WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ultimate Electronics, Inc. v. Phayze, Inc.
Case No. D2002-0851
1. The Parties
Complainant is Ultimate Electronics Inc, Colorado United States of America. Complainant is in this case represented by Kristine M. Miller, Esq., Holand & Hart, LLP, Colorado, United States of America.
Respondent is Phayze Inc, Paris, France.
2. Domain Name and Registrar
The domain name at issue is <ultimatelectronics.com>
Registrar is I.D.R Internet Domains Registry Ltd.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received a Complaint in electronic form on September 11, 2002, and in hardcopy form on September 12, 2002. On that same day the Center issued an Acknowledgement of Receipt of Complaint.
Having issued a Request for Registrar Verification on September 25, 2002, the Center received such Verification on October 2, 2002. In that Verification the Registrar confirmed
- that it was in receipt of a copy of the Complaint, sent by Complainant;
- that the domain name <ultimatelectronics.com> was registered with that Registrar;
- that Respondent is the current Registrant of the domain name;
- that Registrant is Phayze Inc, Paris, France;
- that Administrative Contact and Technical Contact is also Phayze Inc (PHAINC) with e-mail address email@example.com;
- that the Domain Name Dispute Resolution Policy (the Policy) applies to the domain name;
- that the language of the Registration Agreement is English; and
- that Registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.
Having completed a Formal Requirements Compliance Checklist on October 3, 2002, the Center issued the same day a Notification of Complaint and Commencement of Administrative Proceeding which was transmitted to Respondent by Post/Courier (with attachments) and by e-mail (Complaint with attachments). The Notification was also transmitted to Complainant, to ICANN and to the Registrar.
Having received no Response from Respondent, the Center issued, on October 25, 2002, a Notification of Respondent Default which was transmitted by e-mail to Respondent and also copied to Complainant by e-mail.
Having invited Mr. Henry Olsson to serve as Sole Panelist in the case, the Center received on October 31, 2002, Mr. Olssonís Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Administrative Panel and Projected Decision Date which was duly communicated to the Parties. The Projected Decision Date was November 14, 2002.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
4. Factual Background
Complainant is a United States Corporation under the laws of the State of Delaware. It operates retail store services for consumer products including home audio, television and video systems and automobile sound system.
Nothing is known in this case about the activities of Respondent in addition to what is contained in Complainantís contentions which are referred to below.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts where the location of the principal office of the concerned Registrar is located.
5. Partiesí Contentions
Complainantís trademark rights, etc.
Complainant first contends that it is the owner of the renowned primary house mark "ULTIMATE ELECTRONICS" and has a United States service mark registration and also a domain name registration for this mark. According to Complainant, it has continuously identified its retail store services with that mark and name for more than ten years; during that period, Complainant has invested substantial money to market, advertise and promote its mark and name and services offered under it. These efforts combined with the high quality of the services have made the mark well-known and one of Complianantís most valuable corporate assets.
Complainant asserts that, after having filed a service mark registration for its trademark in May 1993, it obtained a United States registration under No. 1,949,352 on January 16, 1996. Furthermore, in March 1996, Complainant registered its mark in the domain name <ultimateelectronics.com> and uses its website to provide existing and potential customers information regarding Complainant as well as its stores, products and services. That website is accessible from all over the world, including France.
In this respect Complainant contends that the domain name at issue is confusingly similar with, and even virtually identical to, Complainantís trademark in appearance, sound and meaning. Complainant points out that the only distinction between Complainantís registered trademark and the domain name is a misspelling in that one letter "e" is missing where the words "ultimate" and "electronics" merge. According to Complainant, given the striking similarities between the domain name and the trade name, trademark and domain name, Internet users may, through a misspelling, a simple slip of the hand or a simple failure to type the letter "e" twice reach Respondentís site thinking that it is somehow related to, affiliated with or endorsed by Complainant; what they reach is instead "unwanted and distasteful pictures of nudity and sexual acts" instead of information on electronic products. In fact, Complainant stresses, the typical Internet user expects to be directed to a particular companyís website by typing a domain name address consisting of the companyís primary name and mark and the domain name ending ".com." Thus, Respondentís use of a misspelling of Complainantís corporate name and official website is, according to Complainant, certain to cause confusion, and Complainant has received at least one Complaint from a customer who inadvertently logged into Respondentís website when trying to log into Complainantís website.
Complainant furthermore contends that the deletion of one letter is not sufficient to avoid confusion and in fact such "typo-squatting" or "typo-piracy" has been expressly found to result in confusion in a number of earlier WIPO decisions to which Complainant makes reference.
