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ADMINISTRATIVE PANEL DECISION
VeriSign Inc. v. Bin g Glu / G Design
Case No. D2007-0421
1. The Parties
Complainant is VeriSign Inc., of Mountain View, California, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.
Respondent is Bin g Glu / G Design, of Taiyuan, Shanxi, China.
2. The Domain Name and Registrar
The disputed domain name <veri-sign.com> is registered with Communigal Communications Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2007. On March 20, 2007, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue. On April 5, 2007, Communigal Communications Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the registrant contact details. On April 10, 2007, 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 April 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2007.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 14, 2007. 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
Complaintant is a corporation established in the 1990s in California, United States of America.
Respondent appears to be a natural person resident in China.
Complainant is a directory provider of all “.com”, “.net”, “.cc” and “.tv” domain names. Complainant offers Internet- and computer-related products and services, including web security; payment and authentication; registry and database; telecommunications; and other Internet-related products and services.
Complainant holds a large number of applications and registrations worldwide for trademarks which consist of the designation VERISIGN or contain this designation as a significant component. Complainant holds applications and/or registrations in Argentina, Australia, Bahrain, Bolivia, Brazil, Canada, Chile, China, Colombia, Czech Republic, Egypt, European Community, France, Germany, Hong Kong, SAR of China, Hungary, Iceland, India, Israel, Japan, Pakistan, Republic of Korea, Kuwait, Latvia, Lebanon, Mexico, New Zealand, Norway, Russian Federation, Saudi Arabia, Singapore, South Africa, South Korea, Switzerland, Taiwan, Thailand, Turkey, United Arab Emirates, United Kingdom, United States of America. Only in China, where the Respondent resides, the Complaint has twelve trademark and/or service mark registrations, dating as early as 1999, and more than twenty-five trademark and/or service mark applications.
The domain name <verisign.com>, was originally registered by Complainant on June 2, 1995 and it is currently used in Complainant’s business.
Respondent registered the disputed domain name on December 9, 2004.
Respondent has been a respondent in two prior UDRP complaints filed before the National Arbitration Forum (NAF Cases Nos. 714965 and 874496). Respondent failed to submit a response in either proceeding and was ordered to transfer the domain names to the corresponding complainants.
Complainant’s counsel sent correspondence to Respondent on February 1, 2007, demanding that Respondent cease and desist to use the disputed domain name and transfer the registration to Complainant.
5. Parties’ Contentions
Complainant claims to be a leader in naming and directory products and services to globalize access to the Internet and to have continuously used the VERISIGN marks to advertise and promote its products and services offered on its website located at <verisign.com>.
Complainant alleges to have promoted the VERISIGN marks and the <verisign.com> domain name globally, and it claims that the marks have gained widespread recognition both in the United States of America and worldwide. Complainant also alleges to have spent over 250 million dollars per year to advertise and promote the VERISIGNmarks and the <verisign.com> domain name. And as a result thereof Complainant has developed extremely valuable goodwill and outstanding reputation in its marks and domain name, which would be indications of high quality.
Complainant alleges that Respondent has registered over 750 domain names, many of which are incorporating or typosquatting famous trademarks of other companies, such as <siemeens.com>, <jteblue.com>, <toshuba.com>, among many others.
Complainant affirms that the Respondent is not a licensee of Complainant nor is authorized to use Complainant’s marks or domain name and also contends that the Respondent is a notorious cybersquatter and typosquatter and has no legitimate interest in the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy Complainant must prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which Complainant has rights; and
(ii) that Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that the mere addition of a hyphen between the word elements is not sufficient to avoid confusion between the domain name and Complainant’s trademark. It does not bring enough distinctiveness to the domain name. The addition of only a hyphen to the word in the domain name keeps the mark with the same general appearance and sound, remaining confusingly similar to the registered mark.
