WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Sally Jensen v. BnB
Case No. D2002-1139
1. The Parties
The Complainant is Dr. Sally Jensen, 1150 Island View Lane, Encinitas, California 92024, United States, represented by The Trademark Group of United States of America.
The Respondent is BnB, 507, Anum Estate, 49DCHS, Shahara-e-faisal, Karachi, Sindh 74400, Pakistan; Dissertationsdoctor.com, C/O Michael Levin, 344 Cyprus Road, Ocala, FL 32672, United States of America, represented by Mr Sajid Anwer of Pakistan.
2. The Domain Names and Registrars
The disputed domain names are:
The domain names are registered with Dotster, Inc, doing business as Dotster.com of PO Box 821066, Vancouver, WA, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 14, 2002, (the hard copy Complaint was received by the Center on December 17, 2002). On December 16, 2002, the Center transmitted by email to Dotster.com a request for registrar verification in connection with the domain names at issue. On December 19, 2002, Dotster.com transmitted by email to the Center its verification response confirming, in relation to each domain name, that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2002. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 9, 2002. The Response was filed by email with the Center on January 9, 2003.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 20, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant holds a United States trademark registration (number 2,438,338) for "DISSERTATION DOCTOR". The Complainantís trademark certificate states that the application for the trademark was filed on January 7, 2000, and that first use of the trademark by the Complainant (in commerce or otherwise) was on January 1, 1999. The United States Patent and Trademark Office registered the trademark on March 27, 2001.
The Respondent registered the <dissertationsdoctor.com> domain name on July 31, 2002. The registrant was stated as:
344, Cyprus Road
OCALA, FL 32672
The administrative and technical contact was stated as "Michael, Levin" at the same address.
The Respondent registered the <dissertations-doctor.com> domain name on March 28, 2002, with the same contact details.
The Complainant (via her Representative) wrote to Michael Levin (by letter to the Florida address) on August 27, 2002, asserting the Complainantís trademark rights, requesting the Respondent cease using the domain names and requesting a transfer to the Complainant.
The Representativeís letter was returned "Return to sender Ė Attempted Ė Not known". The Representative wrote to Michael Levin (by email to firstname.lastname@example.org) on September 20, 2002, asserting the Complainantís trademark rights, requesting the Respondent cease using the domain names and requesting a transfer to the Complainant.
The Representative wrote to Michael Levin at Dissertations Doctor (by fax to the Florida address) on October 2, 2002, asserting the Complainantís trademark rights, requesting the Respondent cease using the domain names and requesting a transfer to the Complainant.
The Representativeís fax was received by an unconnected business called Actions Products International.
The Representative wrote to Dissertations Doctor (by fax to the Florida address) on October 4, 2002, asserting the Complainantís trademark rights, requesting the Respondent cease using the domain names and requesting a transfer to the Complainant.
Following the Representativeís attempts to contact the Respondent, the registrant identity in relation to both domain names was changed. The new registrant for each was stated as:
507, Anum Estate, 49DCHS, Shahara-e-faisal
Karachi, Sindh 74400
The Respondent has not replied directly to any of the Complainantís correspondence.
5. Partiesí Contentions
The Complainant seeks the transfer of the domain names from the Respondent to the Complainant in accordance with paragraph 4(b)(i) of the Policy.
The Complainant contends that the domain name in issue is identical or confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.
The Respondent contends that it has a prior trademark registration, and therefore has rights or legitimate interests in respect of the domain name.
6. Discussion and Findings
Although the Respondent has submitted a Response to the Center, the Response does not annex any supporting evidence. Paragraph 10(a) of the Rules requires the Panel to treat the Complainant and Respondent equally and give each a fair opportunity to present its case. Therefore, although the Response contains no supporting evidence, the Panel has, where appropriate, considered the allegations made in the Response. However, without supporting evidence, the Panel cannot base its findings on the allegations contained in the Response.
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant must prove three elements are present in its Complaint. The Panel will now consider in detail each of the three elements in paragraph 4(a):
A. Identical or Confusingly Similar
The Complainant has registrations for the trademark set out above. The trademark is not identical to the disputed domain names (one domain name is a pluralisation of the trademark and the other domain name is a hyphenation of the trademark), but in the Panelís view both domain names are very similar, so paragraph 4(a)(i) is proved.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out an illustrative list of the ways in which a Respondent can show rights or legitimate interests in a disputed domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue"
The Respondent has provided no evidence of the Respondentís use of the domain names or names corresponding to the domain names prior to any notice to the Respondent of the dispute in connection with the bona fide offering of goods or services.
