In addition, Complainant alleges in its Complaint that it has accrued common law rights in its SEGWAY mark since Complainant began operating under its name in 2001.

Complainant further states in its Complaint that, since 2001, Complainant has invested millions of dollars in advertising and promoting its products under its SEGWAY mark throughout the world, and consistently enforces unauthorized uses and/or infringements of its marks.

Complainant further states in its Complaint that it registered the domain name <segway.com> on August 18, 1996, and that it maintains a website at “www.segway.com”.²

Complainant further states in its Complaint that Respondent uses the Domain Name to automatically redirect Internet users to a website at “www.plannedchildhood.org”, a website unrelated to Complainant or its Segway products. Complainant states in its Complaint that (1) the website at website at “www.plannedchildhood.org” contains politically charged anti-abortion statements such as “Planned Parenthood’s Eugenic Plan for Black Americans” and “Planned Parenthood’s Connection to Adolf Hitler”; and (2) the website at “www.plannedchildhood.org” also contains links to other extreme political sites, as well as statements claiming, among other things, a Satanic link to the Internet.

Complainant further states in its Complaint that Respondent registered the Domain Name on December 2, 2001, the date that Complainant announced its media launch of its Segway vehicles. Complainant provided as an exhibit a printout from an online publication, “The Drudge Report,” dated December 2, 2001, that reported the pending unveiling (the following day) of the Segway vehicle.

Complainant further states in its Complaint that Respondent has a pattern and history of cybersquatting, i.e., he routinely registers domain names containing others’ well-known trademarks, without any legitimate interest and solely for the purpose of diverting Internet users looking for the trademark owner (or goods/services associated with the trademark) to Respondent’s politically charged websites. In support of this statement, Complainant cites New York City Police Foundation v. Chris Hoffman, NAF Claim No. FA0406000286046. Complainant also cites two further Policy proceedings in which Respondent was the respondent: Women on Waves Foundation v. Chris Hoffman, WIPO Case No. D2000-1608; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184.

Complainant further states in its Complaint that, on November 2, 2004, counsel for Complainant wrote a cease and desist e-mail to Respondent regarding the Domain Name, which e-mail requested a response by November 16, 2004. Complainant states that it received no response from Respondent as of the date Complainant filed its Complaint in this proceeding, that is, January 6, 2005.

5. Parties’ Contentions

A. Complainant

With respect to Paragraph 4(a)(i) of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s SEGWAY mark because the Domain Name incorporates Complainant’s SEGWAY mark and company name in its entirety, adding only the descriptive term “accessories.” Complainant contends that the combined terms suggest the site is associated with Complainant, i.e., that the site contains information about accessories for the well-known Segway Human Transporter vehicles.

With respect to Paragraph 4(a)(ii) of the Policy, Complainant contends that: (1) Respondent registered the Domain Name on December 2, 2001, by which time Complainant had well-established rights in its Segway trademark and domain name; (2) Respondent’s use of the Domain Name diverts traffic intended for Complainant to the site plannedchildhood.org, which espouses Respondent’s anti-abortion and political views; (3) to the best of Complainant’s knowledge, Respondent is neither known by, nor holds himself or his business out as Segway or Segway Accessories and Respondent does not use the SEGWAY or SEGWAYACCESSORIES marks in connection with offering any of his own goods or services; (4) Respondent is not an authorized dealer, distributor, or licensee of Complainant.; and (5) Respondent uses the Domain Name solely for the purpose of taking advantage of Complainant’s rights in the SEGWAY mark and diverting Internet users looking for Complainant’s products to Respondent’s “www.plannedchildhood.org” website that is a platform for Respondent’s political views.

With respect to Paragraph 4(a)(iii) of the Policy, Complainant contends that: (1) Respondent registered the Domain Name <segwayaccessories.com> in bad faith because he registered it at the time Complainant was receiving heavy media attention for its initial Segway launch, solely for the purpose of diverting Complainant’s customers to Registrant’s politically-motivated website; (2) Respondent has a history of cybersquatting activity (see Policy decisions cited above, in which Respondent was the respondent); and (3) Respondent’s continued bad faith is demonstrated by the fact that Respondent refused to respond to Complainant’s cease and desist letter of November 2, 2004.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Given the numerous trademark registrations and applications for SEGWAY cited by Complainant in its Complaint, as well as Complainant’s alleged use of the SEGWAY mark since 2001, the panel is convinced that Complainant has trademark rights in the SEGWAY mark.

As to whether the Domain Name is identical or confusingly similar to Complainant’s SEGWAY mark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “segwayaccessories”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The Domain Name is not identical to a trademark in which Complainant has rights, as the Domain Name consists of the words “segwayaccessories” and Complaint has provided evidence only of its rights to marks consisting solely of the word “SEGWAY”.

However, Complainant need prove only that the Domain Name is “confusingly similar” to a mark in which Complainant has rights. The addition of a generic term such as “accessories” is insufficient to avoid confusion. See Chanel, Inc. AG v. Designer Exposure, WIPO Case No. D2000-1832 (transfer of two domain names, including <chanelaccessories.com>). Indeed, the addition of a generic word to a trademark owned by a complainant to create a domain name consisting of multiple words that implies a relationship between the words – in this case, Segway accessories – can actually increase rather than decrease the likelihood of confusion. See, e.g., Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431 (“given that the added words describe the business services for which the Complainant’s trademark is registered and used by the Complaint, the additions merely compound the confusion created by the incorporation of the Complainant’s trademark”); and Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (“if the addition is a term associated with the business of the Complainant… it can even add to the similarity between the domain name and the trademark in question”).

Therefore, Complainant has proven that the Domain Name is confusingly similar to Complainant’s SEGWAY mark, and Complainant has proven the first of the three elements required by the Policy.

