WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ross-Simons, Inc. v. Citynet Network
Case No. D2003-0971
1. The Parties
The Complainant is Ross-Simons, Inc., United States of America ("USA"). The Respondent is Citynet Network, , USA.
2. The Domain Names and Registrar
The disputed domain names are <rossimon.net>, <wwwrosssimon.com> and
<wwwrosssimons.com>. All are registered with eNom, Inc. of the United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2003. On December 9, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. The Center obtained verification confirming for each domain name 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 December 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on January 8, 2004.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on January 15, 2003. The Panel finds 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 Plaintiff sells jewelry, tableware, gifts, collectibles, home décor and related items through retail and outlet stores as well as through mail order and on-line catalogs under the name ROSS-SIMONS. Complainant owns U.S. Trademark Registration No. 1,317,429, issued on January 29, 1985 for the mark ROSS-SIMONS in connection with retail stores and mail-order services specializing in jewelry, china, silver and gift items. The registration claims first use of the mark in commerce in July of 1952. The registration is now incontestable.
Respondent has linked each of its three domain names to websites promoting the sale of giftware, candle holders and accessories through on-line retail catalogs named BRIGHTCANDLES.COM and CANDLE SHOWCASE.
5. Parties Contentions
Complainant asserts that it has sold fine jewelry, tableware, gifts, collectibles, home décor and related items under the name ROSS-SIMONS for over fifty years. Complainants items are sold through retail and outlet stores of the same name, as well as through mail-order and on-line catalogs of the same name. Complainant asserts that it mails more than sixty-million ROSS-SIMONS catalogs to consumers each year, and its on-line catalog, located at "www.ross-simons.com", reaches millions of customers. Complainant asserts that it has built up substantial value and good will in its ROSS-SIMONS mark and registration, by virtue of its continuous and exclusive use of the mark since at least as early as 1954. Complainant asserts it has established a strong customer base and is known throughout its trading area as a provider of quality jewelry, tableware, collectibles, home décor and related items, and retail store, mail-order and on-line catalog services.
Complainant registered the domain name <ross-simons.com> on May 16, 1996 and has operated a website with an on-line catalog from this Internet address since at least December of that year. Complainants registered trademark ROSS-SIMONS is featured prominently on the website, and has been so featured since the website was first uploaded in December of 1996. Complainants website advertises, promotes and sells Complainants jewelry, tableware, collectibles, home décor and related items. In addition, the website communicates special events and promotions to Complainants customers, provides customer service information, and allows customers to create and edit registries for weddings and other special occasions, and to search the registries of others on the website.
Complainant asserts that Respondent registered the Internet domain names <rossimon.net>, <wwwrosssimon.com> and <wwwrosssimons.com> in or around April of 2003, with the domain name registrar eNom, Inc. These domain names were registered, of course, long after Complainant first used and registered its ROSS-SIMONS mark and domain name. Subsequently, Respondent began using the domain names <wwwrosssimons.com> and <wwwrosssimon.com> to point to its website featuring an on-line catalog named BRIGHTCANDLES.COM. About the same time, Respondent began using the domain name <rossimon.net> to point to a website catalog named CANDLE SHOWCASE, which advertises and sells a variety of candles, candle holders, candle accessories and related items. On each of Respondents websites, Respondent advertises and sells a variety of candles, candle holders, candle accessories and related items. Complainant asserts that the items sold on Respondents BRIGHTCANDLES.COM on-line catalog are virtually identical to or of the same type of giftware as that featured or sold by Complainant in its on-line catalog, mail-order catalog and brick and mortar outlets.
Complainant asserts that Respondents three domain names <rossimon.net>, <wwwrosssimon.com> and <wwwrosssimons.com> are confusingly similar to Complainants ROSS-SIMONS registered mark. Complainant asserts that the only difference between its registered trademark and the Respondents domain names <wwwrosssimon.com> and <wwwrosssimons.com> is the insertion of "www" in front of Complainants registered mark and domain name, and the deletion of the hyphen and (in one instance) of one of the four ss in its mark. Complainant asserts the only differences between its registered mark and Respondents domain name <rossimon.net> are the deletion of two of the four ss and of the hyphen.
Complainant asserts that consumers looking for Complainant on the Internet who mis-type or misspell Complainants domain name by typing in one of Respondents domain names instead will not be directed to Complainant, but rather will end up on one of Respondents competing retail websites where Respondent sells its competing home décor and gift items.
Complainant asserts that Respondent has no right or legitimate interest with respect to the domain names because these names do not comprise Respondents legal name or a name which is commonly used to identify Respondent. Respondents on-line catalogs, to which consumers are directed by Respondents domain names, are operated under the names CANDLE SHOWCASE and BRIGHTCANDLES.COM, which of course are not remotely similar to ROSS-SIMONS. Complainant asserts that prior to notice of this dispute, Respondent did not use the domain names <rossimon.net>, <wwwrosssimon.com> and <wwwrosssimons.com> or trademarks corresponding to these domain names in connection with the bona fide offerings of goods or services; and that Respondent has not made a legitimate non-commercial or fair use of the domain names. Rather, Complainant asserts that Respondent is using the domain names <rossimon.net>, <wwwrosssimon.com> and <wwwrosssimons.com> to divert Internet traffic to Respondents websites, where Respondent advertises and sells competing gift and home décor items. Complainant asserts that it never authorized, licensed or otherwise permitted Respondent to use Complainants registered mark ROSS-SIMONS or any confusingly similar variation thereof, nor to apply for or use any domain name comprising or incorporating Complainants registered mark.