Although the Respondent has alleged in its Response that it has been known as "Dissertations Doctor" (as a company name) in Pakistan since 1995 the Respondent has provided no evidence of this.
The Respondent has provided no evidence that it is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark of the Complainant. The Respondent is using the domain name in relation to the same services for commercial gain, i.e., a US-based website offering graduate education coaching services aimed at United States students.
By failing to file any supporting evidence with the Response, the Respondent has provided no evidence to contest the allegations of the Complainant that it lacks any rights or legitimate interests in the disputed domain name. Therefore the Panel finds that the Respondent has no rights or legitimate interests to the domain names and that paragraph 4(a)(ii) of the Policy has been proved.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out an illustrative list of circumstances that constitute evidence of registration and use in bad faith:
"(i) circumstances indicating that you 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 trademark 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 or 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 attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location."
The Complainant has submitted seven separate allegations in support of her assertion that the domain names are being used in bad faith. The Panel will deal with each of these below.
1. The Respondent failed to respond to Complainantís request to transfer the domain names.
The Factual Background above shows the unresponsiveness of the Respondent to all the Complainantís correspondence requesting a transfer of the domain names. [Failure to respond to a request to transfer is evidence of bad faith] (Encyclopaedia Brittanica, Inc. v John Zuccarini and The Cupcake Patrol a/ka Country Walk a/ka Cupcake Party, Case No. D2000-0330)
2. The Respondent provided false information when registering the domain names.
The Factual Background above shows a false address and fax number. Falsifying contact information is evidence of bad faith (Dell Computer Corporation v Clinical Evaluations, Case No. D2002-0423).
3. The Respondent failed to conduct trademark search prior to the registering the domain names.
The Factual Background above shows clearly the timeline for the Complainantís trademark registration with the United States Patent and Trademark Office. Information about the registration would have been readily accessible to the Respondent prior to the registration of the domain names. Failure to perform a trademark search before registering a domain name is evidence of bad faith (Kate Spade, LLC v Darmstadter Designs, Case No. D2001-1384).
4. The Respondent registered the domain name primarily for the purposes of disrupting the business of a competitor.
The registration of a misspelling of a trademark is evidence of bad faith (The Vanguard Group v Dotsan, Case No. D2002-0585).
5. The Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondentís website by creating the likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website.
By registration of a domain name that is confusingly similar to a registered trademark the Respondent has created a likelihood of confusion that the Respondentís website is in some way connected with the Complainant. Indeed in The Vanguard Group v Dotsan, the Panel stated "Omitting or adding a letter, or misspelling a trademark falls within both the spirit and letter of the confusing similarity prohibited by the Policy". This is evidence of bad faith (HSBC Holdings Plc v Philip McCarthy MCG/First Direction Mortgages Limited, Case No. D2002-0644).
6. The Respondent registered the domain names deliberately to trade on the goodwill of the Complainantís trademark.
The Complainantís trademark was published and registered prior to the registration of the domain names. At the time of registration of the domain names, the Complainant had used the trademark for over three and a half years. It follows on from this that such deliberate registration in the light of constructive knowledge of the trademark is evidence of bad faith.
7. The Respondentís use of the disputed domain names is neither fair nor non-commercial and is intended to divert customers away from Complaintís website to a website that could harm the goodwill of the mark.
The Respondent provides reports, essays, research papers, dissertations and term papers to students. Although the Panel cannot determine the legality of such sales, the Panel considers that the sale of such material could harm the goodwill of the Complainantís mark. It follows on from this that such use of the domain names is in bad faith.
Although taken in isolation some of the individual bad faith elements set out above would not lead to a finding of bad faith by the Panel, the cumulative nature of so many elements in the facts of this case means that the Panel can only conclude that bad faith exists on the part of the Respondent.
Therefore the Panel finds that the Respondent has registered and used the domain names in bad faith and that paragraph 4(a)(iii) of the Policy has been proved.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names be transferred to the Complainant.
Debrett G. Lyons
Date: February 3, 2003