B. Rights or Legitimate Interests

Complainant states that (1) to the best of Complainant’s knowledge, Respondent is neither known by, nor holds himself or his business out as Segway or Segway Accessories; (2) Respondent does not use the SEGWAY or SEGWAY ACCESSORIES marks in connection with offering any of his own good or services; and (3) Respondent is not an authorized dealer, distributor or licensee of Complainant. Given Respondent’s failure to file a response in this proceeding, and in the absence of any evidence to the contrary, the panel must accept these assertions as true. See, e.g., Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682 (“Paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative, that the Respondent lacks rights or legitimate interests in the domain name at issue. A complainant sets forth the facts within his knowledge to make a prima face case, which then shifts the burden of proof to the respondent to establish that he held rights or made a permitted use.”); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Complainant states in the body of its Complaint that Respondent redirects the Domain Name to the website at “www.plannedchildhood.org”, and Complainant provides as exhibits printouts of various pages from the website at “www.plannedchildhood.org”. However, aside from Complainant’s assertion, the connection between the Domain Name and the website at “www.plannedchildhood.org” is not evident. Indeed, when this panel attempted to access a website using the Domain Name on February 16, 2005, the panel was not redirected to a website at “www.plannedchildhood.org” but instead was presented with a “Coming Soon” page apparently maintained by the Registrar. While the panel does not question the veracity of Complainant’s allegations on this matter, the panel would have preferred to see in the Complaint an affidavit, declaration or similar document made by a person who experienced the redirection.

Additionally, the panel acknowledges that respondents in proceedings under the Policy often are known to change a website associated with a disputed domain name after a complaint has been filed, and the Policy does not prohibit this practice, which is often employed by respondents in a transparent attempt to avoid an adverse decision. Further, as shown by New York City Police Foundation v. Chris Hoffman, NAF Claim No. FA0406000286046, Respondent allegedly has redirected a domain name to a website at “www.plannedchildhood.org” on at least one previous occasion. And, Respondent has not disputed in this proceeding Complainant’s allegations about the redirection of the Domain Name. Therefore, the panel accepts as true that the Domain Name was previously redirected by the Respondent to the website at “www.plannedchildhood.org”, which website contains, according to a 23-page printout of the website’s home page provided by Complainant, such highly charged statements as “Planned Parenthood’s Connection to Adolf Hitler,” “Porn industry fears Bush victory,” “Abortion – Cancer Link ?”, and “Abortion and terrorism: Chillingly similar.”

Further, “Respondent’s use of domain names that are confusingly similar to Complainant’s… mark to redirect Internet users interested in information regarding Complainant to a website that displays links to various websites and messages wholly unrelated to Complainant is not a use in connection with a bona fide offering of goods or services.” New York City Police Foundation v. Chris Hoffman, NAF Claim No. FA0406000286046.

Accordingly, as a result of Complainant’s obvious rights in the SEGWAY mark, without any evidence of Respondent’s rights or legitimate interests in the Domain Name, and with uncontradicted evidence of Respondent’s redirection of the Domain Name to an unrelated, politically charged website, Complainant has proven the second of the three elements required by the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating four factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, Paragraph 4(b).

In this case, Complainant has not alleged with specificity in its Complaint which, if any, of these four factors may exist and evidence bad faith. However, by its terms, these four factors are not exhaustive, and a panel may consider other issues that it deems relevant to a finding of bad faith.

While none of the following individual factors by itself is necessarily sufficient to find bad faith, the cumulative existence of these factors convinces the panel that the Domain Name has been registered and is being used in bad faith:

- Registrant registered the Domain Name on December 2, 2001, the same day that “The Drudge Report” reported the pending unveiling (the following day) of the Segway vehicle, according to an exhibit provided by Complainant. See, e.g.ё Rona, Inc. v. Merry Christmas Everyone!, WIPO Case No. D2000-1653 (bad faith found where respondent registered domain name on same day complainant issued press release relating to trademark contained in domain name); Magna International Inc. and Donnelly Corporation v. Brian Evans, WIPO Case No. D2002-0898 (same).

- Registrant has been involved as a (losing) respondent in multiple proceedings under the Policy. See, e.g., Sociйtй des Hфtels Mйridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849 (“the fact that the Respondent has been involved in a large number of cases under the Policy prove[s] that the Respondent’s use and registration of the disputed domain name fall within the concept of bad faith”).

- Registrant used Complainant’s SEGWAY trademark in connection with a domain name associated with an unrelated, politically motivated website. See, e.g.ё New York City Police Foundation v. Chris Hoffman, NAF Claim No. FA0406000286046 (involving Respondent) (“using domain names confusingly similar to Complainant’s mark to divert Internet users to a website displaying politically charged content such as abortion constitutes bad faith”); and McClatchy Management Services, Inc. v. Please DON’T Kill Your Baby a/k/a William and Mark Purdy II, Willaim S. Purdy, NAF Claim No. FA0304000153541 (“[b]y intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”).

- Registrant failed to respond to Complainant’s demand letter.³ See, e.g.ё Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (a respondent’s failure to positively respond to a complainant’s efforts to make contact provide “strong support for a determination of ‘bad faith’ registration and use”); and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where respondent refused to voluntarily transfer the domain name and failed to respond to demands by complainant).

Therefore, the Complainant has proven that the Domain Name has been registered and is being used in bad faith, and Complainant has proven the third of the three elements required by the Policy.

7. Decision

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 <segwayaccessories.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist

Date: February 25, 2005

² Complainant does not state when it first used a website in connection with the domain name <segway.com>.

³ The fact that Complainant apparently did not attempt to contact Respondent for nearly three years following Respondent’s registration of the Domain Name is curious but irrelevant. See, e.g., E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (“the Policy does not provide any defense of laches”).

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0023.html

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