WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xerox Corp. v. Stonybrook Investments, Ltd
Case No. D2001-0380
1. The Parties
Complainant is Xerox Corporation, 800 Long Ridge Road, Stamford, Connecticut 06904, USA.
Respondent is Stonybrook Investments, Ltd. 18 Mopan Street Belize City, N/A 0000 in Belize.
2. The Domain Name and Registrar
The domain name at issue is <zerox.com> (hereinafter referred to as the Domain Name).
The Registrar of the Domain Name is Tucows.com, Inc. (hereinafter referred to as the Registrar).
3. Procedural History
On March 15, 2001, Complainant filed a complaint with the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center). The Complaint was received on March 15, 2001.
On March 21, 2001, Acknowledgement of Receipt by the Center was sent to the Complainant.
On March 22, 2001, the Center sent the Request for Registrar verification.
On March 27, 2001, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the domain name registration;
- the Respondent is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Name.
The Center proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on March 28, 2001.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On March 28, 2001, the Center informed the Respondent of the commencement of the proceedings as of March 28, 2001, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on April 16, 2001.
In a letter dated April 25, 2001, the Center informed the Respondent that it was in default pursuant to the ICANN Policy and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On May 8, 2001, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to May 22, 2001, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint and documents submitted with the Complaint:
Xerox is a global leader in the document management field, offering a wide array of products including copiers, printers, fax machines, scanners, desktop software, digital printing and publishing systems, and related supplies.
The domain name, <xerox.com> was registered by the Complainant on January 9, 1986. The XEROX website, featuring information on many of these goods and services, can be accessed at the URL <xerox.com>. A printout of the main page of the site is attached as Exhibit 3 in the complaint.
Pursuant to the WHOIS record filed by the Complainant, it seems that the Domain Name <zerox.com> was registered on August 5, 1997.
The Domain Name redirects to a website at the URL <casino44.com>, which offers online gambling services. The domain name <casino44.com> is also owned by Respondent Stonybrook. See Casino 44 website printout and WHOIS record for <casino44.com> attached as Exhibit 7 in the Complaint.
5. Partiesí Contentions
i) Contentions of the Complainant with respect to its trademark rights
◆ The Complainant alleges that it is the owner of the following registered U.S. federal trademark registrations (Found in printouts from USPTO database attached as Exhibit 5 of the Complaint). They are the following:
Registration No. 525,717 for the mark XEROX (stylised), filed September 20, 1948, issued May 30, 1950, covering "copies of typewritten or printed matter, drawings, maps, or any other records, sold as such, made by an electrophotographic process."
Registration No. 576,118 for the mark XEROX (stylised), filed October 7, issued June 16, 1953, covering "developers consisting of a mixture of electroscopic powder and granular material used for producing powder images in making electrophotographic copies, and toners comprising electroscopic powder used in connection with granular material to produce developer powders used for making electrophotographic copies."
Registration No. 580,296 for the mark XEROX (stylised), filed October 7, 1952, issued September 22, 1953, covering "film removers comprising liquid solvents capable of dissolving or emulsifying the films of foreign material which accumulate on electrophotographic plates during use."
Registration No. 916,047 for the mark XEROX, filed June 23, 1970, issued July 6, 1971, covering "administration of seminars, courses and programs for the learning, development and improvement of occupational, professional and personal skills, including effective listening, reading, memory, note-taking, discussion, communications, selling and management skills."
Registration No. 957,267 for the mark XEROX, filed December 14, 1971, issued April 17, 1973, covering "digital computers and associated peripheral devices."
Registration No. 1,000,990 for the mark XEROX, filed November 23, 1973, issued January 7, 1975, covering "electrophotographic copying machines."
Registration No. 1,008,036 for the mark XEROX, filed April 22, 1974, issued April 1, 1975, covering "maintenance and repair of electrophotographic copying and duplicating equipment" in Class 37, and "leasing of electrophotographic copying and duplicating equipment" in Class 42.
Registration No. 1,010,557 for the mark XEROX, filed June 7, 1974, issued May 13, 1975, covering "document reproduction and finishing services-namely, electrophotographic copying and duplicating; microfilming; providing paper copies from roll film and microfiche; sorting, folding, collating, binding, covering, stapling, punching, cutting, and trimming of copies, documents and printed matter."
