WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Charles Schwab & Co, Inc. v Polanski
Case No. D2001-0959
1. The Parties
The Complainant is Charles Schwab & Co, Inc., of 101 Montgomery Street, San Franscisco, California 94104, United States of America. The Complainantís authorized representative is Fross Zelnick Lehrman & Zissu, P.C., Attorneys (Barbara A. Solomon) of New York City, U.S.A.
The Respondent is Polanski, of Ul. Dietla 13/2 Krakow, Poland 31-031. The Respondent is unrepresented and has taken no part in the administrative proceeding.
2. The Domain Name and Registrar
The domain name at issue is <wwwscwhab.com> (hereafter called "the Domain Name"). The Domain Name is registered with BulkRegister.com Inc., of 10 E Baltimore Street, Suite 1500, Baltimore, Maryland 21202, U.S.A. (hereafter called "the Registrar"). The Domain Name was registered on August 17, 2000.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance with the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on July 26, 2001 (email) and July 27, 2001 (hard copy).
The Center acknowledged receipt of the Complaint on July 31, 2001. On the same day the Complainantís representative advised the Center by email, and the Respondent at <email@example.com>, that the courier company had advised that the hard copy of the Complaint could not be delivered to the Respondent because the address "Polanski Ul. Dietla 13/2 Krakow, Poland 31-031" was either inaccurate or incomplete.
On August 1, 2001, the Center requested verification of registration details from the Registrar. On the same day the Registrar responded, confirming as follows:
(a) that it had received a copy of the Complaint on August 1, 2001.
(b) that the Domain Name is indeed registered with the Registrar.
(c) that the Respondent is the current Registrant of the Domain Name.
(d) that the Policy applies to the Domain Name.
In the same email the Registrar advised full details of the Respondent as follows:
Polanski Ul. Dietla 13/2 Krakow, PL 31-031, PL
The Registrar advised that the Administrative and Technical Contact for the Domain Name is Victor Lashenko, and gave the corresponding contact details. The address provided for Mr. Lashenko was an address in Kiev, Ukraine.
The Registrar indicated that the current status of the Domain Name is "Registrar Lock".
On August 2, 2001, the Center satisfied itself that the Complaint complied with the formal requirements of the Rules and the Supplemental Rules.
Also on August 2, 2001, the Center emailed to the Respondent at <mail.russa.com> and to <firstname.lastname@example.org>, a form of Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint (minus attachments).
Copies were also communicated to ICANN and to the Registrar by email, without attachments.
The Notification to the Respondent advised that the commencement date of the Administrative Proceeding was August 2, 2001, and that the Respondentís last day for sending a response to the Complainant and to the Center would be August 23, 2001.
The email communication to <email@example.com> was ineffective. The mail delivery subsystem service reported on August 2, 2001, that that address had a permanent fatal error, and advised: "relaying denied".
The Notification of Complaint and Commencement of Administrative Proceeding, and copy Complaint (with attachments), were dispatched by DHL courier to the Respondent and to Victor Lashenko, at the Krakow and Kiev addresses respectively, on August 2, 2001. In each case the attempted deliveries were unsuccessful Ė the Notification to the Respondent was returned to the Center on August 9, 2001, and the documents sent to Victor Lashenko in Kiev, Ukraine, were returned to the Center on August 15, 2001.
In the absence of any response to the Complaint, on August 29, 2001, the Center emailed a formal notification of the Respondentís default to the Respondent at <firstname.lastname@example.org> and <email@example.com>, with a copy to the Complainant.
There was an error in the name of the Complainant in the Notification of Respondentís Default document, and that was corrected by the Center on September 5, 2001, by email advice to the Respondent (copy to the Complainant) attaching a copy of the corrected form of Notification of Respondent Default.
On August 30, 2001, the Center again received notice that the email delivery to <firstname.lastname@example.org> had been ineffective. The message reported "permanent fatal errors Ö relaying denied".
A single member Panel has been requested by the Complainant, and the requisite fee has been paid.
On September 5, 2001, the Center invited Warwick Alexander Smith, of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On September 6, 2001, Warwick Alexander Smith advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On September 10, 2001, the Center forwarded to Warwick Alexander Smith by courier the relevant submissions and the record. They were received by him on September 18, 2001. In terms of paragraph 15(b) of the Rules, in the absence of exceptional circumstances, the Panel is required to forward its decision by September 24, 2001. No other proceedings relating to the Domain Name have been notified to the Panel.
