The United Methodist Publishing House v. Nevis Domains LLC.
Claim Number: FA0607000758971
Complainant is The United Methodist Publishing House (“Complainant”), represented by Ruth Mae Finch, of Stevens Davis Miller Mosher L.L.P., 1615 L Street NW, Suite 850, Washington, DC 20036. Respondent is Nevis Domains LLC. (“Respondent”), 222-3 Main Street, Charlestown, Nevis, II 0000 KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cokebury.com>, registered with Moniker Online Services, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2006.
On August 4, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <cokebury.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 30, 2006 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@cokebury.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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." 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 <cokebury.com> domain name is confusingly similar to Complainant’s COKESBURY mark.
2. Respondent does not have any rights or legitimate interests in the <cokebury.com> domain name.
3. Respondent registered and used the <cokebury.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The United Methodist Publishing House, is the publishing arm of the United Methodist Church. Complainant utilizes the COKESBURY mark in connection with the retail division of Complainant’s business, which comprises numerous goods and services, including books, magazines, periodicals, candles, ministerial robes, choir gowns, printing services and other religious supplies and services. In connection with its business Complainant holds fourteen registrations of the COKESBURY mark with the Untied States Patent and Trademark Office (“USPTO”) (eg. Reg. No. 645,771 issued May 12, 1955; Reg. No. 768,771 issued April 28, 1964; Reg. No. 770,411 issued May 26, 1964). Complainant has registered the <cokesbury.com> domain name which it uses to run its website in order to offer its goods and services to online customers. Complainant has also registered twenty-three other domain names incorporating the COKESBURY mark.
Respondent registered the <cokebury.com> domain name on November 9, 2005. Respondent is using the disputed domain name in order to redirect Internet users to Respondent’s website which is composed primarily of links to third-party websites, many of which are commercial websites in competition with Complainant. Respondent’s website also includes a generic Internet search engine.
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’s registrations of the COKESBURY mark with the
USPTO predate Respondent’s registration of the disputed domain name by many
years. The Panel finds that
Complainant’s USPTO registrations of the COKESBURY mark establish Complainant’s
rights in the mark as required by Policy ¶ 4(a)(i). See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <cokebury.com>
domain name is confusingly similar to Complainant’s COKESBURY mark. The disputed domain name is a common
misspelling of Complainant’s mark, deleting the letter “s” from Complainant’s
mark and adding the generic top-level domain “.com.” The panel in Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000), held that a domain name misspelling the
complainant’s mark was not distinct and was confusingly similar to the
complainant’s mark. In Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panel found that the
addition of a generic top-level domain, such as “.com” or “.net” did not affect
the domain name for the purpose of determining whether it is identical or
confusingly similar. Furthermore, by creating a domain name by deleting a letter
from Complainant’s mark, Respondent is engaging in a practice known as
“typosquatting.” Typosquatting occurs
when a domain name is registered that includes the introduction of some sort of
intentional error into another’s famous mark.
Typosquatting does not create distinct domain names. In Guinness UDV N. Am., Inc. v. Dallas
Internet Servs., D2001-1055 (WIPO Dec. 12, 2001), the panel found that the
respondent’s <smirnof.com> domain name was confusingly similar to the
complainant’s SMIRNOFF mark because merely removing the letter “f” from the
mark was insignificant. Similarly, in Neiman
Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July
23, 2002), the panel determined that the respondent’s <neimanmacus.com> domain name was an example of typosquatting and was
confusingly similar to the complainant’s NEIMAN MARCUS mark because it was a common misspelling of the
complainant’s mark. Thus, the Panel
finds that the <cokebury.com> domain name is confusingly similar
to Complainant’s COKESBURY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or
legitimate interests in the <cokebury.com>. According to the panel in G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), “because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).” The Panel finds
that Respondent’s failure to avail itself of the opportunity to submit a
Response suggests the Respondent lacks rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). As the panel in Bank of Am. Corp. v.
McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002), stated, “Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.” In light of Respondent’s failure
to respond, the Panel will evaluate the available evidence to determine whether
Respondent has rights or legitimate interests in the disputed domain name as
contemplated by Policy ¶ 4(c).
Respondent is using the <cokebury.com> domain name to redirect Internet users to Respondent’s website which consists of links to third-party websites, many to commercial websites in competition with Complainant, and a generic Internet search engine. Respondent presumably receives pay-per-click referral fees when Internet users click on the links or use the Internet search engine at Respondent’s website. The panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), found that, “Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Similarly, in TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel stated that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services. Thus, because Respondent is using the disputed domain name to attract Internet users to its website filled with links to third-party websites, the Panel finds that Respondent’s use is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).
Furthermore, the <cokebury.com> domain name is an example of typosquatting, which is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. The panel in Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), stated that, “typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.” Similarly, in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), the panel found 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’.” Thus, the Panel finds that Respondent’s typosquatting is evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Finally, there is no evidence that Respondent is commonly known by the <cokebury.com> domain name. The panel in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), took into account the Respondent’s WHOIS information in determining that the respondent was not commonly known by the disputed domain name as contemplated by Policy ¶ 4(c)(ii). In this case, Respondent’s WHOIS information identifies Respondent as “Nevis Domains LLC,” a name unrelated to the disputed domain name. Complainant asserts that Respondent is not affiliated with Complainant and does not have permission from Complainant to reflect its mark in a domain name. The panel in Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), declined to find rights or legitimate interests where the respondent never applied for a license or permission from the complainant to use the trademarked name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name and lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <cokebury.com> domain name is confusingly similar to Complainant’s COKESBURY mark. Internet users seeking Complainant’s genuine website at <cokesbury.com> may accidentally misspell Complainant’s mark when typing it into an Internet search engine or web browser and find themselves redirected to Respondent’s website. Because Respondent’s domain name is confusingly similar to Complainant’s mark, and because Respondent’s website includes links to third-party websites offering goods and services in competition with Complainant under headings that resemble the categories at Complainant’s genuine website, Internet users arriving at Respondent’s website may mistakenly believe that Respondent’s website is affiliated with Complainant. Respondent is presumably profiting from the confusion of Internet users by receiving pay-per-click referral fees from the links located on the webpage. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website including links to the complainant’s competitors and the respondent presumably received fees from the links. Similarly, in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found 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. Thus, the Panel finds that Respondent’s use of the <cokebury.com> domain name to attract Internet users to Respondent’s website, which presumably generates fees for Respondent from the posted links to third-party websites, is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Respondent is using the disputed domain name to redirect Internet users to its website which is populated with links to third-party websites, many of which are links to the commercial websites of Complainant’s competitors. If Internet users are redirected to Respondent’s website by accidentally mistyping Complainant’s mark, they may follow the available links to Complainant’s competitors and do business with those competitors instead of with Complainant, thus disrupting Complainant’s business. In S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), the panel found evidence of bad faith registration and use in the respondent’s use of the disputed domain name to attracting Internet users to a website that competes with the complainant’s business. The panel in Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), came to a similar conclusion, finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii). Thus, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel is not limited to the circumstances described in Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and use as contemplated by Policy ¶ 4(a)(iii). In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel found that, “[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” The panel in CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000), took a similar approach, holding that, “[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” Specifically, previous panels have held that the practice of typosquatting is in itself evidence of bad faith registration and use, as the panel in Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), stated, “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.” Typosquatting suggests that Respondent has actual or constructive knowledge of Complainant’s mark in order to create a misspelling of that mark. That Respondent’s website is populated with links to third-party websites in competition with Complainant strengthens the presumption that Respondent was aware of Complainant’s mark, since such knowledge would be needed in order to select topical links. In Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003), the panel found that, the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii). Thus, the Panel finds that Respondent’s typosquatting is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that 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 <cokebury.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 21, 2006
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