Registration No. 1,661,698 for the mark XEROX, filed October 10, 1990, issued October 22, 1991, covering "photocopy and bond paper."
Registration No. 1,662,340 for the mark XEROX, filed December 6, 1990, issued October 29, 1991, covering "facsimile transmitting and receiving machine."
Registration No. 1,893,108 for the mark XEROX & Design, filed May 2, 1994, issued May 9, 1995, covering "copying, recycled, and coloured paper."
Registration No. 2,070,371 for the mark XEROX QUALITY SERVICES, filed March 17, 1995, issued June 10, 1997, covering "business management consulting in work processes, productivity and problem solving" in Class 35, and "educational and training services, namely providing classes and workshops in the field of work processes, productivity and problem solving" in Class 41.
Registration No. 2,075,858 for the mark XEROX, filed September 26, 1996, issued July 1, 1997, covering "clothing, namely, jackets, sweaters, shirts, vests, pants, shorts, hats, scarves, ties, gloves, socks and shoes."
Registration No. 2,091,852 for the mark THE XEROX COMPANY STORE, filed July 3, 1995, issued August 26, 1997, covering "retail stores featuring chemical supplies, computer supplies, and office supplies."
Registration No. 2,175,549 for the mark INCONCERT, INC. A XEROX NEW ENTERPRISE COMPANY & Design, filed September 26, 1996, issued July 21, 1998, covering "computer software, namely, for workflow and document management."
Registration No. 2,193,171 for the mark XEROX SCAN MANAGER, filed February 12, 1997, issued October 6, 1998, covering "computer software used for high resolution document creation, scanning and printing in the field of document management."
Registration No. 2,232,757 for the mark XEROX PROFESSIONAL DOCUMENT SERVICES, filed February 12, 1997, issued March 16, 1999, covering "business management consultation."
Registration No. 2,244,261 for the mark XEROX PRODUCTIVITY CENTRE, filed July 22, 1997, issued May 11, 1999, covering "multifunctional device, namely, photocopier, laser printer and optical scanner."
◆ The Complainant also alleges that it owns the domain name <xerox.com> and that the <xerox.com> domain name was registered on January 9, 1986, long before Respondent registered the Domain Name.
◆ The Complainant alleges that its trademark rights in the mark XEROX and variations thereof, based on its trademark filings and on its common law rights acquired through the use of the XEROX mark, trade name, and domain name, predate the registration of the Domain Name by Respondent.
◆ The Complainant alleges that the XEROX mark is unique and not diluted. The Complainant argues that as a coined trademark, the XEROX mark is inherently strong. Coined marks, such as XEROX or KODAK, are considered the strongest marks and are accorded the highest degree of trademark protection.
◆ The Complainant alleges that by virtue of (i) the arbitrary nature and hence the inherent strength of the XEROX mark as applied to Xeroxís vast array of document-related goods and services, (ii) the millions of consumers world wide that purchase Xeroxís goods and services and (iii) Xeroxís extensive use, promotion, and registration of its XEROX mark, the XEROX mark has become famous.
◆ The Complainant alleges that the XEROX trademark is one of the most famous trademarks in the world. To support this contention, the Complainant states that in July 2000, one of the worldís leading brand marketing and consulting firms Ė Interbrand Ė published its annual report which ranks the worldís most valuable brands. The XEROX brand is ranked 27th, valued at nearly $9.7 billion. (Found in the Interbrand materials attached as Exhibit 4 of the Complaint)
◆ The Complainant alleges that, having been used by the Complainant in connection with its business for more than 50 years, and having been widely promoted and advertised among members of the general consuming public, the XEROX mark has become valuable property of the Complainant. Furthermore, the Complainant alleges that the XEROX Marks enjoy unquestionable fame as a result of favourable public acceptance and recognition world-wide.
ii) Contentions of the Complainant with respect to the Identity or Confusing Similarity between the Domain Name and its Trademarks
◆ The Complainant alleges that the Domain Name is a confusingly similar variation of the famous XEROX mark, trade name, and <xerox.com> domain name.
