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and Mediation Center
Paper Payment Services, LLC v. Web Domain Names
Case No. D2006-0680
1. The Parties
The Complainant is Paper Payment Services, LLC, Minnesota, United States of America, represented by Seyfarth Shaw, United States of America.
The Respondent is Web Domain Names, Shanghai, The People's Republic of China
2. The Domain Name and Registrar
The disputed domain name <checksunimited.com> is registered with Moniker
Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2006. On June 1, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On June 6, 2006, Moniker Online Services, LLC 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 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2006.
The Center appointed The Honourable Neil Anthony Brown
QC as the sole panelist in this matter on August 18, 2006. 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
The Complainant is a United States company engaged in check printing and related services. It is the registered owner of two trademarks for CHECKS UNLIMITED, details of which are as follows:
(a) Registered Trademark No. 2417931, registered on January 2, 2001, with the United States Patents and Trademarks Office IP for CHECKS UNLIMITED;
(b) Registered Trademark No. 2518249, registered on October 3, 2000, with the United States Patents and Trademarks Office also for CHECKS UNLIMITED.
For the conduct of its business the Complainant also registered the domain name <checksunlimited.com> on August 4, 1998, and that domain name has remained registered since then. It resolves a website, which the Complainant uses to promote its products and services.
The Respondent is a business operating from Shanghai in China (PRC). On September 2,
2002, it registered the contentious domain name <checksunimited.com> which
resolves to an active website, which promotes check-printing and related services,
including goods and services available from suppliers who are in direct competition
with the Complainant.
5. Parties’ Contentions
The Complainant alleges that the contentious domain name <checksunimited.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant’s registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered CHECKS UNLIMITED trademarks to which reference has already been made. It then says that it is self-evident that the domain name <checksunimited.com> is confusingly similar to the CHECKS UNLIMITED marks.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the facts show an obvious intention by the Respondent to trade on the Complainant’s marks and mislead consumers into believing that they have arrived at the Complainant’s website, by linking the Respondent’s site to third party sites that provide amongst other things, check printing and related services in direct competition with the Complainant. Nor, it is argued, can the Respondent bring itself within any of the provisions of paragraph 4 (c) of the Policy.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent’s deceptive conduct comes squarely within paragraph 4(b)(iv) of the Policy. Moreover, the Respondent has on several occasions been held to be in breach of the UDRP because of similar conduct to that demonstrated in this proceeding in registering other domain names. Accordingly, the Complainant contends, it must be inferred that the Respondent registered and has used the domain name in bad faith with the intention to profit from its sale to the Complainant or a competitor as well as to divert customers looking for the Complainant’s website to websites of the Complainant’s competitors.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, Paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to the two United States trademarks No. 2417931 for CHECKS UNLIMITED and No. 2518249 also for CHECKS UNLIMITED (referred to collectively as ‘the trademark’). That is so for the following reasons. The domain name is similar to the trademark as it consists of the entirety of the trademark with the exception that it omits the letter ‘L’ of the trademark. Such a close correlation can only be described as a similarity. The similarity is confusing because an objective observer would think that the expression in the domain name is the same as that in the trademark. That is so because consumers form a general impression of what they observe and it is beyond argument that the general impression that at least some observers would form from reading the domain name is that it is expressing the words ‘checks unlimited’.
In any event, two expressions so close in their spelling give rise to unavoidable
scope for confusion. It has thus been held by UDRP panelists on many occasions
that such minor misspellings of this sort are not enough to negate or diminish
what would otherwise be a finding of confusing similarity. See, for example,
the recent decision in Medco Health Solutions, Inc. v. Digi Real Estate Foundation,
WIPO Case No. D2006-0693 where the
domain name <medcohealh.com> was held to be confusingly similar to the
trademark MEDCOHEALTH, omitting , as it did, a single letter. The panel said
in its decision:
“WIPO’s case law, further, is well-settled in the sense that the
mere omission of a single letter is not sufficient to make the domain name distinguishable
in relation to the trademark at issue (e.g. Microsoft Corp. v. Whois Privacy
Protection Service, WIPO Case No. D2005-0642;
Accor v. Howell Edwin, WIPO Case No.
D2005-0980; HM Publishers Holdings Ltd. v. Webserve LLC, WIPO
Case No. D2005-0741; Siemens AG v. Siemens.Com, WIPO
Case No. D2005-0927; Netstock, Inc. v. Music Wave, WIPO
Case No. D2002-0441; Hershey Foods Corp. and Hershey Chocolate &
Confectionary Corp. v. Amcore & Co. For Sale Domains $250 or Best
Offer, WIPO Case No. D2003-0838)”.
It has also been consistently held that confusing similarity is not negated by the presence in the domain name of suffixes such as the gTLD suffix ‘.com’.
The Panel also draws the inference that the misspelling in the present case was done deliberately to ensnare internet users who make a mistake in spelling the combined word ‘checksunlimited’.
As the Complainant clearly has rights in the two registered trademarks as their registered owner, the Panel finds that the domain name is confusingly similar to the trademark and that the Complainant has accordingly established the first of the three elements that it must prove.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.”
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. The Respondent in the present case was given notice that it had until June 28, 2006, to send in its Response, that it would be in default if it did not do so and that, by virtue of Paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
As the Respondent is in default, the Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, draws the inference that the Respondent has no rights or legitimate interests in the domain name. It is appropriate to draw that inference because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were. Moreover, because of similarity between the domain name and the trademarks, it is apparent that the Respondent has appropriated the Complainant’s trademark without permission, giving rise to the prima facie assumption that he did so for an illegitimate purpose. If there were a more innocent or legitimate explanation, the Respondent could have given it, but this it has failed to do.