The Panel agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
The Panel is satisfied that the Center has complied with its obligations under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
4. Factual Background
The Complainant has been in business for over 25 years, and is now recognized in the financial services industry as the worldís largest discount and on-line broker. The Complaint says that the Complainant has over 7.5 million active accounts, client assets of over $700 billion, and millions of active on-line accounts. The Complainant operates through 403 branches in the United States, as well as in Puerto Rico and the U.S. Virgin Islands.
The Complainant, together with other non-United States affiliated broker-dealers within the Schwab Group, provides international investors with access to the United States and various other securities markets.
The Complainantís parent company, The Charles Schwab Corporation, has also established a substantial international presence. The Charles Schwab Corporation carries on business in the United Kingdom, Canada, Hong Kong, Japan, Australia, the Cayman Islands and Brazil. Another member of the Group, Charles Schwab Europe, pioneered Internet brokerage in the United Kingdom.
The Complainant has produced a number of articles describing the activities of the Group of which the Complainant is part, including articles from "Fortune", "USA Today", the "Dow Jones International News", "The South China Morning Post", "The Times (UK)", "The Asian Wall Street Journal", "Investment News", "The Wall Street Journal, Europe", and "The Australian Financial Review". One such article published in the May 1999 edition of "Business 2.0", prominently features the mark SCHWAB, and describes generally the huge growth in the brokerage industry on-line. The article reports that, in 1998, the number of the Schwab Groupís on-line accounts doubled, trading activity almost tripled, and revenue followed accordingly. The article went on to say "no wonder the top 10 online brokers made it into the "Business 2.0 100". Topping them all is the king of online trading, Charles Schwab". The article reports that an average of $1.2 billion in securities value was then being transacted each day on the Complainantís website <schwab.com>.
The Complainant has produced numerous examples of its advertising and promotional materials used around the world Ė generally, these documents all feature the marks, CHARLES SCHWAB, or SCHWAB. One of the examples of promotional material which the Complainant says has been supplied to its account holders in the United States and abroad, features its website, <schwab.com>, and the statement:
"schwab.com can put a wealth of investment information at your fingertips".
The Complainant says that it advertises its services, through the use of the SCHWAB brand name, in print, television and radio, or direct mailings and Internet advertising. It says that in the year 2000, Group advertising expenses were US$332 million.
Generally, the documents produced by the Complainant make it clear that the Complainant has established very substantial good will in the marks CHARLES SCHWAB and SCHWAB, in many countries in the world, and amongst those interested in the use of the Internet for investment/brokerage services.
The Complainant says that it owns trademark applications or registrations in over 30 countries, for marks consisting in whole or in part, of the term SCHWAB. The list of countries shows that the mark SCHWAB standing alone is registered in some countries, and with applications pending in others. Numerous other marks have been registered which feature the word "Schwab" together with a generic addition Ė for example the marks SCHWAB ONE and SCHWAB ONLINE, are registered in the European Community.
The Complainant has produced copies of Registration Certificates for a number of marks registered in the United States. These include SCHWAB 1000 FUND, SCHWAB 1000 INDEX, SCHWAB INSTITUTIONAL, SCHWAB ONE, SCHWAB LIFE, SCHWAB GOLD, SCHWABFUNDS, SCHWABPLAN and SCHWABLINK. These marks are registered for a variety of services, generally in the fields of financial services, the provision of investment information and advice (including by electronic means), brokerage, insurance, and plan management. In each case the Registered Proprietor is the Complainant.
None of the Complainantís marks has been registered in either Poland or the Ukraine, being the countries in which the addresses of the Registrant and the Administrative Contact for the Domain Name are situated. However, the Complainant says that it has customers to whom it provides off-shore brokerage services in both of those countries.
The Complainant has had a presence on the Internet since 1996, at the website <schwab.com>. The Complaint states that in the year 2000 there were over 245 million sign-ons to the <schwab.com> website. The website <schwab-europe.com> was launched by the Complainantís affiliate, Charles Schwab Europe, in 1999. It allows account holders to trade on-line in both the UK and US stock markets. Both domain names were extremely active well before the Domain Name was registered on August 17, 2000.
