WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc.

Case No. D2003-0317

 

1. The Parties

The Complainant in this administrative proceeding is Hobsons, Inc., of Ohio, United States of America.

The Complainant is represented in this proceeding by Thomas W. Humphrey, Esq. of Wood, Herron & Evans, L.L.P., of Ohio, United States of America.

The Respondent (the holder of the domain name registrations) is Peter Carrington a/k/a Party Night, Inc., Amsterdam, The Netherlands.

 

2. The Domain Names and Registrar

The three disputed domain names are: <collegeveiw.com>, <colegeview.com> and <collageview.com>

The Domain Name Registrar for all three domain names is Key-Systems GmbH dba domaindiscount24.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2003. On April 24, the Center transmitted by email to Key-Systems GmbH a request for registrar verification in connection with the three domain names at issue (the Center sent a reminder on April 28, 2003). On April 28, 2003, Key-Systems GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all three disputed domain names and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed, on April 29, 2003, an Amendment to the Complaint (regarding the preferred method of communications for electronic material directed to the Complainant). On May 2, 2003, the Center verified that the Complaint [together with the Amendment to 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 May 2, 2003. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 22, 2003.

The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on May 26, 2003.

The Center appointed Ron Klagsbald [the undersigned] as the sole panelist in this matter on July 10, 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

In light of Respondentís default, the facts stated in the Complaint remain uncontested. As the Respondent has failed to submit a response to the complaint, the Panel may accept all Complainantís allegations as true (see Sammy's Management Company v. Keith Wimbley, WIPO Case No. D2002-0912 (December16, 2002) referring to: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (March 3, 2000).

The facts included in the Complaint are, therefore, accepted as true.

1. Complainant is the owner of two trademarks registered in the USA:

U.S. Registration No. 1,943,924 registered on December 26, 1995 and valid as of December 7, 1994 [filing date] in class 9 for computer programs for use in education and career guidance, namely searching for and selecting a college or graduate school, and in completing and/or filing an application to a college or graduate school [Annex 3A to the Complaint].

U.S. Registration No. 2,405,728 registered on November 21, 2000, and valid as of July 16, 1999 [filing date] in classes 36, 41 and 42 for providing information over a global computer network in the field of financial aid for attending a college or graduate school; providing information over a global computer network in the field of education, namely, information related to searching for and selecting a college or graduate school; information related to completing and/or filing an application or a student profile to a college or graduate school; information related to attending college or graduate school, including articles on these topics; information on college-related books, including excerpts of books and information as to ordering college-related books from an on-line bookstore; information provided in an "Ask the Experts" section where users may pose questions to professional guidance counselors, and later receive answers that are posted in an article format; and providing virtual tours of colleges; providing information over a global computer network in the field of careers, including career counseling and career planning tools; computer services, namely providing an on-line directory in the field of education [Annex 3B to the Complaint].

2. Since at least March 1994, Complainant has been the Registrant of the domain name <collegeview.com>, which gives access to Complainantís primary website, "http://www.collegeview.com". Complainant has held registration of this domain name since 1994. Copies of Complainantís website "http://www.collegeview.com" and the Domain Name Registration (WHOIS Search Results) are attached to the Complaint and marked Annex 4A and 4B, respectively.

3. Complainant has used its trademark, COLLEGEVIEW, in connection with computer programs since at least July 1993, and in connection with online information services since at least 1996.

4. Respondent in this administrative proceeding, Peter Carrington a/k/a Party Night Inc. is the registrant of the domain names in dispute: <collegeveiw.com>, <colegeview.com> and <collageview.com>. Copies of the printouts of the WHOIS database search results for the domain names <collegeveiw.com>, <colegeview.com> and <collageview.com>, are attached to the Complaint and marked as Annex 1A, 1B and 1C, respectively.

 

5. Partiesí Contentions

A. Complainant

Complainant, Hobsons, Inc., raises the following arguments. The factual elements of these contentions are accepted as true, in view of Respondentís default to file a response.

1. The contested domain names, <collegeveiw.com>, <colegeview.com> and <collageview.com>, are confusingly similar to Complainantís registered trademark COLLEGEVIEW. Respondent has intentionally registered virtually identical phrases with a single letter misspelling variation of Complainantís trademarks. Respondent misspelled "view" to read "veiw." The second domain name misspells "college" as "colege," and the third domain name misspells "college" as "collage." Respondentís domain names have the same commercial impressions as Complainantís marks. The typographical changes in each of Respondentís domain names are not distinct enough to avoid confusion among Complainantís customers. [Section V.A. of the Complaint].

2. The prevailing challenge in this proceeding is well known as "typo-piracy." Complainant contends that it is well established that a domain name(s) is confusingly similar when it corresponds to a typographical error in the spelling of another mark [Complainant cites previous WIPO domain name cases Ė the Respondent in this proceeding was the Respondent in most cited cases]. The Complainant argues further that unsuspecting visitors are attracted to Respondentís websites by entrapment as a result of their typing "collegeveiw," "colegeview" or "collageview" instead of "collegeview." [Section V.A. of the Complaint].

