WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Briefing.com Inc v. Cost Net Domain Manager

Case No. D2001-0970

 

1. The Parties

Complainant: Briefing.com Inc., 875 Mahler Road, Suite 216, Burlingame, California 94010, USA.

Respondent: Cost Net Domain Manager, PO Box 337-2300, San Jose, Costa Rica.

 

2. The Domain Name and Registrar

Domain Name: <breifing.com>

Registrar: Register.com

 

3. Procedural History

The Complaint was filed on July 28, 2001. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.

The Complaint was properly notified in accordance with Rules, paragraph 2(a), however no Response has been received and the Respondent is in default.

The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís decision was September 18, 2001.

 

4. Factual Background

The Complainant is the owner of trademark registrations for <BRIEFING.COM> in the US and provides on line financial services information.

The Respondent has registered the Domain Name <breifing.com> which the Complainant alleges is a misspelling of its trademark. The Respondent has used the Domain Name to point to web sites offering financial information.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions are as follows:

1) The domain name is confusingly similar to service marks in which the Complainant has rights.

i) Complainantís Marks and Domain Name

Complainant owns federal trademark registrations for the following service marks ("Marks") on the Principal Register of the United States Patent and Trademark Office ("USPTO"):

BRIEFING.COM (U.S. Reg. No. 2158060)

BRIEFING.COM and design (U.S. Reg. No. 2251250)

Complainant uses its Marks to identify the following services: providing on-line information in the field of financial services, namely stock quotation, bond quotations, financial market commentaries, earnings reports, economic reports, real-time financial market analyses, economic and market forecasts, market sector ratings, headline news, weather data and employment forecasts by means of a global computer information network.

Complainant also owns the domain name <briefing.com>. This domain name is registered with Register.com Inc. under the registrant name Charter Media, Inc., the former corporate name of Briefing.com, Inc.

ii) Respondentís Domain Name is Confusingly Similar to Complainantís Marks and Domain Name

Respondentís <breifing.com> domain name is confusingly similar to Complainantís Marks and <briefing.com> domain name in appearance and pronunciation. Respondentís <breifing.com> domain name is a common misspelling of Complainantís Marks and domain name. A confusing similarity exists because Respondent has used its domain name to identify third-party services substantially similar to services offered by Complainant. The substantial similarity in services produces a confusing similarity between Respondentís domain name and Complainantís Marks and domain name in overall commercial impression.

a) Appearance. Respondentís <breifing.com> domain name features, as its second-level domain name, the term "breifing." This term is not a recognized English word; it is not a word in Spanish, the official language of Costa Rica, where Respondent has its principal place of business; and, it is not a recognized word in any other language known to Complainant.

This term is best explained by viewing it as a misspelling of the English word "briefing." It is produced by inverting the "i" and "e" in "briefing" from their proper order. This inversion of two letters is insufficient to distinguish the appearance of Respondentís <breifing.com> domain name from Complainantís <briefing.com> domain name and Marks. Therefore, Respondentís domain name is not sufficiently different from Complainantís domain name to prevent confusion among Internet users.

Several WIPO Administrative Panels have found confusing similarity between domain names and marks in similar circumstances of misspellings or near-spelling variants. In Estée Lauder Inc. v. estelauder.com, Case No. D2000-0869, the Panel noted that "the only difference between Complainantís trademark and Company name and the domain names registered by Respondent are the absence of a second Ďeí and an accent aigue: ĎEstéeí as opposed to ĎEste.í" The Panel concluded that "Respondentís domain names are clearly, and intentionally, confusingly similar to Complainantís marks."

In Metabolife International v. Robert Williams, Case No. D2000-0630, the Panel compared respondentís <metabolive.com> with complainantís registered mark METABOLIFE and found that respondentís domain name was "substantially identical letter-by-letter to the Complainantís trademark and merely embodies the syllable "LIVE" instead of "LIFE."

In Pharmacia & Upjohn AB v. Dario H. Romero, Case No. D2000-1273, the Panel compared respondentís <pharmaciae.com> with complainantís registered mark PHARMACIA, and noted that "the only difference between the two signs it [sic.] the letter "e" which in the domain name of the Respondent is added to the mark of the Complainant." The Panel found respondentís domain name to be "nearly indistinguishable, both in writing and in pronunciation" from complainantís mark, and concluded that "the domain name of the Respondent is confusingly similar with the Complainantís mark PHARMACIA."