The Respondentís Activities
After the Domain Name was registered on August 17, 2000, it was used as a link to an Internet search site. A page downloaded on June 18, 2001, from the website at <www.wwwschwab.com>, contains advertising for a number of other Internet sites, including several which appear to be gambling sites.
The Complaint states that an Internet user who clicked on any of the headings on this page was immediately brought to the website of the Internet search site, <turbofind.com>. The page containing the advertising just referred to, itself appears to contain a direct link to <turbofind.com>.
The website extracts as downloaded on June 18, 2001, do not contain anything which would connect the website with the services or the business of the Complainant, and nor do they contain anything to suggest that the Respondent might be trading under the name "wwwschwab" or the name "Schwab".
Between June 29, 2001 and July 3, 2001, the Respondent stopped using the Domain Name to direct traffic to the <turbofind.com> search engine, and began using the Domain Name to direct consumers to the website <gotoo.com>. As the Complaint puts it:
"Upon typing in the wwwschwab.com name, one is met with a message that states ĎCongratulations, youíve won! Virtual reality casino.í This appears superimposed on the website www.gotoo.com/treasure/france.html. The page could not be printed. Consumers are given the option of clicking on a button that says, "OK" or a button that says "Cancel." If one clicks on the button that says, "OK", one is brought to the home page for www.englishharbour.com. Ö The website is an Internet gambling site. If one clicks on the "cancel" button, the message box disappears and the gotoo.com website is accessedÖ."
A page produced from the website at <www.gotoo.com>, appears to offer a service for Internet users wanting to register a new domain name, or to change an existing one. Part of the text from this web page reads:
"Dear Webmaster! No More! need to :
Loose [sic] Your visitors when You move Your site to another ISP!
ÖÖ. or they ban Your site!"
Finally, the Complaint says that the website at <russa.com> (which is where the Administrative and Technical contact for the Domain Name maintains his email address) is a pornography website.
5. The Partiesí Contentions
The Complainant contends that it has strong rights in the SCHWAB marks. It relies on use of the name "Schwab" in and as part of a trade name for over 25 years, and on its various trademark registrations. It says that the fact that it has registered its SCHWAB marks in a substantial number of jurisdictions worldwide is dispositive evidence of the fact that it has rights in the SCHWAB marks. It says that, for the purposes of paragraph 4(a)(i) of the Policy, it does not matter that it does not have any trademark registrations or pending applications in Poland.
The Complainant contends that the Domain Name is identical or confusingly similar to its famous SCHWAB trading name and trademark, and to its various other marks which incorporate the word "Schwab"Ė it says that the "www" prefix and the ".com" suffix are not distinctive.
The Complainant relies on the following matters in arguing that the Respondent can demonstrate no legitimate rights or interest in the Domain Name (paragraph 4(a)(ii) of the Policy):
1) The Respondent registered the Domain Name after the Complainant had obtained registrations worldwide for its SCHWAB marks, after the Complainant had been extensively using the marks, after the Complainant had registered <schwab.com>and <schwab-europe.com>, and after the Complainant had established a very substantial Internet presence.
2) There is no relationship between Complainant and Respondent such as might give rise to any licence, permission, or authorization to incorporate the Complainantís SCHWAB mark in the Domain Name.
3) The Respondent is not commonly known by the name "Schwab", and is not making legitimate non-commercial or fair use of the name with an intention not to mislead consumers.
4) The Respondent has used the Domain Name to direct traffic to other websites, including (most recently) a gambling site. The Complainant submits that good faith is a key issue in determining whether use of a domain name is bona fide under the Policy, and that use which intentionally trades on the fame of another cannot constitute a "bona fide" offering of goods or services. It says that the Respondent took the Complainantís famous trademark to create confusion, and to drive traffic to an Internet search engine (and later a "virtual casino"), for commercial benefit.
5) The use of the Complainantís SCHWAB mark as part of a domain name falsely suggests that the Complainant is or may be authorizing or sponsoring the website, or that the Domain Name is a means of contacting the Complainant.
6) The SCHWAB mark is well known, internationally registered, and distinctive. The Respondent could have chosen any of numerous other domain names. The fact that he has chosen one so similar to the Complainantís marks implies a lack of any valid right or interest in the Domain Name.
In support of the contention that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy), the Complainant relies on the following:
1) The fact that the Respondent has taken the Complainantís very trademark SCHWAB as the dominant part of the Domain Name, is in itself evidence of bad faith.
