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WIPO Arbitration and
Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan
Case No. D2004-0214
1. The Parties
The Complainant is Southern Communications Services, Inc. d/b/a Southern LINC, of Atlanta, Georgia, United States of America, represented by Troutman Sanders, LLP, United States of America.
The Respondent is Henry Chan, of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <southerlinc.com> is registered with iHoldings.com
Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2004. On March 19, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for Registrar verification in connection with the domain name at issue. On the same date, iHoldings.com Inc. d/b/a DotRegistrar.com 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 March 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 16, 2004.
The Center appointed Fernando Triana, Esq. as the sole panelist in this matter on April 26, 2004. 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.
Taking into account the language of the concerned Registrar's Registration
Agreement, and the particulars of this case, the Panel determines that the language
of this proceeding will be English.
4. Factual Background
The Complainant, Southern Communications Services, Inc., has been in the business of providing wireless communication products and services since at least 1996. Its business includes providing cell phones, two-way radios, related accessories and wireless communication service plans. These products and services have been identified, advertised and promoted under the SOUTHERN LINC mark.
The Complainant is the registered owner of the trademark and service mark SOUTHERN LINC, registered before the United States Patent and Trademark Office to cover products of International Class 9 and services of International Class 38. The mark SOUTHERN LINC was registered in 1997.
The Respondent, Mr. Henry Chan, registered the domain name <southerlinc.com> in February 13, 2003. The Respondent is the owner of over 1,100 domain names and has been involved in at least 17 UDRP cases under accusations of cybersquatting and typosquatting.
Respondent's web page, at "www.southerlinc.com", consists of a search
engine hosted by DomainSponsor.com. The page shows a list of top sites related
to telephones, including references to information of Complainant's competitors
such as Nextel.
5. Parties' Contentions
In the Complaint, the Complainant asserts that this is a case against the notorious cybersquatter and typosquatter Henry Chan, owner of over 1,100 domain names and Respondent in at least 17 separate UDRP proceedings previously held before the WIPO and the National Arbitration Forum. In all of those cases, the Panels found that Mr. Chan acted in bad faith and ordered the transfer of the disputed domain names to the Complainants. In the present case, Mr. Chan falls again in all three requirements of the Policy, and hence, the Complainant requests the transfer of the domain name <southerlinc.com>.
The Complainant states that it is a company involved in the business of providing wireless communication services in the southeastern United States of America, under the SOUTHERN LINC mark. The Complainant has spent millions of dollars advertising and promoting its mark in the United States of America. The Complainant maintains an Internet web site at "www.southernlinc.com".
According to the Complainant, it is the owner of the trademark and service mark SOUTHERN LINC, registered before the United States Patent and Trademark Office under Certificates Nº 2,126,100 and 2,036,477, for use in the provision of full-service digital wireless communications, namely, dispatch, telephone, paging and data; and for telecommunication equipment, namely, cellular telephones, two-way radios, pagers and wireless modems. Since the marks have been registered for more than five years, they have become incontestable. The Complainant contends that it also has common law trademark rights in the SOUTHERN LINC mark since at least 1995.
Due to the extensive and long-standing advertising, promotion and use of the SOUTHERN LINC mark, Complainant's mark has developed substantial goodwill and recognition. The trademark is well-known in the Southeastern United States of America.
The Respondent registered the domain name <southerlinc.com> on February 13, 2003. His citizenship and domicile are unknown. The Complainant attempted to contact the Respondent by sending him a cease and desist letter. The letter was undeliverable to the addresses provided by the Respondent in the contact information of his many domain name registrations, located in Hong Kong. A copy of the cease and desist letter was sent to the Respondent's address in Bahamas, and apparently, it was received. An electronic copy of the letter was sent to the Respondent's e-mail, but the message was undeliverable. The Complainant never received a response from the Respondent, regarding this letter, and no action was taken by the Respondent concerning the disputed domain name and its corresponding web page.