The Pharmacia Panel agreed with complainantís argument that misspelling was likely to occur if respondent was allowed to continue to use its domain name. "As the Complainant rightly points out, persons, attempting to find the Complainant on the Internet and inadvertently misspelling the mark of the Complainant by adding an Ďeí at the end, may become discouraged upon reaching Respondentís website and search no further for Complainantís website."

Complainant in the instant case has the same argument as complainant in the Pharmacia case. "Breifing" is a common misspelling of "briefing," and Internet users may inadvertently misspell Complainantís <briefing.com> domain name, end up at Respondentís current web site (which displays only the word "hello": become discouraged, and discontinue searching for Complainantís web site. Because Respondentís domain name has the potential to create confusion and discouragement among Internet users, Complainant is being injured by Respondentís domain name.

b) Pronunciation. Respondentís <breifing.com> domain name is phonetically identical to Complainantís Marks and domain name. Because Respondentís domain name is not a recognized word in English or any other language, no dictionary authority exists to refute Complainantís claim that Respondentís domain name and Complainantís domain name and Marks are pronounced in exactly the same way.

WIPO Administrative Panels have found confusing similarity between domain names and marks in similar circumstances of phonetic identity. In Neuberger Berman Inc. v. Alfred Jacobsen, Case No. D2000-0323, the Panel examined complainantís company name, "Neuberger Berman Inc.," and its corresponding domain name with respondentís <newbergerberman.com> domain name; the Panel found them to be "phonetically identical in English," and concluded that "the slight difference in spelling between ĎNewbergerí and ĎNeubergerí and their phonetic identity make Respondentís domain name confusingly similar to Complainantís trademarks."

In Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, Case No. D2000-0040, the Panel found that respondentís <phonenphone.com> domain name was "phonetically identical, and is confusingly similar" to complainantís PHONE-N-PHONE trademark. As noted above, the Panel in the Pharmacia case found that respondentís <pharmaciae.com> domain name was "nearly indistinguishable, both in writing and in pronunciation" to complainantís PHARMACIA mark. And, in Yahoo! Inc. v. Eitan Zviely, et al., Case No. D2000-0273, the Panel found confusing similarity in several challenged domain names that varied the spelling of complainantís YAHOO! mark but maintained phonetic identity with it: <yahu.com>, <yhu.com>, and <jahu.com>.

The instant case presents identical circumstances to the cited cases. Respondentís domain name is phonetically identical to Complainantís Marks and domain name, and, therefore, a confusing similarity exists between them.

c) Services. Respondent has used the <breifing.com> domain name to send Internet users to services substantially similar to services offered by Complainant. This creates a confusing similarity between Respondentís domain name and Complainantís Marks and domain name.

When Complainant became aware of Respondentís presence on the Internet in March 2001, Respondent was using the <breifing.com> domain name to send Internet users automatically to a stock market analysis and financial advice web page owned by GoTo.com, Inc. The automatic referral produced the same result that an Internet user would achieve if the user typed the word "stocks" into the search engine on the <goto.com> home page. The information and services offered on the automatically retrieved <goto.com> page are substantially similar to information and services offered by Complainant under Complainantís Marks on the <briefing.com> web site.

In April 2001, Respondent used the <breifing.com> domain name as an automatic referral to a search engine index page in which the terms "Finance," "investing" and "stocks" appear as index topics, and the latter two appear as hyperlinks to GoTo.com, Inc.ís investing information and stock market information web pages. The information and services offered on the <goto.com> pages that can be reached through the links on the search engine index page are substantially similar to the information and services offered by Complainant under Complainantís Marks on the <briefing.com> web site.