3. Since Complainant adopted the COLLEGEVIEW marks in 1993 and 1996, it has continuously and extensively used these marks in interstate commerce in connection with the advertising and sale of Complainantís goods and services. Hundreds of thousands of Complainantís customers, generally teenagers and young adults, obtain services and consultation offered under the Complainantís marks and through Complainantís website. For the ten-month period ending March 31, 2003, over 1,300,000 unique customers visited Complainantís website and were exposed to Complainantís marks through advertising and promotion thereon. Complainantís COLLEGEVIEW marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world. [Section V.B. of the Complaint].

4. As a result of Complainantís significant advertising campaigns and sales and exposure on the Internet, Complainantís COLLEGEVIEW marks have become famous and well known among members of the consuming public. [Section V.B. of the Complaint].

5. Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainantís marks or anything confusingly similar thereto. [Section V.B. of the Complaint].

6. Respondent does not own any registered or common law marks containing the terms "collegeveiw" "colegeview" or "collageview" or any similar derivations thereof. Respondentís use of the disputed domain names is intentionally tarnishing Complainantís trademarks by diverting Complainantís prospective customers to websites that include pornographic content, and/or contain "Napster" like MP3 download sites and/or other objectionable content of a varied nature. Respondent is not operating any business or organization under the contested domain names and is not making legitimate, non-commercial or fair use of the contested domain names. Complainant argues that Respondent is merely diverting Internet traffic, generally teenagers and young adults, to its website(s). [Section V.B. of the Complaint].

The Panel has attempted to verify these contentions. When typing the domain name <collegeveiw.com>, the Panel was automatically transferred to a website whose address is: "http://www.hanky-panky-college.com". This is an Adult Only, pornographic site. When typing the domain name <colegeview.com>, the Panel was automatically transferred to a website whose address is: "http://www.yes-yes-yes.com/1.html". This is a site where MP3 Messenger software can be downloaded. This site also provides searching possibilities of various popular topics (e.g.: travel, gambling, online shopping, online auctions etc.). When typing the domain name <collageview.com>, the Panel was automatically transferred to the same address as when typing <colegeview.com>, namely a website whose address is: "http://www.yes-yes-yes.com/1.html". It should also be noted that when this site appears on the screen, or when attempting to close this site, another screen automatically pops-up directing to a games site at the address: "worldonline games.tv".

7. Complainant argues [Section V.C. of the Complaint] that Respondent has registered and is using the contested domain names in bad faith; that Respondent has no rights to <collegeveiw.com>, <colegeview.com> or <collageview.com>, but clearly has chosen to register these domain names to divert Internet traffic to Respondentís pornographic "mousetrap" website(s), which is disrupting the business of Complainant.

8. Complainant contends that Respondent has intentionally attempted to attract Internet users, namely teenagers and young adults, to Respondentís website(s) or its other on-line locations, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondentís website(s). According to the Complainant, Respondentís typo-piracy is a blatant attempt to capture the Internet usersí attention by exploiting Complainantís fame and trademarks [Section V.C. of the Complaint].

9. Complainant argues that the mere act of diversion by confusion to Respondentís website(s) or other online location is evidence of bad faith. To support this argument Complainant cites previous WIPO domain cases (the Daimler Chrysler case and other cases) [Section V.C. of the Complaint].

10. Complainant contends that Respondent has shown a pattern of its bad faith behavior by repeatedly registering misspelled third-party trademarks. To support this, Complainant lists in the Complaint many previous WIPO and other UDRP cases in which the Respondent was the same as in this case [Section V.C. of the Complaint].

11. In accordance with Paragraph 4(i) of the Policy, for the reasons described above in this chapter, the Complainant requests the Administrative Panel to issue a decision that the contested domain names: <collegeveiw.com>, <colegeview.com> and <collageview.com> be transferred to the Complainant.

B. Respondent

The Respondent did not file a response and did not reply to the Complainantís contentions.

Consequently, all Complainantís contentions and arguments, as stated above, are uncontested, indisputable and, therefore, accepted as true.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, according to paragraph 4(i) of the Policy, a complainant must prove the following three elements:

(i) The domain name is identical or confusingly similar to a trademark 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.

The Panel will discuss these elements one by one:

A. Respondentís Domain Name is identical or confusingly similar to Complainantís Mark (Policy, Paragraph 4(a)(i))

(i) Complainant has rights in the COLLEGEVIEW Mark. This mark is federally registered in the USA in the US Patent and Trademark Office in numerous classes for different products and services. The Complainant is the owner of these trademark registrations [Annex 3 of the Complaint].