Rights or legitimate interests
In this respect Complainant first contends that Respondent has no apparent rights or legitimate interests in the domain name at issue. At no time had Complainant authorised Respondent to register and/or use the domain name at issue to identify a pornographic website or any other website or to incorporate Complainantís trademark into a domain name. Complainant refers in this context to a copy of a demand letter of May 1, 2002, to Respondent under the address obtained from the WHOIS database with a request to immediately desist from using the infringing and diluting domain name at issue. That letter was returned as undeliverable. Complainant then sent the same letter to the e-mail address obtained from "www.betterwhois.com" database. Complainant received no reply to that letter.
Complainant adds that, upon information and belief, Respondent does not own any registered or common law marks containing the term "ULTIMATE ELECTRONICS" nor has Respondent made any actual use of, or entered into any preparations to use, the domain name at issue in connection with a bona fide offering of goods or services. Complainants submits that an Internet user who accesses the domain name at issue is automatically rerouted to a website called "hanky-panky-college.com" which contains instructions on how to access Internet pay-to-use pornographic websites for free. Respondentís use of the domain name at issue in connection with pornographic images and links tarnishes and dilutes Complainantís mark by suggesting to users that Complainant is in some way affiliated with the domain name at issue. Furthermore, using a domain name that bears no logical relation to Respondentís pornographic website while tarnishing a trademark is a conduct that does not demonstrate a bona fide offering of goods or services or a legitimate interest in the domain name. Upon information and belief, according to Complainant, neither Respondent nor any individual at Respondent has been commonly known by the contested domain name. Complainant stresses that there is simply no similarity or connection between "hanky-panky-college" or "Phayze" and Complainantís mark or the domain name at issue.
In this context, Complainant also alleges that, upon information and belief, Respondent is not making any legitimate non-commercial or fair use of the domain name at issue but is rather using it for commercial gain. Thus, the domain name links to the pornographic site "hanky-panky-college.com" and that in turn invites users to other pornographic sites. Furthermore, multiple advertisements appear on the screen for which it is likely that Respondent receives a revenue. Other WIPO panels in the past have found that use of domain names to offer pornography-related websites and links to other pornographic websites is not a legitimate non-commercial use or fair use of a disputed domain names.
Registration and use in bad faith
In this respect Complainant first contends that Respondent is attempting to attract users to its website "ultimatelectronics" and then forward them to another website, by using a domain name that is confusingly similar to Complainantís website "ultimateelectronics." Respondentís website is unrelated to Respondentís business and appears not to be related to its field of commerce. The fact that Respondent engaged in "typo-squatting" by registering a domain name that differs from Complainantís only in minor ways that mimic common typing errors by Internet users constitutes, according to Complainant, bad faith in itself. To support this allegation, Complainant refers to a number of earlier WIPO cases. Furthermore, the use of the misspelled "ultimatelectronics.com" to redirect Internet traffic to a pornographic website constitutes bad faith per se. Also, this redirection of Internet traffic also implies commercial benefit from each hit of the website because of the advertisements that appear on the screen. Respondentís commercial gain from linking Complainantís mark to pornographic images evidences, in the view of Complainant, a bad faith registration and use of the domain name under Paragraph 4(b)(iv) of the Policy. Also in this respect Complainant makes reference to certain earlier WIPO cases.
In accordance with Paragraph 3(b)(x) of the Rules and for the reasons which have been set out in the Complaint, Complainant requests the Administrative Panel to issue an order that the domain name <ultimatelectronics.com> be transferred to Complainant.
No Response has been received from Respondent who is therefore in Default.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and the documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
One issue that the Panel has to consider before entering into the substance of the case is whether the Complaint has been properly brought to the attention of the Respondent. In this respect the Panel first notes that Complainant in its signed Complaint states that "a copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been transmitted to the Respondent on September 10, 2002, by international delivery to the address set forth in Paragraph 6." That address is the one which has been indicated above for Respondent. There are no indications that this transmittal did not go through. Furthermore, the Panel notes that the Notification of Complaint and Commencement of Administrative Proceeding was sent to Respondent by post/courier on October 3, 2002, under the address indicated above. The number of the Shipment Airwaybill was 475 6997 733. After several unsuccessful attempts to deliver the shipment and to obtain more address information, the package was returned to shipper on October 11, 2002. The Panel also notes, however, that the Notification was sent by e-mail to firstname.lastname@example.org and to email@example.com. There were no return notifications as regards those e-mail transmissions.
The information thus available about the transmission of the Notification of Complaint and Commencement of Administrative Proceeding leads the Panel to conclude that all reasonable efforts have been undertaken to effectively communicate the Notification to Respondent. Consequently, there is from this point of view no obstacle to considering the case.