Because Respondent has used its domain name to point Internet users to services substantially similar to Complainantís services, Respondentís domain name is confusingly similar to Complainantís Marks and domain name.

d) Commercial Impression. Respondentís <breifing.com> domain name denotes a meaning identical to Complainantís <briefing.com> domain name and Marks. Websterís Ninth New Collegiate Dictionary (Merriam-Webster, Inc., 1987) defines the noun "briefing" as "an act or instance of giving precise instructions or essential information." Complainantís <briefing.com> domain name and Marks, which identify services providing financial information, market analysis, and news, denote this meaning. In addition, Complainantís <briefing.com> domain name and Marks convey the idea that Complainantís information services are timely, concise and rapid.

Because Respondentís second level domain name is not an English word with its own meanings and connotations, but is merely a common misspelling of the term "briefing", Respondentís domain name denotes the same meaning and carries the same connotations as Complainantís Marks and domain name. Because a substantial similarity exists between the services offered by Complainant and those third-party services to which Respondentís domain name automatically referred Internet Users, Respondentís "breifing" and Complainantís "briefing" both convey a context of financial information and stock market analysis. This shared context of meaning creates a confusing similarity between Respondentís domain name and Complainantís Marks and domain name in overall commercial impression.

For the foregoing reasons, a confusing similarity exists between Respondentís <breifing.com> domain name and Complainantís <briefing.com> domain name and Marks in appearance, pronunciation, services, and overall commercial impression. Respondentís domain name is confusingly similar to the domain name and Marks in which Complainant has ownership rights.

2. The Respondent has no rights or legitimate interests in respect of the domain name

Respondent has no rights to, or legitimate interests in, the <breifing.com> domain name because (1) Respondent is making no use of the domain name in connection with a bona fide offering of goods or services, (2) Respondent is not identified by the domain name, (3) Respondent is not making legitimate noncommercial or fair use of the domain name, (4) Respondent had constructive notice of Complainantís federal trademark registrations, and (5) Complainant has prior rights in the <briefing.com> domain name.

i) No bona fide use. To the best of Complainantís knowledge, Respondent is not now and has not in the past used the <breifing.com> domain name, or a name corresponding to that domain name, in connection with a bona fide offering of goods or services.

When Complainant became aware of Respondentís presence on the Internet in March 2001, Respondent was using the <breifing.com> domain name to send Internet users automatically to a financial information services web page owned by GoTo.com, Inc. While this automatic referral might suggest some affiliation between Respondent and GoTo.com, Inc., Respondentís registration information on Register.comís WHOIS database does not identify or suggest any such affiliation. This lack of identification suggests that the services offered on the automatically retrieved <goto.com> web page are not a bona fide offering of services provided by Respondent, but instead are a link to services provided by a third party, GoTo.com, Inc., which has no known affiliation with the <breifing.com> domain name.

In April 2001, Respondent used the <breifing.com> domain name as an automatic referral to a search engine index page hosted by GoTo.com, Inc. The links on the search engine index page connect to web pages offering information and services owned and provided by GoTo.com, Inc. GoTo.com, Inc. does not own the URL for the index page, but the page provides a link that says "Contact the owner of this URL."

Clicking on this link takes an Internet user to an email window in which the recipientís email address is listed as "hubmedia@bigfoot.com." The email contact address listed for Respondent on Respondentís domain name registration is "hubmedia@bigfoot.com." The <bigfoot.com> domain name is owned by Bigfoot Communications, LLC, which is located in New York and is affiliated with Bigfoot International, Inc., a company offering email and other Internet services. The email address listing on Respondentís domain name registration suggests an affiliation between Respondent and the Hubmedia entity. However, neither Respondentís registration information on Register.comís WHOIS database, nor the search engine index page itself demonstrates an affiliation between Respondent and GoTo.com, Inc.

This lack of any demonstrable affiliation suggests that the services offered on the <goto.com> web pages, to which the automatically retrieved search engine index page links, are not a bona fide offering of services provided by Respondent, but instead are merely an index of links to services provided by a third party, GoTo.com, Inc.

