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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compass Bancshares, Inc., Compass Bank v. toptarget.com BV
Case No. D2003-0387
1. The Parties
The Complainants are Compass Bancshares, Inc. and Compass Bank, Jerry W. Powell (contact name for both the Complainants), AL, United States of America, both represented by Welsh & Katz, Ltd, Richard J. Gurak, Esq. or Joseph R. Markus, Esq. (contact persons), Chicago, Illinois, United States of America.
The Respondent is toptarget.com BV, Andreas Meier, Amsterdam, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <compasweb.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2003. On May 22, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 29, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2003.
The Center appointed Dimitris Oekonomidis as the sole panelist in this matter on July 2, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainants provide banking services and provide these services online via the Internet at the website located at "www.compassweb.com". (Annex 3: printouts of the Complainants’ website homepage). According to the information given in this website, Compass Bank is the lead bank subsidiary of Compass Bancshares, Inc. a financial holding company with $24.3 Billion in assets and 357 full-service banking offices in numerous states. Compass Bancshares is among the top 40 U.S. bank holding companies by asset size and banks among the top earners of its size based on return on equity.
Compass Bancshares has received a U.S. Trademark Registration No. 2,148,725 for the COMPASSWEB trademark which is in full force and effect and is owned by Compass Bancshares, Inc. (Annex 4: copy of the U.S. Trademark Registration, no. 2,148,725, for compassweb). The mark COMPASSWEB was first used by the Complainants in August 1995, and the Registration issued on April 7, 1998. Further, Compass Bancshares has filed applications and/or received registrations for 41 other federal trademarks which contain the word "COMPASS" in the mark. (Annex 5: SAEGIS registration information for Complainants’ registered and pending applications for their trademarks including the term "COMPASS").
Compass Bank registered on August 12, 1995, and actively uses the domain name <compassweb.com> that incorporates the COMPASSWEB trademark in the domain name. (Annex 6: printouts of the Network Solutions WHOIS database information for compass.com domain name). The Complainants actively use this domain name to operate a website that provides information about the company and its services and allows its customers to access its services via the Internet with a password protected log-in. (Annex 3).
On September 14, 2002, the Respondent registered the <compasweb.com> domain name with the domain name registrar eNom, Inc. with its website located at "www.enom.com". (Annex 1: printouts of enom.com whois database information for <compasweb.com> domain name). The Respondent created a pornographic website for use in connection with the domain name <compasweb.com>. (Annex 7: copy of the homepage of this website and related pornographic web pages attached to the Declaration of Steven M. Buss, an individual employed by Welsh & Katz, Ltd. as a Network Administrator).
The Respondent’s pornographic website includes a hyperlink to another page containing yet additional pornographic content and multiple hyperlinks all redirected to yet additional pornographic material (Annex 7).
5. Parties’ Contentions
The Complainants contend that the domain name in dispute registered by the Respondent is confusingly similar and virtually identical to the Complainants’ trademark compassweb and domain name <compassweb.com> in appearance, sound and meaning. The only distinction between the Complainants’ registered trademark (and domain name) and the Respondent’s domain name is a misspelling in that one letter "s" is missing where the words "compass" and "web" merge. According to the Complainants, given the striking similarities between the Respondent’s domain name and their longtime registered trademark and domain name, Internet users may inadvertently through a misspelling, a simple slip of the hand or a simple failure to type the letter "s" twice reach the Respondent’s recently registered site thinking it is somehow related to, affiliated with or endorsed by the Complainants.
The Complainants further assert that the deletion of one letter "s" in the domain name is not sufficient to avoid confusion and such "typo-squatting" or "typo-piracy" has been expressly found to result in confusion in a large number of earlier WIPO decisions where one letter has been added or deleted from a trademark and registered as a domain name. (Annex 8: copies of the following WIPO decisions: Ultimate Electronics, Inc. v. Phayze, Inc., WIPO Case No. D2002-0851; Yahoo! Inc. v. Internet Entertainment Group, WIPO Case No. D2000-1595; Linens ‘n Things, Inc., Bloomington, MN and L.T., Inc. v. P4, WIPO Case No. D2002-0668; Netscape Communications Corp. v. Baltic Consultants Limited, WIPO Case No. D2001-0519; Nintendo of America Inc. v. Baltic Consultants Limited, WIPO Case No. D2002-0449).
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the domain name at issue. The Complainants have not authorized the Respondent to use their COMPASSWEB or COMPASS trademarks or to register the domain name at issue and the Respondent has no independent rights in the trademarks or the domain name. Accordingly, Respondent’s unauthorized intentional diversion of Internet traffic away from the Complainants’ official website, "www.compassweb.com", cannot be considered legitimate.
The Complainants maintain that, upon information and belief, the Respondent does not own any registered or common law marks containing the term "compassweb" or "compass" nor has the Respondent made any use of, or entered into any preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent’s use of the domain name <compasweb.com> in connection with pornographic images, pornographic text and pornographic hyper-links tarnishes and dilutes the Complainants’ trademarks by suggesting to users that they are in some way affiliated with the domain name at issue and pornographic content located at the various websites and pop-up advertisements.