According to the search conducted by the Complainant, the Respondent is the registrant for over 1,100 domain names. A review of such domain names shows that the Respondent has consistently misappropriated the trademarks of numerous other companies, frequently by registering a slight misspelling of the trademarks. This ploy, known as typosquatting, attempts to divert traffic from the legitimate trademark owner's website, to the Respondent's website when Internet users mistype the legitimate domain name. The Complainant believes that the present case is one of typosquatting, due to the fact that the Respondent's domain name <southerlinc.com>, misspells the Complainant's mark and domain name by one letter, by dropping the "n" from "Southern". This situation is likely to cause confusion to the public. Respondent's website at "www.southerlinc.com" provides links to and information about Complainant's competitors. Respondent's website also generates pop-up, pop-under and exit pop-up advertisements. The site is apparently hosted by DomainSponsor.com, which under belief of the Complainant, pays the Respondent 50% of all revenues generated from searches and advertisements, by virtue of an agreement between them.
The Complainant explains that its complaint is based on the virtual identity between the domain name southerlinc.com and the Complainant's mark SOUTHERN LINC. The differences between both expressions are minimal. Likewise, the disputed domain name is almost identical to Complainant's domain name <southernlinc.com>. The southerlinc.com domain name has suggestions, connotations and commercial impressions that are identical and therefore confusingly similar to those of Complainant's mark.
The Complainant states that the Respondent is not affiliated with the Complainant or with its products or services, and lacks of rights or legitimate interests in the <southerlinc.com> domain name. The mark SOUTHERN LINC, wrongfully incorporated into the domain name at issue, is uniquely associated with the Complainant and its products and services. Additionally, Respondent is not known by the name "Southern Linc", nor does he operate a business commonly known as "Souther Linc". Respondent has not acquired trademark or service mark rights for the SOUTHERN LINC mark in the United States of America. Complainant believes that the Respondent has used the Internet site at "www.southerlinc.com" to attract Internet users seeking information regarding SOUTHERN LINC and its official website, therefore diverting customers from Complainant. Respondent is not making a legitimate noncommercial or fair use of the domain name, since it is used to present pop-up advertisements, information and hyperlinks to Complainant's competitors in the wireless communications industry. Complainant asserts that Respondent is not a licensee of Complainant, nor is the Respondent otherwise authorized by the Complainant to use its marks or to apply for or use any domain name incorporating the mark.
With regard to the bad faith requirement of the Policy, the Complainant states that the Respondent does not conduct any legitimate commercial or noncommercial business under the SOUTHERN LINC mark, and registered the southerlinc.com domain name to prevent Complainant from reflecting its mark in the corresponding domain name. Respondent registered and used the disputed domain name with full knowledge of the rights of Complainant over the SOUTHERN LINC mark. Further, Respondent's website provides links to and information regarding direct competitors of the Complainant. This evidences that the Respondent knew of the Complainant's rights to its mark and of the use of its mark in commerce. Complainant places emphasis in the fact that Respondent continued to use the <southerlinc.com> domain name and refused to assign the domain name to the Complainant, even after being given actual notice of Complainant's rights in the mark.
By registering the <southerlinc.com> domain name, the Respondent is diverting consumers away from Complainant's website and thereby, disrupting Complainant's business. Likewise, by using that domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant's mark and official website, as to the source, sponsorship, affiliation or endorsement of Respondent's website, and of the products and services advertised on the website. Respondent has been unjustly enriched thanks to the pop-up, pop-under and exit pop-up advertisements showed when visiting his website, and thanks to the misappropriation of Complainant's good will.
According to the Complainant, Respondent's bad faith is further shown by the fact that he has registered or acquired multiple domain names, which are identical or confusingly similar to the marks of others, or dilutive of famous marks of others.
Finally, Respondent has provided false contact information when applying for the registration of the <southerlinc.com> domain name and his other domain names. Respondent has failed to maintain accurate contact information, in violation of his Registration Agreement with DotRegistrar.com.
The Complainant asserts that Respondent's use of the domain name at issue is an infringement of the Complainant's SOUTHERN LINC mark under the Lanham Act, and is also diluting and weakening the distinctive significance of Complainant's mark. Respondent's conduct has caused serious and irreparable injury and damage to Complainant and to the goodwill associated with Complainant and its mark. The Respondent is also violating United States Federal Law relating to cyberpiracy, trademark infringement, trademark dilution and unfair competition.
Based on the foregoing, the Complainant requests the transfer of the domain name <southerlinc.com> from Respondent to Complainant, as well as such other and further relief the Panel deems appropriate.