Currently, Respondentís domain name leads to a web site displaying only the word "hello." Respondentís current web site makes no bona fide offering of goods or services.

ii) No Use as Name. To the best of Complainantís knowledge and information, Respondent is not using the <breifing.com> domain name as an identifier for an individual, business, company, or organization, and Respondent is not commonly known by the domain name.

iii) No Noncommercial of Fair Use. To the best of Complainantís knowledge and information, Respondent is not using the <breifing.com> domain name in a legitimate noncommercial or fair manner, without intent for commercial gain.

iv) Constructive Notice. Complainantís Marks were registered on the Principal Register of the USPTO on May 19, 1998 and June 8, 1999. 15 U.S.C. ß1072 states that a federal trademark registration constitutes constructive notice of a registrantís claim to ownership of a mark. Although Respondent lists a contract address located in Costa Rica, this Panel can find that Respondent had constructive notice of Complainantís claim to ownership of its Marks because Respondentís activities involving its <breifing.com> domain name have taken place within the United States.

Respondent registered its domain name with Register.com, a company located in New York. Respondentís email provider, Bigfoot Communications, is also located in New York. Respondent used its domain name to send Internet users to pages that report on the U. S. stock market and that are owned by GoTo.com, Inc., a company located in California. Because of Respondentís activities in the United States, this Panel can conclude that Respondent had constructive notice of Complainantís claim to ownership of the Marks when Respondent registered its <breifing.com> domain name on November 30, 2000, more than two years after the issuance of Complainantís first federal trademark registration.

v) Complainantís Prior Rights. Complainantís use of its Marks and its <briefing.com> domain name precede Respondentís registration of its <breifing.com> domain name by more than five years. Complainantís first use in commerce of its BRIEFING.COM Mark occurred in July of 1995. Complainant registered its <briefing.com> domain name on May 29, 1995. Respondent registered the <breifing.com> domain name on November 30, 2000. Complainant owns prior rights based on its prior use and registrations of its Marks and of its <briefing.com> domain name.

For the foregoing reasons, Respondent has no rights to or legitimate interests in the <breifing.com> domain name.

3) The domain name was registered and is being used in bad faith.

Respondent has registered and used the <breifing.com> domain name in bad faith. Respondent has demonstrated its bad faith in several ways. First, Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by sending Internet users who misspell Complainantís name to the web site of Complainantís competitor. Second, Respondent has engaged in typo-piracy for the deliberate purpose of confusing Complainantís potential customers. Third, Respondent has deliberately registered and used a domain name that is phonetically identical to Complainantís domain name and Marks. Fourth, Respondent has been unresponsive to Complainantís agentís attempts at communication, and Respondent altered its use of the <breifing.com> domain name after Complainantís agent attempted to contact Respondent. Fifth, Respondent has registered and used a domain name confusingly similar to Complainantís domain name while under constructive notice of Complainantís ownership of its Marks.

i) Respondent Has Used and Is Using its Domain Name Primarily to Disrupt the Business of Complainant

a) Disruption of Complainantís Business. In March 2001, Respondent used its domain name to send Internet users automatically to a stock market analysis and financial advice web page hosted by GoTo.com, Inc. In April 2001, Respondent used its domain name to send Internet users automatically to a search engine index in which the terms "stocks" and "investing" appear as searchable index topics.

The financial information services and links to such services offered on the automatically retrieved pages are similar to the financial information and market analysis services offered by Complainant under Complainantís Marks on the <briefing.com> web site. Complainantís services constitute Complainantís business, and Respondentís automatic referrals to third-party sites offering substantially similar services constitute deliberate attempts to disrupt that business because Respondentís domain name, which is confusingly similar to Complainantís, may have diverted Internet users looking for Complainantís web site to the third-party sites owned by Complainantís competitors.

Respondentís current web site, which displays only the word "hello," also disrupts Complainantís business. Respondent's current web site offers no guidance or clarification to an Internet user who, while looking for Complainantís web site, has found Respondentís web site by mistake, and, unaware of this mistake, grows frustrated and ceases to look for Complainantís web site.

By using a domain name that is confusingly similar to Complainantís domain name, and that leads to a web site that does not make any attempt to remove confusion, Respondent is intentionally frustrating Internet users looking for Complainantís web site from finding Complainantís web site. Complainantís potential loss of customers due to Internet user impatience, caused by Respondentís deliberate attempts to generate confusion, disrupts Complainantís business.

b) Respondent Has Made Itself Complainantís Competitor. Through its automatic referrals to third-party sites and through its current web site, Respondent has made itself a competitor of Complainant. Use of the term "competitor," as delineated in paragraph 4(b)(iii) of the Policy, is consistent with the definition used in at least three WIPO Panel decisions. A competitor is "one who acts in opposition to another," and the context of 4(b)(iii) "does not imply or demand any restricted meaning such as commercial or business competitor." See Estée Lauder Inc. v. estelauder.com, Case No. D2000-0869; Mission Kwa Sizabantu v. Benjamin Rost, Case No. D2000-0279; and Gallo v. Hanna Law Firm, Case No. D2000-0615.

