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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Simon & Schuster, Inc. v. Domain Administrator Limited

Case No. D2008-0278

1. The Parties

The Complainant is Simon & Schuster, Inc., of New York United States of America, represented by CBS Law Department, United States of America.

The Respondent is Domain Administrator Limited Auckland, of New Zealand.

2. The Domain Name and Registrar

The disputed domain name <simonandshuster.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2008. On February 26, 2008, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the domain name at issue. On February 26, 2008, eNom, Inc 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 February 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2008.

The Center appointed Adam Samuel as the sole panelist in this matter on April 1, 2008. 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 publisher. It owns a trademark registration with the United States Patent and Trademark Office for the trademark SIMON AND SCHUSTER, Reg. No. 1,192,095 registered on March 16, 1982. On August 17, 2002, the Respondent registered the domain name in issue.

5. Parties’ Contentions

A. Complainant

These are the Complainant’s contentions. It should not be assumed that the Panel accepts all of them.

The Complainant has used the trade name and trademark SIMON & SCHUSTER since 1924. It owns trademark registrations in the United States of America and elsewhere for that mark. It owns and operates a website under the domain name <simonsays.com>. After the Complainant’s trademark registrations, the Respondent registered the domain name in issue. Aside from the addition of “.com”, the use of the word “and” instead of the ampersand which cannot be reproduced in a domain name and the deletion of the letter ‘c’, the domain name is identical to the Complainant’s trademark. It is phonetically similar. The disputed domain name is, therefore, confusingly similar to the Complainant’s trademark.

The Respondent is not a licensee of the Complainant. Nor has the Complainant granted any permission to the Respondent to use the Complainant’s mark or any domain name incorporating it or one confusingly similar to it. The Respondent is not commonly known by the name “simonandshuster” or any variation on it. The Respondent’s attempt to take advantage of a predictable spelling error made by internet users seeking the Complainant’s commercial website for the purposes of diverting internet traffic to the Respondent’s website in order to generate sales cannot be relied upon to establish rights or a legitimate interest in respect of the disputed domain name.

The Respondent chose a domain name that was confusingly similar to the Complainant’s mark. Given the fame and world renown of the mark, the Respondent knew or should have known of the Complainant’s registration of its mark prior to registering the domain name in issue. The Respondent chose a domain name that was confusingly similar to the Complainant’s mark precisely because of the widespread popularity of and commercial magnetism associated with the mark. Through its use of the disputed domain name, the Respondent intends to benefit from Internet users’ possible spelling errors and by including links on its website to companies competing with the Complainant, the Respondent has taken advantage of the Complainant’s strong reputation and the brand recognition of the Complainant’s various trademarks and is intentionally attempting to attract for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel should take into account the Respondent’s history of bad faith registrations and use of domain names as evidenced by many prior administrative decisions against the Respondent as further evidence of bad faith. Finally, the Respondent has ignored the Complainant’s request to transfer the domain name which constitutes further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(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.

A. Identical or Confusingly Similar

The domain name consists of a marginal misspelling of the Complainant’s trademark SIMON AND SCHUSTER and the suffix “.com”. The Complainant’s mark and the domain name in issue both consist of a combination of a well-known first name and a made-up name with no independent meaning and in the latter case the suffix “.com”. Leaving aside the “.com”, the two words are phonetically identical and easy to mistake for each other by virtue of the addition of omission of the almost silent letter ‘c’.

This appears to be a classic example of “typo-squatting”, where a domain name attracts Internet users who make a small typing error.

In Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020, the Panel said on this subject:

Here, the domain name has two differences from the registered mark: the addition of the “.com” suffix and the substitution of “i” for the first “a” in the trademark.

The substitution of the “i” for the first “a” is visually apparent on close inspection. The domain name and the trademark, MIRAVAL, however, are phonetically similar. There are various ways that both versions of the word may be pronounced and some of these will or may sound the same or similar. The word element of the domain name created by the substitution of the “i” for the “a” is not a plain English word or otherwise generic. There are likely to be circumstances where a person might unintentionally type in the domain name instead of the trademark term, particularly having regard to imperfect recollection and the potential for persons using the Internet to “guess” at domain names. In these circumstances a finding of confusing similarity in line with the “typosquatting” cases is appropriate. See e.g. AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937; America Online, Inc. v. Johuathan Investments, Inc. and AOLLNEWS.COM, WIPO Case No. D2001-0918; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

Consequently, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant’s registered trademark rights.

For the same reasons, the Panel concludes here that the domain name is confusingly similar to the Complainant’s registered trademark.

B. Rights or Legitimate Interests

The Respondent is not called “Simonandshuster” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The names “Simon” and “Shuster” have no independent meaning except that “Simon” is a well-known first and occasional family name. The website to which the disputed domain name resolves refers to “Simon and Schuster”, making it clear that the Respondent knows of the Complainant’s existence. In the Panel’s view, there was no reason for the Respondent to combine “Simon” and “Shuster” in a domain name except to mimic the Complainant’s name and by extension its trademark. The Respondent would have either known or closed its eyes to the fact that the Complainant owned trademark rights in that name. This mark was registered well before the domain name in issue was acquired.

Other exhibits to the Complaint show that on January 29, 2008, the domain name was being used to promote businesses competing with the Complainant.

The only explanation available, in the absence of a Response, of what has happened is that the Respondent’s motives in registering and using the sites were, as the Complainant says, simply to disrupt the Complainant’s relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith. The Respondent clearly knew of the Complainant’s existence and prominence in its field and with it the likelihood that the Complainant owned registered trademarks confusingly similar to the disputed domain name. The Respondent appears to have sought to divert people who mistyped the Complainant’s name to the website of other businesses to earn “click-through” revenue or just to disrupt for whatever reason the Complainant’s business.

This view is supported by the view expressed in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568:

Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website by creating a likelihood of confusion with the complainant’s mark as to the source” of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.

For all these reasons, the Panel concludes that the domain name was registered and is being used in bad faith.

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 <simonandshuster.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist

Dated: April 7, 2008