2) Bad faith is further illustrated by the fact that the Respondent has sought to capitalize on a common mistake made by Internet users when they type in a domain name. Most users recognize the prefix "www" as a necessary part of every website address. Use of the "www" prefix in this case is indicative of bad faith.
3) The Respondentís use of a domain name consisting of the famous SCHWAB mark to divert Internet users to a website which is not only unaffiliated with the Complainant, but also likely provides the Respondent with commercial benefit, is also indicative of bad faith use and registration, and constitutes an explicit violation of paragraph 4(b)(iv) of the Policy.
4) The Complainant fears that the Domain Name will be used to divert consumers to a pornographic site <www.russa.com>.
5) Internet users are likely to believe that the Domain Name is connected to a website associated with or sponsored by the Complainant. Because the ultimate effect of any use of the Domain Name will be to cause confusion with the Complainant, the use and registration of the Domain Name must be considered to be in bad faith.
6) The fact that neither the Respondent nor the websites associated with the Domain Name have any connection with the Complainant or its services, suggests "opportunistic bad faith".
7) The Complainant refers to a previous instance of the Respondent having been held to have registered and used a domain name in bad faith. The Complainant refers to WIPO Case D2000-1614, Inter-Ikea v Polanski, a case dealing with the trademark IKEA. That case also involved the Respondent using the domain name as a link to a gambling website. The Panelist in that case found registration and use of the domain name to be in bad faith. The Complainant says that the same result should follow in this case.
8) Finally, the Complainant refers to the Respondentís failure to provide full contact details. In its Registration Agreement with the Registrar, the Domain Name Registrant agreed to provide a full name, postal address, email address, voice telephone number and fax number if available. In this case, the Respondent has failed to provide an email address, a phone number or a fax number. In addition, the Registrarís Registration Agreement requires that when a domain name is not registered in the name of an individual, the name of an authorized person for contact purposes must be provided. The Complainant says that that was not done either. The failure to provide proper contact details is said to be further evidence of bad faith.
In support of its various contentions, the Complainant has cited numerous WIPO cases. In the view the Panel takes of this case, it is not necessary to refer to them at this point. Such case references as are necessary to the decision are referred to in the discussion and findings which follow.
The Respondent has not made any submissions.
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) that the Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
In view of the Respondentís failure to submit a response, the Panel is entitled to decide this administrative proceeding on the basis of the Complainantís undisputed representations. That is the effect of paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a)(i) of the Policy Ė Domain Name Identical or Confusingly Similar to a Trademark or a Service Mark in which the Complainant has Rights
The Panel has no difficulty in finding this part of the Complaint proven.
The Complainantís US-registered marks SCHWAB 1000 FUND, SCHWAB 1000 INDEX, SCHWAB INSTITUTIONAL, SCHWAB ONE, SCHWAB LIFE, SCHWAB GOLD, SCHWABFUNDS, SCHWABPLAN, , and SCHWABLINk, all strongly feature the word "Schwab" in combination with non-distinctive, or generic words Ė eg "one", "fund", "plan", "link". The word "Schwab" is the distinctive Ďessenceí of the marks.
The Complainant also has the stand-alone mark SCHWAB registered in a number of jurisdictions around the world (e.g. Mexico, Guatemala, Hong Kong, Kenya and Panama).
Furthermore, the Complainant has built up a very substantial reputation and goodwill in the SCHWAB mark, through very extensive advertising and massive Internet activity over a period well before the Domain Name was registered. Numerous marks registered worldwide which incorporate the word "Schwab" with other non-distinctive, or generic, expressions add to the international strength of the SCHWAB family of marks.
The ".com" gTLD is accessible anywhere in the world, and the Panel agrees that it does not matter that the trademark has not been registered in the Respondentís country (see Infospace.com Inc. v. Infospace Technology Ltd WIPO Decision D2000-0074, cited by the Complainant, and NIIT Limited v. Gazanfar WIPO Decision D2000-1718.
The Complainant had also registered (and was generating a massive amount of Internet traffic to) the domain names <schwab.com>and <schwab-europe.com>, before the Respondent registered the Domain Name.
In this case, the Domain Name adds only the generic "www", and the ".com" suffix to the word "Schwab", and those additions do nothing to deflect the readerís attention from the essence of the Domain Name, which is the word "Schwab".