Under this definition, Respondent and Complainant are competitors because they are acting in opposition to each other. Respondent, the creator of the situation that has led to this complaint, has acted, and is acting, in opposition to Complainant. In the past, Respondent has acted in opposition to Complainant by deliberately diverting Internet users from Complainantís web site to web pages owned by Complainantís competitors.

Currently, Respondent is acting in opposition to Complainant by deliberately confusing and discouraging Internet users seeking Complainantís web site with a confusing web site that merely says "hello." Under the definition accepted by several WIPO Panels, Complainant and Respondent are competitors. They have become competitors because of Respondentís acts.

c) Respondentís Primary Purpose. Because Respondent is not making a bona fide offering of goods or services under its domain name, there is no reason for Respondentís use of its domain name other than to disrupt of Complainantís business. Therefore, this Panel can conclude that Respondentís primary purpose for its use of the <breifing.com> domain name is to disrupt Complainantís business.

Respondent has registered and used its domain name for the primary purpose of disrupting the business of a competitor, Complainant. In so doing, Respondent has demonstrated bad-faith registration and use of a domain name under paragraph 4(b)(iii) of the Policy.

The circumstances under which a domain name has been registered and used in bad-faith are not limited to the circumstances delineated in paragraph 4(b) of the Policy. Those examples are listed in paragraph 4(b) "in particular but without limitation." Policy, ß 4(b). Therefore, Complainant offers the following additional circumstances demonstrating Respondentís bad-faith registration and use of its <breifing.com> domain name.

ii) Respondent Has Engaged in Typo-Piracy

Respondent has demonstrated bad faith by engaging in "typo-piracy" to confuse Internet users and draw them away from Complainantís web site. A WIPO Panel has defined typo-piracy as "in essence a deliberate attempt to attract or divert internet users who make a common error or spelling mistake in their internet search." Estée Lauder Inc. v. estelauder.com, Case No. D2000-0869, p. 4. In the Estée Lauder case, the Panel found that "intentionally registered domain names with a slight, but knowingly confusing, spelling difference are pertinent to determining whether Respondent has acted in good faith," and that "the intent to attract or divert internet users interested in Complainant is also pertinent."

a) "Breifing" is the Most Common Misspelling of "Briefing" Respondentís domain consists of the most common misspelling of the word "briefing," expressed through the inversion of the "i" and the "e." Based on everyday experience, this Panel can conclude that it is an easy mistake to make when typing the word "briefing."

b) Complainantís Services Are Popular. Complainantís domain name and Marks are well known in the financial information industry, and Complainantís particular services are highly popular. To date, Complainant has made partnership arrangements to provide its services to customers on the web sites of more than sixty-five corporations, including such notable corporations as Charles Schwab, Prudential Securities, the Wall Street Journal, and Morgan Stanley Dean Witter.

c) Respondent likely engaged in typo-piracy because of the popularity of Complainantís services. A WIPO Panel has held that the bad-faith practice of typo-piracy in connection with famous trademarks that are used as domain names occurs when "bad faith operators deliberately misspell a famous domain name trademark in hopes of luring search engines to their site in conjunction with searches for the famous name website." Neuberger Berman Inc. v. Alfred Jacobsen, Case No. D2000-0323, p. 5.

d) Respondentís Typo-Piracy Was Deliberate. Respondent has used the <breifing.com> domain name as an automatic referral to third-party sites offering services similar to services offered by Complainant. These acts, combined with the facts that Respondentís domain name is confusingly similar to Complainantís, and that Complainantís domain name and Marks are famous within the field of financial information services, strongly suggest that Respondentís attempts to divert Internet users from Complainantís popular web site by means of typo-piracy were deliberate.