◆ The Complainant alleges that, as a result of Respondentís registration and use of the Domain Name, Internet users attempting to reach the <xerox.com> website may mis-type the domain name and mistakenly believe that they arrived at Xeroxís own website, or may be misled into believing that Xerox sponsors or endorses Respondentís website. The Complainant further alleges that Respondent maliciously preys upon Internet users who do not view the address line of their browser to realise that they had made a typographical error before being taken to Respondentís website.
◆ The Complainant alleges that the Domain Name incorporates an obvious typographical and phonetically identical misspelling of Complainantís unquestionably famous XEROX mark and <xerox.com> domain name, and is confusingly similar to the XEROX mark.
To support these contentions, the Complainant refers to the following decisions:
Aveda Corp. v. Evita Marketing, Inc., 706 F. Supp. 1419 (D. Minn. 1989), (finding AVITA to be confusingly similar to AVEDA);
Dr. Ing. h.c.f. Porsche AG v. Zim, 481 F. Supp. 1247 (N.D. Tex. 1980), (finding PORSHA to be confusingly similar to PORSCHE);
Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, (C.C.P.A. 1968), (finding BEEP to be confusingly similar to VEEP);
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 U.S.P.Q. 461 (T.T.A.B. 1985), (finding SEYCOS to be confusingly similar to SEIKO);
Caterpillar Tractor Co. v. Katrak Vehicle Co., 172 U.S.P.Q. 409 (T.T.A.B. 1971), (finding KATRAK to be confusingly similar to CAT TRAC);
Cluett, Peabody & Co. v. Wright, 46 F.2d 711 (C.C.P.A. 1931), (finding AIR-O to be confusingly similar to ARROW).
iii) Contentions of the Complainant with respect to the Absence of Rights or Legitimate Interests of the Respondent
◆ The Complainant alleges that pursuant to Section 4(c) of the UDRP: (i) Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the Domain Name in connection with a bona fide offering of goods or services; (ii) Respondent is not and has not been commonly known by the Domain Name; and (iii) Respondent is not making legitimate non-commercial or fair use of the Domain Name, without intending to mislead and divert consumers or to tarnish Complainantís XEROX mark for commercial gain.
◆ The Complainant alleges that in at least six other cases decided under the UDRP, Respondent Stonybrook (sometimes spelled "Stoneybrook"), and the related entity Data Art Corp., have been found to be cybersquatters engaged in a systematic pattern of registering domain names in bad faith, as Respondent has done here. To support this contention, the Complainant cites the following decisions:
Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587 (finding that Data Art Corp. and Stonybrook Investments were related entities);
Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274 (finding use of disputed domain name in connection with a gambling website constituted bad faith);
National Geographic Society v. Stonybrook Investments, Ltd., NAF Case No. FA0012000096263 (finding that Stonybrookís taking possession of the disputed domain name from Data Art Corp. after the original registrant received a cease and desist letter from complainant constituted bad faith);
Wells Fargo & Co. v. Stoneybrook, NAF Case No. FA0009000095690;
British Broadcasting Corporation v. Data Art Corp./Stoneybrook, WIPO Case No. D2000-0683;
AltaVista Company v. Stonybrook, WIPO Case No. D2000-0886.
◆ The Complainant alleges that in addition to the misappropriation of the famous XEROX mark, Respondent has registered variations of the following famous trademarks and trade names as domain names: DELTA; AMERICAN AIRLINES; BUDWEISER; SOUTHWEST AIRLINES; UNITED AIRLINES; LOOKSMART; LONELY PLANET; TRAVELOCITY; FIDELITY; NETSCAPE; NORTHWEST AIRLINES; NISSAN; REAL PLAYER; NORTON; MCAFEE; SUBARU; LEXUS; CBS MARKETWATCH; FIAT; RAGINGBULL; SPORTS ILLUSTRATED; SATURN; AMERICA WEST; ST. LOUIS RAMS; MERRYLL LYNCH; HOTMAIL; LYCOS; SPRINT PCS; OFFICE MAX; NEW YORK TIMES; HOTBOT; and EXCITE.