Of course that word is also the essence of each of the Complainantís US-registered marks referred to above, and of the SCHWAB mark itself (in which the Panel is satisfied that the Complainant enjoys service mark rights (both registered and as a result of sufficient periods of substantial use) in numerous other parts of the world). In those circumstances, the Panel has no doubt that the Domain Name is confusingly similar to marks in which the Complainant has rights, including the marks SCHWAB, SCHWAB 1000 FUND, SCHWAB 1000 INDEX, SCHWAB INSTITUTIONAL, SCHWAB ONE, SCHWAB LIFE, SCHWAB GOLD, SCHWABFUNDS, SCHWABPLAN, and SCHWABLINK.
Respondent has no Right or Legitimate Interest in the Domain Name
Paragraph 4(c) of the Policy sets out three circumstances which, if found by the Panel to be proved based on its evaluation of all evidence presented, are deemed to demonstrate that the Respondent has rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) before any notice to [the respondent] of the dispute, [the respondentís] 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) [the respondent] (as an individual, business or other organization) [has] been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
That list of circumstances is not an exhaustive list of circumstances which might be sufficient to show a right or legitimate interest in respect of a domain name.
In this case, the Complainant has not authorized or permitted the Respondent to use the Domain Name, and the Respondent has made no response to the Complaint.
Other factors which, in the Panelís view, point to the Respondent not having any rights or legitimate interests in respect of the Domain Name are as follows:
(i) There is no apparent reason why the Respondent should have chosen <wwwschwab.com> as a domain name. Clearly, the Respondent is not commonly known by that name, so paragraph 4(c)(ii) of the Policy does not apply.
(ii) There appears to be nothing on any of the webpages produced which would suggest that the Respondent is carrying on any business or other activity under the names "Schwab" or "wwwschwab". It appears therefore that the Respondent has not made any use of the Domain Name in connection with a bona fide offering of goods or services, at a time before the Respondent had notice of this dispute (Paragraph 4(c)(i) of the Policy).
(iii) The use of a domain name which is confusingly similar to another partyís trademark, with a view to directing Internet traffic to websites in which the Respondent has a financial interest (and which have no connection with the trademark owner), cannot constitute a "bona fide offering of goods or services", or a "legitimate non-commercial or fair use" of the Domain Name (Paragraphs 4(c)(i) and (iii) of the Policy). Such use falls within paragraph 4(b)(iv) of the Policy, as an express instance of bad faith use. As the Complainant submitted (citing World Wrestling Federation Entertainment Inc. v Rift, WIPO Case D2000-1499 and Ciccone v Parisi, WIPO Case D2000-0847), good faith is a key issue in determining whether use of a domain name is bona fide under the Policy.
(iv) The Panel accepts the Complainantís submission based on World Wrestling Federation Entertainment Inc. v Bessette, WIPO Case D2000-0256, that the addition of the prefix "www" indicates bad faith, as it is an exploitation of typographical errors that Internet users may make. Bad faith is antithetical to the concepts of the "bona fide" offering of goods or services, and the "legitimate non-commercial or fair use" of a domain name, and those concepts are central to sub paragraphs 4(c)(i) and (iii) of the Policy.
(v) In the absence of any contrary evidence from the Respondent, the Panel infers that the Respondent knew, at the time of registering the Domain Name, of the existence of the Complainant as the proprietor of the <schwab.com> domain name, and of the existence of the SCHWAB mark (which was extremely well-known internationally by the time the Respondent registered the Domain Name). The links from the Domain Name to an Internet search engine, and the various links to other commercial sites including Internet gambling sites and the <gotoo.com> site, suggest that the Respondent is a sophisticated user of the Internet. In the Panelís view, it is highly improbable that such a person would have adopted "www" as the first three letters of a domain name, without first identifying the owner of the domain name "Schwab" in the .com gtld, minus the "www" prefix. If the Respondent did that, he could not have been unaware of the Complainant and the SCHWAB mark. It is difficult in those circumstances to resist the conclusion that his intention was to attract to his own sites at least a proportion of the millions of Internet users who sign on to the Complainantís websites.
The Complainant has established that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Domain Name has been Registered and is being used in Bad Faith
Under Paragraph 4(b) of the Policy, certain circumstances are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
"(i) circumstances indicating that you [ie the domain name registrant] have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
As with paragraph 4(c) of the Policy (relating to proof of Respondentsí rights or legitimate interests), the paragraph 4(b) list is not an exhaustive list of bad faith registration and use situations.
