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and Mediation Center
ADMINISTRATIVE PANEL DECISION
SurePayroll, Inc. v. Web Advertising, Corp.
Case No. D2007-0470
1. The Parties
The Complainant is SurePayroll, Inc., of Glenview, Illinois, United States of America, represented by Michael Best & Friedrich LLP, United States of America.
The Respondent is Web Advertising, Corp., of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <sureparoll.com> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2007. On March 29, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On March 30, 2007, DomainDoorman LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2007.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on May 1, 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.
The language of the proceedings is English.
4. Factual Background
The Complainant is a full-service online payroll provider throughout the United States of America.
The Complainant is the owner of the federal trademarks, SUREPAYROLL.COM registered in the United States of America on November 12, 2002, and SUREPAYROLL registered on May 11, 2004. The Complainant also owns a number of other federal trademark registrations containing SUREPAYROLL and also the domain name <surepayroll.com>. The website to which the Complainant’s domain name resolves offers the payroll products and services of the Complainant.
The Respondent registered the disputed domain name <sureparoll.com> on November 23, 2005.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, the Complainant contends as follows:
The Complainant has used its registered SUREPAYROLL marks for at least three years in connection with the provision of payroll products and services and has undertaken advertising and marketing under the marks building substantial goodwill and reputation.
The Complainant submits that through its use, promotion and advertising of the SUREPAYROLL marks it has become widely and favourably known in trade and among the public in connection with its products and services.
The Complainant states that it is the fifth largest full-service payroll provider and the leading online payroll provider in the United States of America, that it services 17,000 small businesses throughout the United States of America and is well known among businesses for the services that it provides.
The Complainant asserts that the first use of its registered trademarks and of its domain name <surepayroll.com> predates the Respondent’s registration of the domain name <sureparoll.com>.
The disputed domain name registered by the Respondent is virtually identical and confusingly similar to the SUREPAYROLL marks in which the Complainant has rights.
The only difference between the Complainant’s registered trademark SUREPAYROLL and its domain name <surepayroll.com> and the Respondent’s domain name <sureparoll.com> is the omission of the letter “y”. “Sureparoll” is a common typographical error for the mark SUREPAYROLL based upon the similarity in sound and appearance of “Sureparoll” to SUREPAYROLL. This is a minor typographical change involving dropping a single letter and is a form of “typo-squatting”.
With respect to paragraph 4(a)(ii) of the Policy, the Complainant contends as follows:
The Respondent has no rights or legitimate interests to the domain name <sureparoll.com> and is acting with the intent to mislead and confuse consumers looking for goods and/or services identified by the SUREPAYROLL marks for the Respondent’s own commercial benefit. The Respondent’s domain name resolves to a search engine which includes links to suppliers of payroll goods and/or services and includes links to direct competitors of the Complainant.
The Respondent is not commonly known by the disputed domain name and has not acquired any trademark or service mark rights in the disputed domain name.
With respect to paragraph 4(a)(iii) of the Policy, the Complainant contends as follows:
Typo-squatting is the intentional registration of a domain name that is a misspelling of a distinctive or famous mark. The difference between the disputed domain name and the Complainant’s mark is minor, both visually and aurally, and it is contended that the close similarity is intentional and designed to confuse the public. Typo-squatting is consistently condemned in WIPO UDRP decisions and is evidence of registration and use in bad faith per se.
The fact that the Respondent’s domain name directs Internet users to a site that provides links for products and services of competitors of the Complainant is further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide a 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 it deems applicable.
Notwithstanding the fact that the Respondent has not filed a response, for the Complainant to prevail it must establish each of the following elements of paragraph 4(a) of the Policy:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the registered proprietor of the SUREPAYROLL.COM and SUREPAYROLL marks, the domain name <surepayroll.com> and various other trademarks containing the term SUREPAYROLL.
The Respondent’s domain name <sureparoll.com> differs from the Complainant’s registered marks only by the omission of the letter “y”. Visually and aurally it is very similar.
This close misspelling appears to be a classic example of typo-squatting.
The Panel thus finds that the Respondent’s domain name is confusingly similar to the Complainant’s marks.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent does not have legitimate interests in the disputed domain name as follows: (1) the Complainant is the proprietor of the marks SURPAYROLL.COM and SUREPAYROLL; (2) the Respondent is not licensed or authorized by the Complainant to use any of its trademarks; (3) the Respondent registered the disputed domain name after the Complainants registered its marks and domain name; and (4) the Respondent has failed to produce any evidence to the contrary or to refute the claims made by the Complainant.
Thus the Panel finds that the Respondent does not have rights or legitimate interest in respect to the domain name.
C. Registered and Used in Bad Faith
It is generally held that typo-squatting per se is sufficient to establish registration and use in bad faith under paragraph 4(a)(iii) of the Policy and the Panel considers the disputed domain name to be a typical example of typo-squatting.
Additionally, the Panel considers the following criteria in paragraph 4(b)(iv) of the Policy to have been met in that the Respondent has by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a product or service on its website.
Thus the Panel finds that the disputed domain name was registered and is being used 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 <sureparoll.com> be transferred to the Complainant.
Dated: May 15, 2007