys, “Internet users are likely to believe that such activities are sponsored by or affiliated with Complainant and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”); see also Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). The Panel finds that Respondent registered and uses the <tiwtter.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent registered the <tiwtter.com> domain name with actual knowledge of Complainant’s rights in the TWITTER mark. Complainant’s TWITTER mark is so famous that the very use of the <tiwtter.com> domain name proves that Respondent registered the domain name with actual knowledge of Complainant’s rights. When respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Also, the <tiwtter.com> domain name was registered in bad faith because it was registered in a manner constituting opportunistic bad faith. Complainant received media recognition of Complainant’s having won the “SXSW Web Award” on March 11, 2007. And, Respondent registered the <tiwtter.com> domain name on March 11, 2007. Past panels have found opportunistic bad faith in similar instances of media recognition that were similarly related temporally to registration of domain names. See Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”); see also 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.”). Therefore, the Panel finds that the <tiwtter.com> domain name was registered in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent registered the disputed domain name in bad faith because it has engaged in typosquatting. Respondent’s <tiwtter.com> domain name takes advantage of a common typographical error in the TWITTER mark. Typosquatting is evidence of 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tiwtter.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 4, 2015
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