The Respondent did not reply to the Complainant's contentions and was declared
6. Discussion and Findings
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."
Likewise, paragraph 10 (d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that: "[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence."
The Panel wishes to clarify that the statements that have been accompanied by evidence have been given more importance than the mere statements made without further demonstration of their existence.
On the other hand, the Panel will take into account the Respondent's default in filing a response within this administrative proceeding, in accordance with paragraph 14 of the Rules, as follows:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
"(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate." (Emphasis added)
As a consequence, the Panel will consider Respondent's default as a presumption against Respondent, and will accept as sufficient evidence, all the evidence filed by the Complainant to support its arguments, since they have not been contested by the Respondent.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
A. Identical or Confusingly Similar
Complainant has filed evidence of its United States of America's service mark registration for SOUTHERN LINC as a word mark, to identify: "full-service digital wireless communications, namely, dispatch, telephone, paging and data", services of International Class 38. This service mark is registered under Certificate Nº 2,036,477 of February 11, 1997, and according to such document, the first use of the SOUTHERN LINC mark was made on September 1, 1995.
Likewise, Complainant demonstrated that its mark SOUTHERN LINC is registered as a trademark before the United States Patent and Trademark Office, to cover: "telecommunication equipment, namely, cellular telephones, two way radios, pagers, and wireless modems", goods included in International Class 9. The trademark is registered under Certificate Nº 2,126,100 dated December 30, 1997. Its first use in commerce was made on January 1st, 1997.
The Respondent did not contest the existence of these trademark and service mark registrations.
The domain name <southerlinc.com> was registered by the Respondent on February 13, 2003, well after the Complainant began using its trademark SOUTHERN LINC in commerce and registered it before the United States Patent and Trademark Office.
The Panel notes that the Respondent's domain name <southerlinc.com> comprises the Complainant's mark SOUTHERN LINC, although deleting the letter "N" from the word SOUTHERN. Such addition is not enough to serve as a differentiator between both signs, as it is a mere misspelling of the Complainant's mark. In fact, when comparing the disputed domain name and the Complainant's mark, it can be clearly concluded that they are confusingly similar both visually and phonetically. The deletion of the letter "N" does not preclude a finding of confusingly similarity, and Internet users are very likely to misspell the Complainant's mark and be directed to the Respondent's website.
The practice of registering misspelled versions of registered marks owned by others, is commonly known as typosquatting. This has been studied by several previous Administrative Panels, as in the case of Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo1, where the Panel concluded the following:
"The domain name <yurticicargo.com> differs from the Complainant's trademark "YURTICI KARGO" only with respect to the way the word cargo is spelt. The disputed domain name uses the letter "C" in place of the letter "K", in the trademark. The trademark comprises of an invented word `Kargo' combined with the name Yurtici.
"It has become common practice for potential infringers to register domain names with minor spelling variations, a phenomenon which is now commonly referred to as "typosquatting". (...)
It is now fairly well established that domain names have been held to be
confusingly similar to trademarks, when some letters have been interchanged
or replaced with a phonetically similar letter in order to create confusion
in the minds of users, see WIPO Case No.
D2000-0323. Other cases of typosquatting are Playboy Enterprises v.
Movie Name Company, WIPO Case No. D2001-1201,
Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc.,
StonybrookInvestments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo
Search, Inc., WIPO Case No. D2000-0587,
Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO
Case No. D2003-0317."
Likewise, the Administrative Panel in the case of Playboy Enterprises v. Movie Name Company2 arrived to an identical conclusion, by asserting that: "It is also well-established that domain names which are misspellings of a trade or service mark may qualify as confusingly similar."
Furthermore, the Panel notes that the ".com" suffix is not an element to be considered when analyzing the identity or similarity between the Complainant's trademark and the conflicting domain name (See Wal-Mart Stpres, Inc. v. Walsucks and Walmarket Puerto Rico3, stating that: "[t]he addition of the generic top-level domain (gTLD) name ".com" is without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services".)