In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case no Response has been submitted and none of the contentions by Complainant have been contested despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
The Registrar Verification confirms that the Policy is applicable in this case and that there is thus an obligation for Respondent to submit to a mandatory administrative proceeding as now initiated in respect of the domain name at issue.
Paragraph 4.a. of the Policy directs that Complainant has to prove each of the following:
- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain name; and
- that the domain name at issue has been registered and is being used in bad faith.
In the following part of this Decision the Panel discusses each of those elements.
Identity or Confusing Similarity
In this respect, Complainant has, according to Paragraph 4.a(i) of the Policy, to prove that the domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is <ultimatelectronics.com>.
Complainant contends that it is the owner of the registered service mark "ULTIMATE ELECTRONICS" in the United States and also of the domain name <ultimateelectronics.com>. To support its contention in this respect Complainant has submitted copies of a printout of the database of the United States Patent and Trademark Office showing that in fact that mark was registered on January 16, 1996. Complainant also alleges that the registration of its domain name was effected in 1996, and that it is being used on its website to provide information about Complainant and its stores, products and services, which website is obviously also accessible from France where Respondent is domiciled. Respondent has not submitted any observations concerning Complainantís trademark rights or concerning the accessibility of Complainantís website in France.
On the basis of the evidence submitted the Panel is satisfied that Complainant has a right under United States trademark law in the service mark "ULTIMATE ELECTRONICS" and that the issue of identity or confusing similarity has to be considered taking into account the relations between that mark and Respondentís domain name.
The domain name and the trademark differ in some respects. One is that in the domain name at issue one "e" is missing where "ultimate" and "electronics" merge. Another one is that the domain name contains the notion ".com." The first difference is in the view of this Panel a typical situation of "typo-squatting" as claimed by Complainant. The Panel is fully satisfied that this difference in spelling does not in any way remove the confusing similarity but on the contrary rather serves to attract users to Respondentís website. The second difference is, as has been found in a number of earlier decisions, an insignificant distinction which does not remove the likelihood of confusion.
On the basis of these findings and considerations the Panel considers it to be established that there exists a confusing similarity between the domain name at issue and Complainantís protected trademark.
Rights or Legitimate Interests
In this respect, Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
Complainantís allegations in this respect have been summarised above. Those include essentially that Respondent has no apparent rights or legitimate interests in the domain name at issue, that Respondent does not own any registered or common law trademark rights relating to the term "ULTIMATE ELECTRONICS" and has not made any actual use of, or entered into any preparations to use, the domain name at issue in connection with a bona fide offering of goods or services but rather, at that website, included links to pornographic websites. Also, Complainant alleges that Respondent is using the domain name for commercial gain through the links to pornographic websites and through the advertisements which appear in connection with such links.
Respondent has not, despite the opportunity given, submitted any objections or observations in relation to Complainantís allegations concerning the use of the domain name at issue. The Panel therefore has to operate on the basis of Complainantís allegations in this respect which are supported by some documentary evidence.
On the basis of Complainantís contentions about Respondentís activities and in the absence of any observations in this respect by Respondent the Panel is satisfied that Respondent has no rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4.b sets out some circumstances which, in particular but without limitation, shall, if found by the Panel to be present, be considered as evidence of registration and use in bad faith.
Complainantís contentions in this respect include basically that the domain name at issue is unrelated to Respondentís business, that it is engaging in "typo-squatting" by registering a domain name that differs from a well known domain name only in minor ways that mimic common typing errors. Furthermore, according to Complainant, Respondent uses the domain name at issue to redirect Internet traffic to a pornographic website and is likely to receive commercial benefits though the advertisements linked to that website.
Also as regards Complainantís allegations in this respect, Respondent has not submitted any objections or observations. The Panel therefore has to consider these elements essentially on the basis of Complainantís contentions and the evidence available to support those.
The Panel considers it established in this case that Respondent has in fact engaged in a "typo-squatting" activity for the purpose of attracting Internet traffic to its own website and then redirecting that traffic to a pornographic website. The Panel also agrees with Complainant to the effect that this redirection of the traffic must be assumed to provide economic benefits for Respondent. These circumstances constitute, in the view of this Panel, a clear evidence of registration of the domain name, and the use of it, in bad faith in the sense of the Policy.
On the basis of the foregoing, the Panel is satisfied that there exists a confusing similarity between the domain name at issue and Complainantís trademark/service mark, that Respondent has no rights or legitimate interests in the domain name at issue and that the registration of the domain name and the use made of it amounts to registration and use in bad faith. On the basis of those conclusions Complainantís request for a transfer of the domain name to Complainant shall be approved.
In accordance with Complainantís request and with reference to Paragraph 4.i of the Policy the Panel requires that the domain name <ultimatelectronics.com> be transferred to Complainant.
Dated: November 3, 2002