5. Parties’ Contentions

A. Complainant

Complainant contends that there can be no doubt that Respondent’s <wwwclassmates.com> domain name is confusingly similar to Complainant’s CLASSMATES marks. It notes that the only difference between the disputed domain name and Complainant’s CLASSMATES marks is the addition of the “www” prefix. According to Complainant, the registration and use of the <wwwclassmates.com> domain name by Respondent amounts to unlawful typosquatting.

Complainant further urges that Respondent has no rights or legitimate interests in the <wwwclassmates.com> domain name because Respondent has no trademark or intellectual property rights in the name or any word or part thereof and is not commonly known by the domain name. “Instead, Respondent’s inclusion of a ‘www’ prefix with Complainant’s registered CLASSMATES marks is merely an attempt to trade upon the goodwill associated with those marks, mislead and divert consumers to the website of one of Classmates.com’s competitors,” Complainants asserts.

Complainant argues that the disputed domain name was registered and is being used in bad faith because: (1) Respondent has suggested that Complainant offer a significant amount of money in order to purchase the infringing domain name; (2) Respondent has registered and is using the infringing domain name primarily for the purpose of trading upon the goodwill of Complainant’s CLASSMATES marks in a blatant attempt to disrupt Complainant’s business by luring Internet users to a competitor’s site; and (3) Respondent’s clear aim is to create a likelihood of confusion among Complainant’s consumer base due to a common typographical error (i.e., the failure to include a period after “www”) made when typing in Complainant’s Internet address and well-known name. “Respondent’s unlawful typosquatting should not be tolerated”, Complainant asserts.

B. Respondent

In the Response, Respondent makes two arguments. First, that the evidence does not support a determination that Respondent registered the domain name primarily for the purpose of selling it to Complainant and, second, that the term “classmates” is generic and, thus, not a protectable mark. In support of the latter argument, Respondent cites a 1999 USPTO guideline regarding the registration of domain names and a dictionary definition of the term “classmates” as “a member of the same class at school”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <wwwclassmates.com> is, for all intents and purposes, identical to the CLASSMATES marks. The domain name incorporates the mark in its entirety. The addition in the domain name of the top-level domain “com” is without legal significance. See VAT Holding AG v. vat.com, WIPO Case No. D2000-0607 (<vat.com> identical to VAT trademark). Further the use of the prefix “www” in the challenged domain name does not avoid a determination of identity or confusing similarity under element 1 of the Policy. See New Century Corp. v. Dakasi, WIPO Case No. D2006-1630 (<wwwhome123.com> identical or confusingly similar with HOME 1-2-3 mark); Network Solutions, LLC v. KerryWeb Enterprise, Inc., WIPO Case No. 2006-1560 (<wwwnetworksolutions.net> confusingly similar to NETWORK SOLUTIONS mark).

The Panel further determines that Complainant has rights in the CLASSMATES marks. These rights are manifested in the U.S. and CTM registrations for the CLASSMATES marks, as well as the extensive use and advertising of such marks. The issuance of the U.S. registrations to Complainant gives rise to a presumption that the CLASSMATES mark is valid; that is, not generic.¹

In support of its argument that the term “classmates” is generic, Respondent refers to dictionary definitions for such term. However, in assessing whether a term is generic, the term must be viewed in the context of the goods and/or services on or in connection with which it is used. Terms such as “shell”, “apple”, and “dove” are found in the dictionary but, yet, few would seriously contend that, as used in connection with gas and oil operations, computers, and soap, such terms are not protectable marks.

Respondent’s reliance on a 1999 USPTO guideline regarding the registration of domain names does not support the contention that CLASSMATES is generic. That guideline provides that a term composed of a generic term and a top-level domain generally may not be registered.² However, as noted above, the USPTO has determined that CLASSMATES, as used by Complainant, is not generic.

B. Rights or Legitimate Interests

Given Respondent’s use of a domain name that is identical or confusingly similar to Complainant’s mark in connection with a site that competes with Complainant, the Panel finds that the domain name is not being used in connection with a bona fide offering of goods or services. In addition, no evidence has been offered that Respondent is commonly known by the domain name or is using the domain name in a noncommercial or fair manner.

As a result, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Panel concludes that the domain name was registered and is being used in bad faith. By engaging in typosquatting, Respondent has intentionally attempt to attract, for commercial gain, Internet users to the “www.reunion.com” site by creating a likelihood of confusion with Complainant’s CLASSMATES marks as to the source, sponsorship, affiliation or endorsement of the site or of the services offered at such site, within the meaning of paragraph 4(b)(iv) of the Policy.³

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 <wwwclassmates.com> be transferred to Complainant.

Jeffrey M. Samuels
Sole Panelist

Dated: August 7, 2007

¹ See 15 U.S.C. §1057(b). The Panel notes that Complainant’s U.S. registrations were issued under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f). A section 2(f) registration indicates that the subject mark, while merely descriptive as originally used, has been found, as a result of longstanding and substantially exclusive use, to have acquired the necessary distinctiveness to be protectable.

² See In re Oppenhahl & Larson, 373 F.3d 1171 (Fed. Cir. 2004).

³ The Panel agrees with Respondent that the evidence does not establish that the domain name was registered or acquired primarily for the purpose of selling the registration to Complainant, within the meaning of paragraph 4(b)(i) of the Policy. However, such a determination is not required for the Panel to find bad faith registration.

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0825.html

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