WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Princeton Review v. RaveClub Berlin
Case No. D2003-0205
1. The Parties
The Complainant is The Princeton Review, New York, NY 10024, of United States of America, represented by Attorney Tamar Niv Bessinger of the law firm Fross Zelnick Lehrman & Zissu, P.C., New York, NY 10017, United States of America.
The Respondent is RaveClub Berlin, Cherry Hill, NJ 08034 of United States of America.
2. The Domain Name and Registrar
The disputed domain name <princtonreview.com> (hereafter referred to as "the domain name") is registered with CSL Computer Service Langenbach GmbH dba Joker.com (hereafter referred to as "the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2003. On March 17, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name(s) at issue. On March 18, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 9, 2003.
The Center appointed Paul E. Mason as the sole panelist in this matter on April 24, 2003. The Panelist finds that the Panel was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant has asserted the following relevant facts in its Complaint:
1. The domain name was registered with the Registrar on February 10, 2001, see Complaint, paragraph 7.
2. Complainantís business, known as The Princeton Review, was founded in 1981 to help high school students prepare for the Scholastic Aptitude Test (U.S. university entrance examinations). Since then, its course offerings have been expanded to cover many other types of college and graduate school admissions examinations. See Complaint, paragraph 10(A)(i).
3. Complainant has used the name "The Princeton Review" in commerce on a regular basis to promote its goods and services by providing courses to almost one million students, selling more than twenty million of its books and software packages under this name, thereby realizing several hundred million dollars in net revenues. Complainant has also extensively advertised its goods and services under "The Princeton Review" name via magazines, newspapers, radio, direct mail, and on-line ads. See Complaint, paragraphs 10(A)(iii) and (v).
4. Complainant also provides a set of web-based admissions process solutions to institutions of higher education, and has a strong internet presence via its website "www.princetonreview.com" which was launched in December 1993. See Complaint, paragraphs 10(A)(v) and (vi).
5. Partiesí Contentions
Complainant contends, among other things, that:
1. Although unregistered, the name "The Princeton Review" has been established as its legitimate trademark through extensive commercial usage, thus giving Complainant the requisite intellectual property rights in the name to bring this action.
2. There has never been any relationship between Complainant and Respondent, Complainant has not granted any license to Respondent to use the name, and therefore Respondent has no intellectual property rights in the name.
3. The domain name at issue is confusingly similar to Complainantís protectable trademark because it is merely a slight typographical variation thereof.
4. Respondentís registration and use of the domain name are in bad faith because an unsuspecting consumer who types in "www.princtonreview.com" instead of "www.princetonreview.com" is directed to a series of pornographic websites managed by Respondent. Respondent is also engaging in the "mousetrapping" of unsuspecting consumers into viewing numerous windows of unwanted ads of various kinds.
5. Numerous UDRP cases have held that the practice of "typosquatting" by registering and using a domain name that is a typographical variant of a registered trademark for pornographic purposes and/or Respondentís own commercial gain, constitutes bad faith registration and use which have formed the grounds for transferring the domain name at issue to Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
On their face, the domain name and Complainantís trademark (see paragraph B below) are confusingly similar, with the domain name being a slight typographical variant of Complainantís trademark.
B. Rights or Legitimate Interests
The Panel agrees with Complainantís contention that the name "The Princeton Review", although unregistered, is entitled to recognition and protection as a trademark. Under well-settled U.S. law, registration is not necessary to establish or protect a trademark as long as it is regularly used in commerce. Complainant has established such commercial usage.
There has been no assertion that Respondent has any right in the trademark whatsoever, and therefore this Panel finds that Respondent has no such right.
C. Registered and Used in Bad Faith
The Panel agrees with Complainantís assertions in Paragraph 5 above that:
- Respondentís registration and use of the domain name are in bad faith because an unsuspecting consumer who types in "www.princtonreview.com" instead of "www.princetonreview.com" is directed to a series of pornographic websites managed by Respondent as well as ads for music downloads and prescription drug service. This was verified by a website visit by this Panel on April 29, 2003; and
- Numerous UDRP cases have held that the practice of "typosquatting" by registering and using a domain name that is a typographical variant of a registered trademark for pornographic purposes and/or Respondentís own commercial gain, constitutes bad faith registration and use which have formed the grounds for transferring the domain names at issue to Complainants. See, for example, Collections, Etc., Inc. v. RaveClub Berlin, WIPO Case No. D2002-0698; Dell Computer Corp. v. RaveClub Berlin, WIPO Case No. D2002-0601; and AT&T Corp. v. Zuccharini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440.
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 name <princtonreview.com> be transferred to the Complainant.
Paul E. Mason
Dated: April 29, 2003