To support this contention, the Complainant attached NSI WHOIS printouts listing domain names registered to "Stonybrook Investments" and "Stoneybrook Investments" as Exhibit 8. The Complainant adds that these WHOIS printouts are each limited to 50 records, so it is possible that the Respondent owns more domain names than those listed in Exhibit 8 of the Complaint.
◆ The Complainant alleges that the Respondent is mentioned in a September 18, 2000, MSNBC article entitled "Making Money off Typosquatting". The article explains that Respondent is one of several related companies (in a group which includes Data Art Corp.) that has registered hundreds of domain names that are slight variations of well-known trademarks, and uses the domain names to generate revenue from online advertising companies. To support this contention, the Complainant attached a copy of the MSNBC article as Exhibit 9 of the Complaint.
◆ The Complainant alleges that U.S. courts have held that "typosquatting", such as Respondentís registration and use of the Domain Name <zerox.com>, violates the Anticybersquatting Consumer Protection Act ("ACPA").
To support this contention, the Complainant cites the following decisions:
Shields v. Zuccarini, 54 U.S.P.Q.2d 1166 (E.D. Pa. 2000) (finding that defendantís registration and use of typographical variations of plaintiffís mark as domain names for purposes of diverting Internet traffic and reaping profit violated the ACPA);
Electronics Boutique Holdings Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705 (E.D. Pa. 2000) (same).
iv) Contentions of the Complainant with respect to the Registration and Use of the Domain Name in Bad Faith
◆ The Complainant alleges that Respondentís registration and use of the Domain Name meet the bad faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Xerox's XEROX mark as to the source, sponsorship, affiliation and endorsement of Respondentís website and of the services offered at the site.
To support its contention, the Complainant cites the following decisions:
The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038, (bad faith found where respondent registered domain name with knowledge of complainant's mark and used website to seek commercial gain);
Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0241 (same).
◆ The Complainant alleges that the Respondentís registration and use of the Domain Name meet the bad faith element set forth in Section 4(b)(ii) of the UDRP. Specifically, Respondent has engaged in a pattern of registering dozens of domain names that incorporate well-known trademarks owned by third parties.
◆ The Complainant alleges that Respondentís registration and use of the Domain Name in connection with a website offering online gambling tarnishes and thereby dilutes the distinctiveness of Complainantís famous XEROX mark. To support this contention, the Complainant cites the following decisions:
Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 (finding respondentís use of disputed domain names in connection with online gambling tarnished complainantís famous trademarks in contravention of Paragraph 4(c)(iii) of the UDRP);
TicketMaster Online-CitySearch, Inc. v. Alex Vlasov, NAF Case No.: FA0005000094739 (same).
◆ The Complainant alleges that given the uniqueness and fame of the XEROX mark, there is no plausible explanation for Respondentís registration of the disputed Domain Name other than to trade on the goodwill of Xerox and its famous and well-respected XEROX mark and name.
To support this contention, the Complainant cites the following decisions:
Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (holding that registration of coined, well-known TELSTRA mark could not have been for any plausible reason other than to trade on the goodwill of trademark owner);
Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (inferring respondentís bad faith intent to sell <cellularonechina.com> domain name where name would not otherwise be commercially useful without violating complainantís rights in the "unique and inherently distinctive coined word" CELLULARONE).
The Respondent has failed to file a timely response with the Center.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the domain name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and
ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identity or Confusing Similarity between the Domain Name and Complainant's trademark
The Panel has reviewed the documentary evidence provided by the Complainant regarding its rights in the trademark XEROX and finds that the Complainant has satisfactorily shown that it owns such rights.
With respect to the confusing similarity between Complainant's trademark and Respondent's Domain Name, previous decisions extensively discussed the subcategory of cybersquatters who are sometimes called "typosquatters". One of these decisions is The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, where the appointed panel held: "In determining whether a domain name is confusingly similar to a trademark, the intention of the domain name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed. The panel finds that the disputed domain name are likely to attract customers of the broker seeking to access the brokerís website who misspell or err in typing the domain address they seek. The close misspellings at issue here are confusingly similar to the Complainantís mark."
