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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MouseSavers, Inc. v. Mr. Henry Tsung d/b/a www.wwwmousesavers.com

Case No. D2004-1034

 

1. The Parties

The Complainant is MouseSavers, Inc., of Chula Vista, California, United States of America, represented by Waller Lansden Dortch and Davis, PLLC, United States of America.

The Respondent is Mr. Henry Tsung d/b/a www.wwwmousesavers.com, of Taipei, Taiwan, Province of China.

 

2. The Domain Name and Registrar

The disputed domain name <wwwmousesavers.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 December 8, 2004. On December 8, 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 December 8, 2004, 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 December 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2005.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on January 19, 2005. 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

In May of 2001, the Complainant launched a travel advice website known as “www.www.mousesavers.com”, providing information regarding travel discounts and special offers related to Disney’s amusement parks and other travel destinations.

Over the past three and a half years, the Complainant’s “www.www.mousesavers.com” website has become a popular resource for internet users seeking information on Disney-related discounts. The Complainant has invested a substantial amount of time and effort in the creation of goodwill surrounding the “www.www.mousesavers.com” website and has acquired valid common law trademark rights therein.

In furtherance of the Complainant’s service marks rights, the Complainant has filed service mark Application No. 78/493,713 with the United States Patent and Trademark Office.

On November 3, 2003, the Respondent, without the permission of the Complainant, registered the disputed domain name, and has been using it to provide commercial paid advertisements and “pop up” advertisements, some of which are in direct competition with the Complainant.

 

5. Parties’ Contentions

A. Complainant

Because of the Respondent’s unauthorized use and registration of the disputed domain name, which is nearly identical to the Complainant’s service mark, the Complainant asserted that the Respondent has registered the disputed domain name to “typosquat” and to exploit Internet users who mistype “www.wwwmousesavers.com” instead of “www.mousesavers.com” for his personal commercial gain. The Complainant believes that there is a strong likelihood that consumers are being confused by the Respondent’s registration of the disputed domain name and asserted its right to recover it pursuant to the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.

Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

a) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

b) that the Respondent has no rights or legitimate interests in the domain name, and;

c) that the domain name bas been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has used “WWW.MOUSESAVERS.COM” for over three years to identify its business. During this time, the Complainant has accrued substantial common law rights in the “WWW.MOUSESAVERS.COM” mark, and has filed service mark Application No. 78/493,713 with the United States Patent and Trademark Office.

The Complainant’s pending U. S. Trademark application is additional evidence that Complainant has service mark rights in the “WWW.MOUSESAVERS.COM” mark. In Digital Vision, Ltd. v. Advanced Chemill Systems, . (WIPO Case No. D2001-0827 of September 23, 2001), the Panel held that Paragraph 4.a.(i) [of the Policy] does not require that trademark be registered.

Moreover, the Complainant has a substantial and protectable interest in its “WWW.MOUSESAVERS.COM” service mark by way of its common law service mark rights.

The disputed domain name registered by the Respondent is confusingly similar to the Complainant’s, as the only difference between the domain names is the omission of the period after the letters “www.”

This minor typographical error does not significantly distinguish the disputed domain name from the Complainant’s mark.

For instance, it was held in Bank of Am. Corp. v. InterMos, FA00D6000095092 (National Arbitration Forum August 1, 2000) that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to BANK OF AMERICA; Likewise, in Marie Claire Album v. Blakely (WIPO Case No. D2002-1015 of December 23, 2002) is was held that the letters “www” are not distinct in the “Internet world” and <wwwmarieclaire.com> is confusingly similar to the MARIE CLAIRE trademark; in the same vein, in Neiman Marcus Group, Inc. v. S1A, FA0210000128683 (National Arbitration Forum December 6, 2002), it was held that the prefix “www” does not sufficiently differentiate <wwwneimanmarcus.com> from NEIMAN-MARCUS.

Thus, the Respondent’s use of the disputed domain name is likely to cause deception, mistake and confusion among consumers seeking information with regard to the Complainant’s services, as the disputed domain name is nearly identical to a service mark in which the Complainant has rights in satisfaction of the Policy.