The Estée Lauder Panel found that the respondent engaged in typo-piracy by registering and using, without any legitimate rights or interests, domain names containing deliberate misspellings of the well known ESTÉE LAUDER trademark, and that respondentís acts demonstrated respondentís bad faith. The instant case is analogous to the Estée Lauder case. Respondent has engaged in typo-piracy for the deliberate purpose of confusing and diverting Internet users from Complainantís web site. Respondentís actions have demonstrated bad-faith registration and use of a domain name.

iii) Respondent Deliberately Registered and Used a Domain Name Phonetically Identical to Complainantís Domain Name and Marks

Respondentís second-level domain name, "breifing," is a misspelling of the word "briefing," but it is pronounced in the same way. Therefore, Respondentís domain name is phonetically identical to Complainantís domain name and Marks. A WIPO Panel has found that the deliberate registration and use of a domain name that is known to be phonetically identical to a well-known trademark is an indicator of bad faith. In Yahoo! Inc. v. Eitan Zviely, et al., Case No. D2000-0273, the Panel examined several domain names that were phonetically identical to the YAHOO! trademark and found that the respondent had registered and used the domain names in bad faith. In the instant case, Respondent has deliberately registered and used a domain name that is phonetically identical to Complainantís domain name and marks. In so doing, Respondent has demonstrated bad faith registration and use of a domain name.

iv) Respondent Has Not Responded to Complainantís Attempts at Communication But Has Altered its Use of its Domain Name.

a) Respondentís Nonresponsiveness. Because Respondent describes itself as a "Domain Manager", Complainant suspected that Respondent was another entity concealing itself behind the CostNet entity, and Complainant hired Marksmen, an investigating company, to contact Respondent and determine Respondentís true identity.

Marksmen tried numerous times to contact Respondent via telephone, email, and letter, but Respondent never responded to Marksmenís attempts to establish communication.

Marksmen produced two reports of its investigative efforts. A WIPO Panel has found that a registrantís nonresponsiveness to a complainantís efforts to establish communication in order to resolve a domain name dispute prior to filing an ICANN complaint is an indicator of bad-faith use and registration of a domain name. See Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., Case No. D2000-0090, p. 3.

b) Respondentís Altered Use of Domain Name. After Complainantís agent, Marksmen, unsuccessfully attempted several times to contact Respondent, Respondent altered its use of its domain name. Respondent stopped using its <breifing.com> domain name as an automatic referral to third-party sites offering access to financial information services. Instead, Respondent used its domain name to lead to a web site that displays the word "hello." Because Respondent was nonresponsive to Complainantís attempts to communicate and then altered its use of its domain name so that it would locate a web site that offers only a greeting, Respondentís behavior acts as an admission by Respondent that its former uses of the <breifing.com> domain name were bad-faith uses under the Policy.

c) Respondentís Current Web Site. Although Respondent has altered its use of the <breifing.com> domain name in an attempt to create a passive and innocuous web site, Respondent has failed to do so. Respondentís current web site continues to demonstrate Respondentís bad faith because it offers no guidance or explanation to confused Internet users who may stumble into Respondentís web site by mistake while looking for Complainantís web site.

While Respondentís current web site appears to be inactive, it has been established in several WIPO Panel decisions that inaction can constitute bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (in which the principle was established); see also Do the Hustle, LLC v. Tropic Web, Case No. D2000-0624, which cites several other WIPO cases that followed the Telstra decision. Discussing Telstra and the inaction principle, another WIPO Panel observed that "the existence of the said Domain Name furnishes the Respondent with an instrument of fraud and deception" and the respondent "has the potential to activate his web site in such a manner as to divert the Complainantís customers to his web site."