In the absence of such an explanation the Panel is entitled to draw inferences
adverse to the Respondent’s interests on that issue and to assume that
‘any evidence of the Respondent would not have been in [its] favour’:
Pharmacia & Upjohn AB v. Dario H. Romero, WIPO
Case No. D2000-1273.
Furthermore, the Respondent had the opportunity to bring itself within paragraph 4(c) of the Policy which sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the registrant’s rights or legitimate interests in the domain name. However, the Respondent has not endeavoured to establish any of the criteria set out in Paragraph 4(c), giving rise to the inevitable inference that it could not do so by credible evidence.
All of these facts support the conclusion that the Respondent has no rights or legitimate interests in the domain name and that conclusion is re-enforced by the evidence that the Complainant has not authorized or licensed the Respondent to use its well-known trademark nor to register the domain name incorporating that mark.
It is also apparent to the Panel that even if the Respondent had tried to bring itself within any of the above criteria, it would not have been able to do so. It cannot be said to have been making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy when it has in effect used the Complainant’s trademark to sell products and services that are in the same categories as those sold by the Complainant, but supplied by firms that compete with the Complainant. Nor is it making a bona fide offering of goods and services to use the Complainant’s trademark to offer goods and services that are entirely alien to the Complainant’s lines of business.
Nor is the Respondent named “Checksunimited”, so it is excluded from the benefit of paragraph 4(c)(ii) of the Policy. Nor could the Respondent rely on paragraph 4(c)(iii), as it has clearly been using the domain name for commercial gain to divert consumers away from the official Checks Unlimited website to rival sites which also sell products and services other than those of the Complainant, by misleading them and thereby diminishing the standing of the CHECKS UNLIMITED trademarks.
For all of these reasons the Complainant has shown that the Respondent has no rights or legitimate interests in the domain name and the Complainant has therefore made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain
name was registered in bad faith and that it is being used in bad faith: Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 respondent’s website or location or of a product or service on the site or location”.
The conduct of the Respondent may well bring it within several provisions of paragraphs 4(b) of the Policy. However, as the Panel finds that the case clearly comes within paragraph 4(b)(iv) of the Policy, it is not necessary to consider those other provisions.
As has already been noted, the Respondent is using the domain name to host a web site that purports to direct consumers to the websites of businesses that compete directly with the Complainant in offering check-printing services, which is one of the Complainant’s primary business activities. It also directs consumers to other businesses offering goods and services not in the Complainant’s various fields, such as travel, finance and entertainment and it must be inferred that this is being done for commercial gain. Applying those facts to the provisions of paragraph 4(b)(iv) of the Policy, it is clear for the following reasons, that they come within it.
First, the Respondent was undoubtedly attempting to attract internet users to its website by slightly altering the spelling of the trademark and embodying the amended name in the domain name. Looking at the website to which the domain name resolves, it is impossible to accept that this was being done for any reason other than commercial gain in one form or another, for the website has an essentially commercial nature. Secondly, by using the misspelling of the Complainant’s trademark in the domain name, the Respondent created a likelihood of confusion with those marks. Thirdly, the confusion that was and is likely to be created is confusion about the affiliation of the various goods and services on the Respondent’s website and the others to which it is linked and as to whether or not they are the Complainant’s official Checks Unlimited goods and services or in some way associated with it. When consumers see the same goods and services that they expect to find on a Checks Unlimited site being promoted on the Respondent’s website, they will naturally assume that those services are being promoted or provided with the Checks Unlimited imprimatur, when in fact they are not. Clearly this is all a deliberate attempt to promote the notion in the minds of consumers that they have arrived at a Checks Unlimited website and hence it is a deliberate attempt to trade off the Complainant’s name.
The Panel finds that these circumstances create confusion with the Complainants’
trademark as to the sponsorship, affiliation and endorsement of the Respondent’s site and the services on it and on the sites to which it is linked and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another. The facts therefore come within paragraph 4(b)(iv) of the Policy and clearly constitute bad faith in the manner in which the Respondent is using the domain name. They also constitute bad faith in the registration of the domain name, for, to paraphrase the words used in the decision in Telstra Corporation Limited v. Nuclear Marshmallows, (supra): ‘ …it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name (<checksunimited.com>). It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding in paragraph 7.2 that the Respondent has no rights or interests in the domain name, lead the Administrative Panel to conclude that the domain name (<checksunimited.com>) has been registered by the Respondent in bad faith’.
This conclusion is re-enforced by the further evidence of the Complainant to
the effect that the Respondent has been involved in several UDRP proceedings
as respondent where it was held that the Respondent had violated the UDRP by
registering domain names that were confusingly similar to certain trademarks
and then purporting to divert consumers to the websites of competitors of the
trademark owners. Those proceedings, cited by the Complainant are: Roux Laboratories,
Inc. d/b/a Colomer USA v. Web Domain Names, WIPO
Case No. D2005-0802 (where the domain name was transferred to the complainant);
Sharman License Holdings, Limited v. Web Domain Names, WIPO
Case No. D2004-0821 (where 228 domain names were transferred to the complainant);
Fifth Third Bancorp v. Web Domain Names, WIPO
Case No.D2005-0185 (where the domain name was also transferred to the complainant).
All of these matters go to show that the Complainant has made out the third
of the three elements that it must prove.
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 <checksunimited.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: September 1, 2006