The Complainant submits, inter alia, that the circumstances fall squarely within paragraph 4(b)(iv) set out above.
The Panel accepts that Internet users are likely to believe that the Domain Name is connected to a website sponsored or endorsed by the Complainant, or with which the Complainant is somehow affiliated. The very similarity of the Domain Name with the Complainantís SCHWAB mark (and with its other trademarks incorporating the word "Schwab"), coupled with the fact that the Complainant owns and uses the <schwab.com> domain name, persuade the Panel that the Domain Name has been chosen with a view to confusing Internet traffic looking for the Complainantís website and mistakenly keying in an additional "www".
The <turbofind.com> website is an Internet search engine, but on June 18 2001 (when the Complainant visited <www.wwwschwab.com>), it also included banner advertising for a casino website.
Since July 3, 2001, an Internet user typing in <www.wwwschwab.com> has been greeted with a message stating:
"Congratulations, youíve won! Virtual reality casino."
That statement appears superimposed on the website www.gotoo.com/treasure/ france/html. The "OK" button on the screen, when clicked, takes the viewer to the homepage for <www.englishharbour.com>, which is an Internet gambling site.
In the absence of any response from the Respondent, the Panel infers that these web pages to which the Domain Name is linked are all operated for commercial gain.
While an Internet user clicking on <www.wwwschwab.com> might realize fairly quickly that the websites at which the user arrives are unlikely to be connected with the Complainantís investment/brokerage business and services, the state of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location, necessary for the application of paragraph 4(b)(iv) of the Policy, will already exist.
The Panel also finds that there are other indicators of bad faith registration and use in this case, including the total absence of any color of title or justification for registration of the word "Schwab" in or as part of a domain name by the Respondent. The various relevant factors have been noted in the part of this decision setting out the Panelís findings on the application of paragraph 4(b)(ii) of the Policy.
The Panel also concurs with the Panelist in the <ikeausa.com> case (WIPO Case No D2000-1614 Ė Inter-Ikea v Polanski), where the Panelist found that the Respondentís activities, which were very similar to the activities of the Respondent in this case, fell within paragraph 4(b)(iv) of the Policy. The Respondent in that case appears to be the same person as the Respondent in this case.
In the Inter-Ikea case, the Panel said at page 5 of the Decision:
"The Respondent did and does not exercise any activity of his own under the domain name <ikeausa.com>. Instead he was employing that domain name to intentionally divert and attract consumers seeking the Complainantís US-website to a virtual casino gambling site. In the absence of any submission of the Respondent to the contrary this must be considered to be for commercial gain. Thus the Respondent was pursuing an activity which falls under item 4b)iv) of the Policy, i.e. he attracted Internet users to an on-line location by creating a likelihood of confusion with the Complainantís mark as to source, sponsorship, affiliation, or endorsement of that website or location. This leads the Panel to the conclusion that the Respondent registered and was using the domain name <ikeausa.com> in bad faith."
So in this case, the Respondent is diverting and attracting consumers seeking the Complainantís site at <www.schwab.com>, to the Internet gambling site at <www.englishharbour.com>. The route is not quite a direct one Ė the Internet visitor is greeted first with text announcing "Congratulations, youíve won! Virtual reality casino", and an invitation to click an "OK" button to find out more. However, the indirect nature of the linkage to the <englishharbour.com> site does not affect the application of paragraph 4(b)(iv) of the Policy. The Internet visitor is invited to find out more about "winning" and a "virtual casino". That, in the Panelís view, operates as sufficient of a "hook" to qualify as one of the situations at which paragraph 4(b)(iv) of the Policy is aimed.
In the view the Panel takes, it is unnecessary to refer to the Complainantís other submissions.
The Panel finds that the Domain Name was registered and is being used in bad faith.
7. Decision Summary
For the foregoing reasons, the Panel decides that:
(a) The Domain Name is confusingly similar to trade marks or service marks in which the Complainant has rights; including the marks SCHWAB, SCHWAB 1000 FUND, SCHWAB 1000 INDEX, SCHWAB INSTITUTIONAL, SCHWAB ONE, SCHWAB LIFE, SCHWAB GOLD, SCHWABFUNDS, SCHWABPLAN, and SCHWABLINK; and
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <wwwschwab.com> be transferred to the Complainant.
Warwick Alexander Smith
Dated: September 21, 2001