The instant case is analogous. While Respondentís current web site appears inactive, Respondentís <breifing.com> domain name, as long as Respondent owns it, continues to be an instrument of fraud and deception, and Respondent may use it to divert and confuse Internet users from finding Complainantís web site.

v) Respondent Registered and Used its Domain Name While Under Constructive Notice of Complainantís Ownership of its Marks

15 U.S.C. ß1072 states that a federal trademark registration constitutes constructive notice of a registrantís claim to ownership of a mark. At least two WIPO Panels have found that the registration and use of a domain name while a respondent is under constructive notice of a complainantís claim to ownership of a trademark is an indicator of bad-faith use and registration of the domain name. See Barneyís Inc. v. BNY Bulletin Board, Case No. D2000-0059, Neuberger Berman Inc. v. Alfred Jacobsen, Case No. D2000-0323. Complainantís Marks were registered on the Principal Register of the USPTO on May 19, 1998 and June 8, 1999. As argued in section [12]B above, even though Respondent appears to be located in Costa Rica, this Panel can find that Respondent had constructive notice of Complainantís claim to ownership of the Marks under 15 U.S.C. ß1072 when Respondent registered its <breifing.com> domain name on November 30, 2000, because Respondentís activities involving its <breifing.com> domain name have taken place within the United States. Under those circumstances, Respondentís registration and subsequent use of its domain name demonstrates Respondentís bad faith.

4) Conclusion

For the foregoing reasons, Respondentís domain name is identical or confusingly similar to Complainantís domain name and Marks, Respondent has no rights or legitimate interests in the domain name, and Respondent registered, used, and continues to use the domain name in bad faith.

B. Respondent

The Respondent has not submitted a Response and is in default.

 

6. Discussion and Findings

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:

i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant 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 confusing similarity

It would not appear that <breifing.com> has any meaning per se. The Domain Name consists of a common misspelling of the Complainantís trademark BRIEFING.COM. The Domain Name is visually and phonetically similar to the Complainantís mark and the domain name it uses. It is also likely to be misread for the Complainantís mark by the casual reader and likely to be taken as conceptually identical. The Domain Name is confusingly similar to the Complainantís BRIEFING.COM mark.

B. Rights or legitimate interest of the Respondent

The Respondent has not submitted a Response and is in default. The Domain Name has been pointed to third party sites with no apparent connection with the Respondent but in the same business as the Complainant and currently points to a page simply saying "Hello". The panel can, therefore, assume that the Respondent has no rights or legitimate interest in the Domain Name.

C. Bad Faith

Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:

"(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location."

The Domain Name has been used to link to web sites offering financial information. Accordingly, it is clear that the Respondent has intentionally attempted to attract for commercial gain Internet users to an on-line location unconnected with the Complainant, by creating confusion as to the source, sponsorship, affiliation or endorsement of the services offered at those locations. I, therefore, find that bad faith has been demonstrated under Paragraph 4 (b) (iv) of the Policy.

Although, strictly, in view of my finding in the previous paragraph, it is unnecessary to consider the question of typo-piracy, I also find that by registering a visually and phonetically similar Domain Name to the Complainantís trade mark which is a common misspelling of that mark, the Respondent was hoping to take advantage of the Complainantís popularity by catching traffic from Internet users looking for the Complainant, but misspelling its name.

Previous WIPO panels have unreservedly found such activities to constitute bad faith for the purposes of the Policy. I note the finding in Estée Lauder Inc. v. estelauder.com, Case No. D2000-0869, p. 4. in this regard where typo-piracy was defined as "in essence a deliberate attempt to attract or divert internet users who make a common error or spelling mistake in their internet search." and the Panel found that "intentionally registered domain names with a slight, but knowingly confusing, spelling difference are pertinent to determining whether Respondent has acted in good faith,". Another WIPO Panel has held that the bad-faith practice of typo-piracy in connection with famous trademarks that are used as domain names occurs when "bad faith operators deliberately misspell a famous domain name trademark in hopes of luring search engines to their site in conjunction with searches for the famous name website." Neuberger Berman Inc. v. Alfred Jacobsen, Case No. D2000-0323, p. 5. I am satisfied that in this case the Respondent has engaged in typo-piracy activities and that for these reasons also I find that the Domain Name has been registered and used in bad faith.

 

7. Decision

In light of the foregoing the panelist decides that the domain name is confusingly similar to the Complainantís trademark BRIEFING.COM, the Respondent has no rights or legitimate interest in respect of the Domain Name, and the Domain Name was registered and used in bad faith.

Accordingly, it is ordered that the Domain Name <breifing.com> BE TRANSFERRED to the Complainant.

 


 

Dawn Osborne
Presiding Panelist

Dated: September 12, 2001