Complainant asserts that Respondent registered and used its domain name in bad faith because Respondent is "typosquatting"; i.e. registering domain names which are common misspellings of a mark to which another party has rights; because Respondent has linked those "typosquatting" domain names to website which sell products competing with and virtually identical to Complainants products; and because Respondent has registered several other "typosquatting" domain names confusingly similar to famous or well-known trademarks of others, including "ferrari.net", <4ebay.com>, and others.
Finally, Complainant asserts that Respondent has acted in bad faith by providing false and misleading contact information for its three domain names, lacking a street address, and listing an incomplete fax number and a telephone number that is not in service.
The Respondent did not reply to the Complainants contentions, and therefore is in default. In light of the default this panel may draw such inferences from the default as it considers appropriate (Rule 14(b)). Nevertheless the panel shall proceed to a decision on the Complaint (Rule 14(a)), based on the statements and documents submitted and in accordance with the UDRP Policy and Rules (Rule 15(a)).
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
Policy, Section 4(a)
It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Bossman, WIPO Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
i) Circumstances indicating that [the Registrant 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 documented out-of-pocket costs directly related to the domain name; or
ii) [the Registrant 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 [the Registrant has] engaged in a pattern of such conduct; or
iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] website or location or of a product or service on [its] website or location.
Policy, Section 4(b). These circumstances are non-inclusive, and the panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
i) Before any notice to you 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, 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 are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, Section 4(c).
B. Opinion of the Panel
1. Is the domain name identical or confusingly similar to a trademark in which Complainant has rights?
Each of the domain names is confusingly similar to Complainants registered trademark and domain name. Complainant points out correctly that addition of the letters "www" to the beginning of a registered mark is clear evidence of typosquatting, seeking to prey upon less careful typists who neglect to type the dot after these characters. Deletion of the hyphen between the two words of Complainants mark is of no trademark significance, See Arrow Fastener Co. v. The Stanley Works, 35 USPQ2d 1449, 1455 (2d Cir. 1995); Ticketmaster Corporation v. Cecil Spafford, WIPO Case No. D2002-0944 (November 22, 2002) and decisions cited therein, and deletion of one of the four ss in the middle or at the end of Complainants mark barely changes the appearance and makes no change whatsoever in the pronunciation of the mark. Here again, it would be completely understandable for an Internet user to mistype the Complainants mark by deleting one of the three ss which appear in seriatim when the two words of its mark are combined. See The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Case No. 124516 (<wwwsportsauthority.com> and <wwwthesportsauthority.com> found confusingly similar to THE SPORTS AUTHORITY); Bayer Akiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205 (April 6, 2001) (<wwwbayer.com> found confusingly similar to BAYER); Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 (November 28, 2000) (<wwwpfizer.com> found confusingly similar to PFIZER).
2. Does Respondent have no rights or legitimate interest in the domain name?
Coupled with proper inferences arising from Respondents default, Complainants assertions provide adequate evidence that Respondent has no rights or legitimate interest in the domain names <rossimon.net>, <wwwrosssimon.com>, and <wwwrosssimons.com>. Respondent is not known by the domain names, and offers its candles, candle holders and related items under the names BRIGHTCANDLES.COM and CANDLE SHOWCASE. Respondent has not used the domain names in any legitimate effort to render its own services.
In sum, Complainant has demonstrated that Respondent has no rights or legitimate interests in the domain name.
3. Was the domain name registered and used in bad faith?
Complainant proved that Respondent registered and used the domain name in bad faith three different ways. First, Respondent has used its domain names in an effort to divert traffic from Complainant to Respondent. Policy, Paragraph 4(b)(iv). See also NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (Registration and use of a domain name to re-direct Internet users to websites of competing organizations constituted bad faith registration and use); Tarjeta Naranja SA v. Mr. Dominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295 (April 10, 2001) (to link Internet surfers looking in their browsers for the well-known mark of Complainant to a competitors website is a typical bad faith use under the Policy); AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289 (April 24, 2001) (bad faith use and registration found where Respondent used confusingly similar domain name to sell competing products); Express Messenger Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063 (April 2, 2001) (use of confusingly similar domain name by competitor of Complainant constituted bad faith registration and use). Second, Respondent has engaged in typosquatting in itself a recognized indicator of bad faith. National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011 (January 21, 2003) ("Typosquatting is inherently parasitic and of itself evidence of bad faith."); Medline, Inc. v. Domain Active Pty., Ltd., NAF Case No. 139718 (February 6, 2003). Third, Respondent has also acted in bad faith by seeking to prevent Complainant from reflecting its trademark in a corresponding domain name, evidenced by its pattern of registering domain names confusingly similar to other well-known marks for this purpose. Policy, Paragraph 4(b)(ii).
Complainant has proved amply each of the three elements set forth in Rule 4 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 names <rossimon.net>, <wwwrosssimon.com>, and <wwwrosssimons.com> be transferred to the Complainant.
Jordan S. Weinstein
Date: January 29, 2004