Considering the Complainant's registered trademark and service mark SOUTHERN LINC, and the relevant part of the Respondent's domain name <southerlinc.com>, the Panel concludes that they are confusingly similar and therefore, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy, determines that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall demonstrate the Respondent's rights or legitimate interests to the domain name:
(i) Before any notice to Respondent of the dispute, it has used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant contends that the Respondent lacks of rights and legitimate interests over the domain name <southerlinc.com>, due to the fact that the Respondent is a famous cybersquatter and typosquatter, who is using the domain name for commercial gain in bad faith.
As evidenced within this proceeding, the conflicting domain name <southerlinc.com> leads to a web page that consists of a search engine, with information and links related to the telephone industry. When visiting the Respondent's website, the visitor is presented with pop-ups, exit pop-ups and pop-unders with advertisements, including information of Complainant's competitors such as Nextel. Such advertising activity is apparently provided by a company named DomainSponsor, which includes unwanted advertising in affiliated websites, paying a revenue to the domain name owner. This information was not contested by the Respondent and is accepted by the Panel as evidence of the commercial nature of the Respondent's website.
The use of pop-ups and other kinds of advertising has been considered by previous Panels as evidence of a commercial activity developed through the domain name, that can not be used to demonstrate rights and legitimate interests. In a similar case, held between Hewlett-Packard Company and World Wide Web Home Player4, the Administrative Panel concluded that the use of a domain name for advertisement is not a legitimate use in connection with a bona fide offering of goods or services. The decision sets forth the following:
"Respondent used the domain name to create the website, which is linked
to a site that advertises gambling and a site that offers search engine services.
Therefore, Respondent's use of the domain name is neither a legitimate use
in connection with 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204
(WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous
MSNBC mark where Respondent attempted to profit using the Complainant's mark
by redirecting Internet traffic to its own website); Computer Doctor Franchise
Systems, Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000)
(finding that the Respondent's website, which is blank but for links to other
websites, is not a legitimate use of the domain names)."
According to the evidence filed by the Complainant, the Respondent registered the domain name <southerlinc.com> solely for the purpose of misappropriating the goodwill of the Complainant's mark. Respondent deliberately decided to register and use the conflicting domain name in connection with an offering of goods and services that can not be considered as a bona fide use. Moreover, Respondent decided to include the Complainant's mark in its domain name, slightly misspelled, to create confusion among the Complainant's clients, who seek for the Complainant's website in the top level domain.
The Respondent does not clarify to the visitors of his web page that it is not related to the Complainant or its products and services. To the contrary, the Respondent includes information in his website regarding the telecommunications business, which is precisely the business undertaken by the Complainant. The Respondent provides links and information of Complainant's competitors, as evidenced by the Panel when visiting the Respondent's site on May 4, 2004. The web page shows links under names such as "Phones", "Nextel", "Ringtones", "Text Message", "Cellular Phones", "Cellular Family Plans", "Intelenet Wireless Free Cell Phones" and "Refurbished Business Phones". Some of these links lead to information of companies that participate in the same business of the Complainant, like Nextel, AT&T, Verizon, Nortel, etc. Therefore, Respondent is facilitating and promoting the confusion among the users of the Internet.
The Respondent lacks any trademark or service mark registration that entitles him to use the expression <southerlinc.com> or any other similar expression. Furthermore, the Respondent has not been authorized by the Complainant to use its mark, or any confusingly similar expression, and incorporate it in a domain name. After being given notice of the Complainant's rights to the SOUTHERN LINC mark, the Respondent failed to comply with the Complainant's requests and continued using the domain name at issue.
The activity developed by the Respondent through the domain name is a commercial activity, as explained above, and hence, it could not be accepted that the Respondent is carrying out a non-commercial or fair use of the domain name.
On the other hand, the Respondent is not known by the domain name and does not undertake a business identified with such name. The particulars of this case, and of the Respondent, lead the Panel to conclude that Mr. Chan is involved in the business of registering domain names in bulk for commercial use, and due to the numerous domain name registrations owned by him, it is not likely that he is known by the public by such domain names.
These considerations lead the Panel to conclude that the Respondent does not have rights and/or legitimate interests in the domain name that is subject to this proceeding, and that the Complainant succeeded in proving its point.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that 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 that Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances indicating that Respondent has registered 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 Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances indicated that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Circumstances indicating that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.