The Panel finds that the disputed domain name is confusingly similar to the service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services.

It was held in Pierce Brosnan v. Network Operations Ctr. (WIPO Case No. D2003-0519 of August 27, 2003) that the commercial use of a domain name to confuse and divert Internet traffic, or to trade on the name of another is not a legitimate use of a domain name.

The Respondent is using the disputed domain name to direct Internet users to a website that features paid and “pop up” advertising for a variety of goods, including ads for sites that offer similar types of services as those of the Complainant.

Such use of the disputed domain name is not a bona fide offering of goods or services under the Policy.

It was held in Bank of America Corp. v. Out Island Props., Inc., FA0304000154531 (National Arbitration Forum June 3, 2003) that the use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements is evidence of no rights or legitimate interests in a domain name; likewise, in Geoffrey, Inc. v. Toyrus.com, FA0303000150406 (National Arbitration Forum April 5, 2003), it was held that a misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.

The Respondent is also not making a legitimate non-commercial or fair use of the disputed domain name.

There is no evidence that the disputed domain name is the actual legal name of the Respondent or is a name that is commonly used to identify the Respondent without violating the Complainant’s right in its service mark. The Respondent is known personally as Henry Tsung; he has no personal association with the disputed domain name under the Policy.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which for the purposes of paragraph 4(a)(iii) of the Policy would, if the Panel finds them to be present, constitute evidence of bad faith registration and use.

Paragraph 4(b)(iv) of the Policy provides (in part) that there is evidence of bad faith registration and use where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.

In determining whether a domain name is registered in bad faith, it was held in Twentieth Century Fox Film Corp. v. Risser, FA0002000093761 (National Arbitration Forum May 18, 2000) that a panel must look at the “totality of circumstances” surrounding the registration of the domain name in question; in the same vein, it was held in Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624 of August 21, 2000) that “the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”.

The Respondent has an extensive history of “typosquatting” and has been a party to numerous recent UDRP decisions, such as:

Whitney National Bank v. Henry Tsung (National Arbitration Forum Decision FA0401000227652 of March 3, 2004);

America West Airlines, Inc. v. Henry Tsung, (National Arbitration Forum Decision FA0401000232953 of March 16, 2004).

The Neiman Marcus Group, Inc. v. Henry Tsung, (National Arbitration Forum Decision FA0403000243464 of April 6, 2004 );

First Tennessee National Bank v. Henry Tsung (WIPO Case No. D2004-0103 of April 22, 2004);

Bausch & Lomb, Inc. v. Henry Tsung (National Arbitration Forum Decision FA0403000247973 of May 5, 2004 );

Trustmark National Bank v. Henry Tsung (WIPO Case No. D2004-0274 of June 4, 2004);

SmartBargains.com, L.P. v. Henry Tsung, (National Arbitration Forum Decision FA0408000313576 of September 22, 2004);

In all of the above decisions, the panel uniformly ordered transfers of the applicable domain names, which had been wrongfully registered by Respondent.

The Respondent has clearly engaged in a serial pattern of behavior and his extensive history of typosquatting in and of itself is evidence of bad faith registration pursuant to Paragraph 4(a)(iii) of the Policy. For instance, it was held in L.L. Bean, Inc. v. Cupcake Patrol, FA0101000096504 (National Arbitration Forum March 12, 2001) that the respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names; in the same vein, it was held in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini (WIPO Case No. D2002-1011 of January 21, 2003) that “Typosquatting is inherently parasitic and of itself evidence of bad faith”.

Furthermore, the Respondent can hardly ignore that several domain names which he registered were ordered transferred to various complainants after findings of very similar typosquatting involving the use of www without the dot, as in WIPO Case No. D2004-0274 and National Arbitration Forum Decision FA0401000227652, and that this circumstance reinforces the bad faith use by the Respondent of the domain name at issue.

The Panel therefore concludes that the Respondent has registered and used the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, and consistent with several previous WIPO decisions under the Policy involving the Respondent, the Panel orders that the domain name <wwwmousesavers.com> be transferred to the Complainant.


Louis-Bernard Buchman
Sole Panelist

Date: February 1, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-1034.html

 

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