It has been proved that Complainant indeed owns a large number of trademark registrations and applications worldwide for the trademark VERISIGN, among which the Panel cites the United States registrations No. 2,302,350, of December 21, 1999; No. 2,559,289, of April 9, 2002; and No. 2,758,215, of September 2, 2003.
Identical conclusions regarding the lack of distinctiveness configured by the addition of only a hyphen to the mark in a domain name can be found in several domain name dispute resolution decisions, for example, Fort Nox National Company v. Ekaterina Phillipova,
WIPO Case No. D2004-0281; Niit Limited v. National Institute for Information Technology,
WIPO Case D2005-0363; and CWIE, LLC v. Alex Berg,
WIPO Case D2006-1303.
Therefore, the Panel finds that the domain name <veri-sign.com> is confusingly similar to Complainant’s registered trademark VERISIGN.and therefore it meets the Policy requirement.
B. Rights or Legitimate Interests
As mentioned above, no Response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name.
The registration of the disputed domain name occurred on December 9, 2004, long after Complainant’s registrations for the trademark VERISIGN and domain name <verisign.com>. Respondent must have been aware of Complainant’s widely-known trademark at the time of registration and use of the said domain name.
Furthermore, examining Respondent’s Web Page it can be observed that Respondent does not run any business activity in connection with the disputed domain name and in such Web Page (which is a link farm) only posts a list of sponsored links. In this sense, the domain name <veri-sign.com> is not rightfully used by Respondent in connection with a bona fide offering of goods and services.
In addition, Complainant has never authorized Respondent to make use of the trademark VERISIGN and there is no relationship between the parties.
Respondent has not replied to the Complaint and has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
It has been proved in this proceeding that Respondent is engaged in a pattern involving the registration of domain names similar trademarks of other companies and has been named respondent in two prior complaints before the National Arbitration Forum The Panel noticed that one of such cases (Case No. 874496) concerned the domain names <metllife.com> and <mettlife.com> and was an obvious case of typosquatting committed against the complainant therein, Metropolitan Life Insurance Company, owner of the widely-known trademark METLIFE.
In another matter, the French airline company Sociйtй Air France presented against Respondent
WIPO Case No. D2006-0834, in which the disputed domain names were <aiirfrance.com>, <airrance.com> and <airrfance.com>. Another clear case of typosquatting committed by Respondent, as in such case the complainant was the owner of the famous trademark AIR FRANCE for air travel services.
As in the present case, in all three aforementioned cases Respondent did not reply the complainants contentions. In the above-referenced cases the domain names were transferred to the respective complainants. From such previous cases and from the facts of this case it is clear that Respondent is in the business of registering domain names in which he has no rights or legitimate interests.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy specifies certain non-exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the domain name in bad faith.
The Complainant’s trademark is widely-known and the Panel deems that Respondent was aware of Complainant’s rights regarding the trademark VERISIGN at the time of registration of the disputed domain name.
The addition of a hyphen to Complainant’s widely-known trademark is further evidence of bad faith, as Respondent is clearly trying to lure Internet users which have an interest in Complainant’s activities.
The fact that Respondent’s Web Page is a link farm and hosts a list of sponsored links also shows that Respondent intentionally uses the domain name <veri-sign.com> aiming to profit from Complainant’s renowned trademark by attracting Internet users. The confusion created by the domain name could cause potential customers of the Complaint to choose other services than the Complainant’s, thereby disrupting Complainant’s business.
The existence of bad faith in redirecting users to other sites that offers services and goods even if unrelated to Complainant’s in order to gain profit from its reputation has been affirmed in other cases, such as ATT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin,
WIPO Case No. D2001-1503 and Society for Human Resource Management v. Local Services INC.,
WIPO Case No. D2004-0127.
For the aforementioned reasons, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. The Panel therefore concludes that the Complainant has established paragraph 4(a)(iii) of the Policy.
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 <veri-sign.com> be transferred to Complainant.
Gabriel F. Leonardos
Dated: May 28, 2007