As stated before, the Respondent failed to submit a Response in this proceeding. Therefore, the Panel may accept all reasonable allegations included in the Complaint as true, in accordance with paragraph 14 of the Rules (See Ross-Simons, Inc. v. Henry Chan5).
According to the Complainant, the Respondent registered and uses the domain name <southerlinc.com> to divert the Complainant's clients and attract them, for commercial gain, to the Respondent's website, by creating a likelihood of confusion with the Complainant and its products and services. The Panel evidenced, when visiting the Respondent's website on May 4, 2004, that the Respondent offers information of the same business in which the Complainant is involved, i.e., the telecommunications business. The Respondent does not clarify to the visitors that the site is not affiliated or sponsored by the Complainant, and takes advantage of the misspelling of the Complainant's mark, to attract Internet users to its website and show unwanted advertising material for commercial gain, apparently under sponsorship of DomainSponsor.com.
In a similar dispute, held between Nintendo of America Inc. and Berric Lipson6 the Panel concluded the following with regard to bad faith when the Respondent uses the infringing domain name for advertising:
"The Panel has found two strong indications of Respondent's bad faith in registering the disputed domain name <pokemon-center.com>. Respondent was running banner advertising on the website using the disputed domain name. Hence, Respondent was taking advantage of the confusing similarity of his domain name to Complainant's famous trademark in order to make money, as proscribed by para 4 (b)(iv) of the Policy."
The Respondent incorporates the Complainant's uncontestable trademark and service mark in the disputed domain name, and intentionally drops the letter "N" from the SOUTHERN LINC mark, in a conduct known as typosquatting. It is the Panel's opinion that the Respondent registered the domain name southerlinc.com, with full previous knowledge of the Complainant's rights over the SOUTHERN LINC mark, and with the purpose of attracting Internet users looking for the Complainant's official website, to the Respondent's website, creating a likelihood of confusion with the Complainant and misappropriating the Complainant's prestige. Due to the nature of the Complainant's mark, it is not likely that the Respondent chose the particular domain name coincidentally without prior knowledge of the Complainant's rights over the mark. To the contrary, the Panel concludes that the Respondent registered and used the domain name being fully aware of the existence of the Complainant and its marks, and hence, the Respondent decided to use the domain name in connection with a website offering links and information regarding the telephone business, which is the same business of the Complainant. No other explanation can be found, considering that the Respondent registered the domain name in conflict many years after the Complainant began using it in commerce, and also many years after the Complainant registered its marks before the United States Patent and Trademark Office.
The Panel in the case of America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd.7, found out the following in similar circumstances:
"12. Respondent's bad faith is evidenced by the fact that it registered "americanonline.com" on August 21, 1997 and "americaonline.net" on June 11, 1998, long after Complainant's adoption and first use of the mark AMERICA ONLINE and long after the mark was registered in Turkey and the United States, and Respondent, thus, clearly had knowledge or reasonably should have had knowledge of Complainant's prior adoption, usage and registration of Complainant's well-known mark."
Same conclusion was reached by the Panel in the case of Marriot International, Inc. v. John Marriot, regarding the domain name <marriot.com>8:
"10. The evidence permits an inference that Respondent registered the domain name MARRIOT.COM in bad faith. Evidence of Respondent's bad faith includes the following:
"(a). Respondent knew or should have known that MARRIOTT was a mark of Complainant, which does business under the name throughout the world.
"(b) Respondent, without showing legitimate interest in or right to do so, registered a domain name confusingly similar to Complainant's apparently, as is shown by Respondent's use of the domain name, to disrupt the commerce of Complainant by routing Internet traffic to commercial Web sites that promote goods and services similar to those provided by Complainant and in competition with Complainant.
"(c) Respondent's use of the domain name MARRIOT.COM is being operated solely to attract for commercial gain, Internet users to Respondent's Web site, creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's Web site."
The Respondent's bad faith is also evidenced by the fact that the Respondent offers information and links to Complainant's competitors, which demonstrates that the Respondent is intentionally attempting to disrupt the business of the Complainant. See Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge9: "To link Internet surfers looking in their browsers for the well known mark of Complainant to a competitor's website is a typical bad faith use under the ample terms of Policy, Paragraphs 4(a)(iii) and 4(b)."