Further the Complainants assert that using a domain name that has no logical relation to the Respondent’s pornographic content websites and pop-up pornographic advertisements while tarnishing and diluting a trademark, is conduct "that does not demonstrate a bona fide offering of goods or services or a legitimate interest in the domain name." (Ultimate Electronics, Inc. v. Phayze, Inc., WIPO Case No. D2002-0851). Besides, as the Complainants mention, neither the Respondent nor any individual at the Respondent has been commonly known by the domain name at issue.
The Complainants contend that, upon information and belief, the Respondent is not making any legitimate non-commercial or fair use of the contested domain name but instead is using the domain name to divert traffic from the Complainants’ official website for commercial gain. The domain name at issue links to a pornographic site and that site links users to other pornographic sites and automatically generates pornographic pop-up ads. (Annex 7). It is likely that the Respondent receives some kind of revenue from these activities. Numerous other WIPO panels in the past have held that use of domain names to offer websites containing pornographic materials is not a legitimate non-commercial use or fair use of a disputed domain name. (Annex 8: Ultimate Electronics, Inc. v. Phayze, Inc. WIPO Case No. D2002-0851; Nintendo of America, Inc. v. Baltic Consultants Limited, WIPO Case No. D2002-0449).
The Respondent’s lack of a legitimate interest in the domain name at issue is also evident in the fact that the Respondent registered the domain name many years after the Complainants had: (i) registered the trademark COMPASSWEB, (ii) filed or registered other trademarks containing the term "compass", (iii) registered the domain name compassweb.com and (iv) established their website.
The Complainants contend that the Respondent registered the domain name in dispute in bad faith and is using the domain name in bad faith to intentionally attract, for commercial gain, internet users to its pornographic website and other pornographic on-line locations, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s website and/or location of a product or service on the Respondent’s website. The Respondent has engaged in the bad faith registration practice commonly known as "typo-squatting" by registering a domain name that is completely unrelated to its pornography business or field of commerce and by registering a domain name that differs, only in a minor way, from a well known trademark and domain name for the purpose of capitalizing on internet users unintentional common typing errors. (Annex 8).
The Complainants assert that, as further proof of bad faith registration and the intent to capitalize from their trademark, the Respondent registered a domain name consisting of or containing the terms "COMPAS" and "COMPASWEB" which do not even exist in the English or Dutch (native language of The Netherlands where the Respondent is located) dictionary. (Annex 9: web pages showing search results from "www.freedict.com" online dictionary for the terms "COMPAS" and "COMPASWEB": "No match found". When the term "COMPAS" was entered into the "English to Dutch" dictionary the online program corrected the misspelling of the term "COMPAS" to "COMPASS" and identified that the Dutch equivalent for the English language word "COMPASS" is spelled "KOMPAS" with a "k" in the Dutch language). The Complainants maintain that this is yet further evidence that the Respondent has registered the misspelled trademark of the Complainants to take advantage of users’ misspellings of compassweb.com.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances which indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
A. Identical or Confusingly Similar (Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The domain name at issue, confusingly similar to the trademark COMPASSWEB, in which the Complainants have rights. The difference that in the domain name at issue one letter "s" is missing, where the words "compass" and "web" merge, is a typical situation of "typo-squatting". This difference in spelling does not remove the confusing similarity.
The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(i).
B. Rights or Legitimate Interests (Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
Since the adoption and extensive use by the Complainants of the trademark COMPASSWEB (and of the domain name <compassweb.com>) predates the first entry of <compasweb.com> as domain name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests the Respondent may have or have had in the domain name.
A Respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an Administrative Panel accepting as true the assertions of a Complainant which are not unreasonable and leaves the Respondent open to the legitimate inferences which flow from the information provided by a Complainant.
In this case, the Respondent neither has been authorized by the Complainants nor has independent rights to use the COMPASSWEB or COMPASS trademarks or to register the domain name at issue. The Respondent does not own any registered or common law marks containing the term "compassweb" or "compass" nor has the Respondent made any use of, or entered into any preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by the subject domain name either as an individual or a business. The Respondent is not making any legitimate non-commercial or fair use of the contested domain name. The objective of the registration appears to have been to divert persons looking for the Complainant’s web site for his own commercial gain.
The Respondent’s use of the domain name <compasweb.com> is not only misleading to consumers but it also harms the Complainants’ trademarks and business by suggesting to users that the Complainants are in some way affiliated with the domain name at issue and pornographic content located at various websites and pop-up advertisements.
The Respondent’s lack of a legitimate interest in the domain name at issue is also evident in the fact that the Respondent registered the domain name after the Complainants had registered the trademark COMPASSWEB and the domain name <compassweb.com> and established their website.
All the above support a clear inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has done nothing to rebut that inference.
The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
To support bad faith, the Complainants rely on essentially the same facts upon which they rely to establish the other ingredients of their case.
A finding that a respondent does not have a legitimate interests in a domain name which is confusingly similar to the mark of a complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.
The context of the registration and use of the subject domain name by the Respondent, taking into consideration the fame of the Complainants’ mark, the business activities the Complainants have carried on, are facts which constitute evidence from which an inference of bad faith may be made. The Respondent has done nothing to displace the inference.
The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainants have established their case.
The Complainants ask that the contested domain name <compasweb.com> be transferred to them. The Administrative Panel so orders.
Dated: July 9, 2003