In this case, the second-level part of the Domain Name, "zerox", is almost phonetically and visually identical to the Complainant's trademark XEROX. Thus an average internet user who has an imperfect knowledge or recollection of the name, XEROX, might accidentally spell it with the letter Z instead of X at the beginning of the word, merely because of the way the Complainant's trademark is pronounced. The Panel is of the opinion that this fact alone is sufficient to conclude that the Domain Name is confusingly similar to Complainant's XEROX trademark.
Notwithstanding the previous paragraph, the Panel also notes that the letters "X" and "Z" are situated side by side on a QWERTY computer keyboard, which, in the opinion of the Panel, constitutes an additional element that increases the confusing similarity between the Domain Name and the trademark, bearing in mind that the Complainant uses its trademark in association with its web site.
Therefore, the Panel finds that the Domain Name is similar to a trademark in which the Complainant has rights.
Rights or Legitimate Interests in the Domain Name by Respondent
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that Respondents have commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
In the present dispute, the Complainant has introduced unchallenged evidence that it owns rights in the trademark XEROX (see Exhibit 5) and that the domain name are used to redirect consumers to an on-line casino (see Annex 6 and 7 to the Complaint).
In this case, there is no evidence that would allow the Panel to conclude that some circumstances enumerated at paragraph 4(c) of the ICANN Policy apply to Respondent's situation, as the Complainant rightly asserts.
By demonstrating its rights in its trademarks, by asserting that Respondent is not licensed by the Complainant to use those marks and by stating that Respondent's web site has no affiliation with the Complainant, and taking into account Respondent's failure to respond to the Complaint, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Domain Name.
While no direct conclusion can be drawn from a failure by Respondents to provide explanation, in some circumstances, a negative inference can be drawn from the lack of justification by the Respondents, especially when direct evidence, such as the correspondence submitted by Complainants, points in the direction of an absence of rights or legitimate interest, in particular in regard of paragraphs 4(c)(i), (ii) and (iii) of the Policy. In the present case, the Panel so finds.
In this case, as was the case in LLS International v. Mark Freeman, WIPO Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Ltd., WIPO Case No. D2000-0848, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests it might have had in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy.
For those reasons, and in absence of any evidence to the contrary from the Respondent, the Panel concludes that, on balance of probabilities, the Respondent has no rights or legitimate interests in the Domain Name.
Bad faith in Registration and Use of the Domain Name by the Respondent
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith.
As to Registration in Bad Faith
Paragraph 2 of the ICANN Policy provides that, when someone registers a domain name, he represents and warrants to the registrar, notably, that, to his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. The same paragraph also provides that it is incumbent on the person who registers the domain name to determine whether the domain name registration infringes or violates someone else's rights.
In the present case, the Panel finds that, since Complainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it wasn't aware that it was infringing on Complainant's trademark rights, specially given that the Complainant is a coined word.
In addition, the Panel is of the opinion that the way in which the domain name is chosen, i.e. common spelling errors in well-known domain name and corresponding trademarks, clearly shows, as the Complainant argues, that the sole possible purpose for which Respondent has registered or acquired the Domain Name is to intentionally attempt to attract, for commercial gain, Internet users to its web site.
This finding is supported by the allegation made by the Complainant purporting to establish that the domain name is leading to an online casino, a fact that the Panel has been able to corroborate on its own, and by the evidence showing that numerous other domain names confusingly similar to trademarks of others were also registered by the Respondent for the same purpose. (See Exhibit 8.)
The Panel therefore concludes that the Respondent has registered the Domain Name in bad faith.
As to Use in Bad Faith
With respect to bad faith in the use of the Domain Name, the Complainant cited six domain name administrative panel decisions in which Respondent was found to be involved.
In Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc. (WIPO Case No. D2000-0587), the Respondent in the present dispute had registered the domain names <ayhoo.com>, <chatyahoo.com>, <eeeyahoo.com>, <eocities.com>, <foreleven.com>, <gecities.com>, <geocitie.com>, <citiesyahoo.com>, <geocitis.com>, <geocties.com>, <geosities.com>, <gocities.com>, <goecities.com>, <iahoo.com>, <myahoo.com>, <myyahoo.com>, <our11.com>, <wwwchatyahoo.com>, <wwwfour11.com>, <wwwgeocities.com>, <wwwmyyahoo.com>, <yafoo.com>, <yahll.com>, <yahooguide.com>, <yahoonews.com>, <yahoosearch.com>, <ahomail.com>, <yahos.com>, <yahow.com>, <yahu.com>, <yahuu.com>, <yahwho.com>, <yahwoo.com>, <yanoo.com>, <yauoo.com> and <yyahoo.com>.
In its decision, the appointed panel wrote: "Respondent is obviously engaging in "typosquatting," a practice that has been condemned and been found to be confusingly similar to the marks which they mimic. See, e.g., American Media Operations, Inc. v. Erik Simons, ICANN Case No. AF-0134; AOL v. Asian On-Line This Domain For Sale, ICANN Case No. FA 00040000094636; Yahoo! Inc. v. Zviely, et al, ICANN Case No. D2000-0273. (...) Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainant's mark when entering the URL, which includes Complainant's, domain name. Clearly, Respondent is deriving economic benefit from this practice, either by attracting users to Respondent's web site, where goods and services are offered, or by the receipt of compensation from the owners of other web sites for delivering users to those sites. This constitutes bad faith registration and use as defined by paragraph 4(b)(iv) of the Policy." The appointed panel then ordered that the disputed domain names be transferred to the Complainants.
In AltaVista Company v. Stoneybrook aka Stonybrook Investments, (WIPO Case No. D2000-0886), the Respondent in the present dispute had registered the domain names <alfavista.com>, <algavista.com>, <altavisfa.com>, <altavisha.com>, <altavitsa.com>, <altavsta.com>, <altawista.com>, <atavista.com>, <atlavista.com>, <atlavisa.com> and <wwwalavista.com>.
In its decision, the appointed panel wrote: "Respondent has registered a number of domain name that Internet users are likely to employ inadvertently as they misspell Complainantís mark and domain name when attempting to address Complainantís website. Respondentís choice of multiple misspelled versions of Complainantís mark and domain name was deliberate. This is evidenced by the well-known nature of Complainantís mark and Respondentís similar multiple-misspelled registrations of other well-known marks and domain name. Respondent has intentionally sought to use Complainantís mark to confuse consumers as to sponsorship of, or location of a service on, a website or websites that Respondent operates for commercial gain. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy." The appointed panel ordered that the disputed domain names be transferred to the Complainant.
Considering the striking similarities between previous cases involving the Respondent and the present dispute, the Panel finds that those cases constitute "logically probative" evidence of Respondent's bad faith, within the meaning that was given to that notion by Lord Denning in Mood Music Publishing Co. v. De Wolfe Ltd., (1976), 1 All E.R. 763 (C.A.). (The plaintiffs, in an action for infringement of copyright, sought to adduce evidence that in three other cases, the defendants had reproduced musical works, which were subject to copyright.) In that decision, Lord Denning stated the test of admissibility of the similar fact evidence in civil cases as follows: "In civil cases the courts will admit evidence of similar facts if it is logically probative, that is, if it is logically relevant in determining the matter which is in issue; provided that it is not oppressive or unfair to the other side; and also that the other side has fair notice of it and is able to deal with it."
The Panel finds that the circumstances surrounding the current dispute are strikingly similar to the circumstances prevailing in the previous domain name disputes cited by the Complainant in which the Respondent was involved. Those circumstances indicate not only that the Respondent attempts to piggyback on the goodwill vested in Complainant's trademarks in this case, but also that it has engaged in a pattern of such behavior on a fairly large scale.
Furthermore, the Panel is of the opinion that the Domain Names are so obviously connected with the Complainant and its services that their very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net WIPO Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The Panel finds that this behavior, in accordance with paragraph 4(b) of the ICANN Policy, constitutes evidence of bad faith in the registration and use of the Domain Name.
For the foregoing reasons, the Panel finds that:
- the Domain Name registered by the Respondent is confusingly similar to trademarks in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel therefore orders that the Domain Name:
<zerox.com> be transferred to the Complainant.
Dated: May 22, 2001