Likewise, the Respondent is preventing the Complainant from registering the disputed domain name, which is a variant of the Complainant's registered trademark and service mark. The fact that the Complainant already owns a domain name incorporating its exact mark does not entitle any other person, including the Respondent, to use a confusingly similar expression in a domain name. The Panel agrees with the statement made by the Panel in the case of Focus Do It All Group and others v. Athanasios Sermbizis10:
"As to the second sense, (registering to prevent the mark owner from reflecting the mark in a corresponding domain name as part of a pattern of such conduct), the Respondent seeks to avoid this charge by demonstrating various domain name registrations which, thanks to differences of detail, remained open to the mark owner to obtain. This definition of bad faith cannot be understood in so limited a sense. There is almost always some other variant of a mark, which is still available to be turned into a proximate Domain Name. The mark owner is entitled to "reflect" the mark in all domain names, which are confusingly similar to the mark, once he has demonstrated the scope of his right to the mark. Any registration which is undertaken in order to prevent him obtaining any one of those variants is made in bad faith, if there is also evidence of a pattern of conduct."
The Complainant filed numerous documentation with the Complaint, to support the allegation that the Respondent is a known cybersquatter and typosquatter. The Panel notes that the Respondent owns more than 1,100 domain names, many of them incorporating expressions that are confusingly similar to third parties' marks, including several misspellings of famous marks. Among those domain names, listed in Annex 23 of the Complaint, the Panel found the following: <2verizon.com>, <allplaystation.com>, <americaredcross.com>, <babyloonytuns.com>, <barbieactivities.com>, <chryslerfinanacial.com>, <citibanksavings.com>, <cnnspanol.com>, <compuserveusa.com>, <dineychanell.com>, <discovorychanel.com>, <foxnews4.com>, <futbolnike.com>, <harrypotterlego.com>, <kidspotterybarn.com>, <mesengeryahoo.com>, <mobileexxon.com>, <nestlecruch.com>, <pepsimiusic.com>, <starbucksjobs.com>, <timberlandstore.com>, <timewarner.com>, <wwwlockheedmartin.com>, among others.
Based on the evidence presented by the Complainant, and uncontested by the Respondent, the Panel concludes that the Respondent has engaged in a pattern of registering third parties' trademarks in infringing domain names, a conduct known as cybersquatting. Likewise, the Respondent has engaged in a pattern of registering domain names that contain misspellings of third parties' marks, a behavior known as typosquatting, just as unacceptable as cybersquatting. The registration of domain names in bulk is also known as domain name warehousing, also considered as evidence of bad faith.
Particularly related to domain name's warehousing, or abusive registration, Jerome Gilson and Anne Gilson LaLonde 11 stated:
"Cyberpirates may attempt to warehouse multiple domain names containing other's marks, sometimes hundreds or even thousands, and this factor permits a court to take such conduct into the consideration of whether a certain domain name was registered in bad faith. (...) Even if there is no working web site corresponding to any of the warehoused domain names, warehousing prevents trademark owners from using those names for their business."
The pattern of conduct of the Respondent was also found in the previous Administrative Panels in which the Respondent has been involved, as seen in the 17 decisions filed by the Complainant as evidence. In all of the cases, the Panels decided against the Respondent, and declared that the Respondent was a cybersquatter and typosquatter who acted in clear bad faith. One example is the decision in the case of Narcourt, Inc. v. Henry Chan12
"Respondent has engaged in a pattern of registering other domain names that infringe upon the famous marks of others, including <ltdcommodities.net>, <pioneerseed.com>, <willowridgecatalog.com>, <lexixnexus.com>, <jewelsosco.com>, <rockfinancial.com>, <sportsaurthority.com>, <bancopopulardepuertorico.com>, as well as 85 domain names that somehow incorporate the YAHOO, GEOCITIES, or HOTJOBS marks. Respondent is an habitual typosquatter and the Policy seeks to provide a remedy against such infringement by habitual typosquatters."
In addition to the aforementioned, the Complainant also demonstrated that the Respondent provided inaccurate contact information when registering and maintaining the domain name <southerlinc.com>, and has also provided false information in many of his other domain name registrations. In fact, the Complainant tried to reach the Respondent at the Respondent's address in Hong Kong, provided by the Respondent in several domain name registrations, but the courier service returned the package due to the fact that the address does not exist. The Complainant also tried to contact the Respondent via e-mail, through his e-mail address "email@example.com", but the message was undeliverable. According to the information received by the Panel, the mails sent to the Respondent's address in Bahamas were not returned, and apparently, they were received by the Respondent, although this fact could not be confirmed by neither the Complainant, nor the Center.
In its decision in Nintendo of America Inc. v. Berric Lipson13, cited before, the Panel concluded the following with regard to bad faith when the Respondent provides false contact information:
"In addition, the Panel wholly agrees with Complainant that Respondent's providing false contact information, in an obvious attempt to remain elusive, is an indication of bad faith. Even though this particular instance of bad faith is not specifically enumerated in the Policy, the Panel believes the non-exclusive nature of para 4 (b) (i-iv) and Rule 15 allow the Panel to find bad faith in a case such as this. When Complainant wrote to Respondent the first time using the data furnished to NSI for domain name registration, the mail was returned as wrongly addressed. When Complainant wrote to the registered administrative contact for the disputed domain name the first time, Complainant received a response. Yet when Complainant wrote to the same administrative contact a few weeks later, the contact responded it no longer represented Respondent. It is clear to this Panel that Respondent intends not to be found in order to lengthen and frustrate any proceeding involving the disputed domain name."
The Respondent's use of the domain name <southerlinc.com>for advertising purposes, continued even after the Complainant sent a cease and desist letter dated January 21, 2004. Assuming that the letter was received by the Respondent in his Bahamas address, his lack of response shows again his bad faith in the registration and use of the domain name in conflict. The Respondent refused to transfer voluntarily the domain name to the legitimate trademark owner, even after being duly served of the existence of such trademark rights, and hence, being fully aware of his own lack of rights and legitimate interests to the domain name. The Panel in the case of Infospace, Inc. v. Siavash Jimmy Behain et al.14, stated:
"Respondents have ignored Complainant's request to transfer ownership
of the Domain Names. Failure to positively respond to a complainant's efforts
to make contact provides "strong support for a determination of `bad
faith' registration and use." Encyclopaedia Britannica v. Zucarini,
D2000-0330 (WIPO June 7, 2000)."
All of the above lead the Panel to conclude that the Complainant met its burden
of proof in demonstrating that Respondent registered and uses the domain name
at issue in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <southerlinc.com> be transferred from the Respondent to the Complainant.
In compliance of the Policy, its Rules and Supplemental Rules, the Panel does
not find any other remedies to be applicable to the present dispute.
Fernando Triana, Esq.
Dated: May 10, 2004
Case NO. D2003-0707. Sole Panelist Harini Narayanswamy. October 24, 2003.
Case No. D2001-1201. Presiding Panelist Timothy D. Casey. February 26, 2002.
Case No. D2000-0477. Sole Panelist Frederick M. Abbott. July 20, 2000.
4 NAF Case Nº FA-96267. Sole Panelist Ralph Yachnin. January 8, 2001.
Case Nº D2003-0970. Sole Panelist J. Nelson Landry. January 31, 2004.
Cited by the Complainant as Exhibit 1 of the Complaint.
Case Nº D2000-1121. Sole Panelist Dennis A. Foster. October 29, 2000.
7 NAF Case Nº FA-93679. Sole Panelist Judge Irving H. Perluss (Retired). March 16, 2000.
8 NAF Case Nº FA-94737. Sole Panelist Hon. Carolyn Marks Johnson (Ret.). June 15, 2000.
Case Nº D2001-0295. Sole Panelist Roberto A. Bianchi. April 10, 2001.
Case Nº D2000-0923. Presiding Panelist William R. Cornish. October
11 THE ANTICYBERSQUATTING CONSUMER PROTECTION ACT AND THE ICANN UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY. Trademark Protection and Practice. Lexis Publishing. 2000. New York, United States of America. Page 17.
12 NAF Case Nº FA-214531. Sole Panelist Hon. Carolyn Marks Johnson. January 14, 2004.
Case Nº D2000-1121. Op. Cit.
Case Nº D2000-1631. Sole Panelist Richard W. Page. March 30, 2001.