(ii) Since Complainant adopted the COLLEGEVIEW marks in 1993 and 1996, it has continuously and extensively used these marks in interstate commerce in connection with the advertising and sale of Complainantís goods and services. Many of Complainantís customers, mainly teenagers and young adults, obtain services and consultation offered under Complainantís COLLEGEVIEW marks and through Complainantís website. As a result of Complainantís significant advertising campaigns and sales and exposure on the Internet, Complainantís COLLEGEVIEW marks have become well known among members of the consuming public.

(iii) All three domain names that Respondent has registered - <collegeveiw.com>, <colegeview.com> and <collageview.com> - are almost identical Ė visually and phonetically- to Complainantís mark COLLEGEVIEW. In fact, all three domain names are phonetically identical to Complainantís mark.

The only difference between the domain name <collegeveiw.com> and Complainantís mark is the misspelling of the suffix Ė view. Respondent has changed the order of the letters i and e in this suffix.

The only difference between the domain name <colegeview.com> and Complainantís mark is the misspelling of the prefix Ė college. Respondent has omitted one l from this prefix.

The only difference between the domain name <collageview.com> and Complainantís mark is the misspelling of the prefix Ė college. Respondent has replaced the vowel e with the vowel a in this prefix.

All three contested domain names are a minor misspelling of Complainantís trademark COLLEGEVIEW. An Internet user may type by mistake any of the three contested domain names instead of Complainantís domain name <collegeview.com.>. The misplacement of one vowel in a word and replacement of vowels (a instead of e), as well as on omission of a letter that should appear twice in a sequence (colegeview instead of collegeview) are very common typing mistakes.

(iv) As previously held by other WIPO panels, a mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which Respondent has legitimate rights. This is the case, in particular, where Complainantís mark is well-known, like in the present case [see: America Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495 (February 3, 2001); Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (August 16, 2001); Playboy Enterprises International Inc. v. SAND WebNames - - For Sale, WIPO Case No. D2001-0094 (April 4, 2001)].

(v) In these circumstances, this appears to be a clear case of what is known as "typo-squatting" or "typo-piracy" [see for example: Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (October 2, 2002); DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0756, (October 29, 2002)]

B. Respondent has no Rights or Legitimate Interests in respect of the Domain Name (Policy, Paragraph 4(a)(ii))

(i) Complainant has established that Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainantís COLLEGEVIEW marks or anything confusingly similar thereto.

(ii) In light of Respondentís default, the Panel finds that Complainant has established that Respondent does not own any registered or common law marks containing the terms "collegeveiw" "colegeview" or "collageview" or any similar derivations thereof. Further, Respondent is not operating any business or organization under the contested domain names and is not making legitimate, non-commercial or fair use of the contested domain names.

(iii) This Panel concludes that Complainant has shown that Respondent has no Rights or Legitimate Interests in respect of the domain names.

C. Respondent has Registered and Used the Domain Name in Bad Faith
(Policy, Paragraph 4(a)(iii))

(i) Paragraph 4(b) of the Policy lists particular circumstances, without limitation, that if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. Paragraphs 4(b) (iii) and (iv) of the Policy describe such circumstances:

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's 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."

(ii) This Panel accepts Complainantís contention that Respondent has chosen to register the three contested domain names to divert Internet traffic to Respondentís pornographic "mousetrap" website(s), which is disrupting the business of Complainant, which is mainly providing information about colleges and graduate schools. This Panel finds that Complainant has proven bad faith in the registration and use of the domain names in terms of Paragraph 4(b)(III) of the Policy.

(iii) This Panel accepts Complainantís arguments that Respondent has intentionally attempted to attract Internet users, namely teenagers and young adults, to Respondentís website(s) or its other on-line locations, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondentís website(s). Respondentís typo-piracy is an attempt to capture the Internet usersí attention by exploiting Complainantís fame and trademarks.

When Internet users type any of the three contested domain names they are directed to adult only/ MP3/games websites. These websites have no connection whatsoever with the Complainant and are not sponsored by the Complainant. There can be no reasonable explanation for Respondentís activities other than the purpose of making commercial benefits from directing young Internet users to those sites.

Respondentís actions are also known as "typo-piracy" or "typo-squatting" and has been well recognized in previous cases. This Panel accepts Complainantís additional argument that the contents of Respondentís websites are of no significant importance, since the mere act of diversion by confusion to Respondentís websites or other online location is evidence of bad faith (see: DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0756 (October 29, 2002), referring to Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568 (August 10, 2000).

(iv) Respondentís actions as set forth hereinabove fall within paragraph 4(b)(iv) of the Policy, hence constituting evidence of use of the domain names in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of his websites or location of a product or service on his websites.

(v) Complainant argues that "typo-piracy" is Respondentís pattern of behavior in the past as reflected in many previous WIPO and other UDRP cases in which the Respondent was the same as in this case. This Panel is of the opinion that this in itself is no direct evidence of bad faith in the present case. The Panel may consider such pattern of behavior as evidence in support of other, more direct, evidence of bad faith (particularly in the case of Respondentís default). However, in light of the conclusions this Panel has reached, this Panel finds that there is no need to take this factor in consideration.

(vi) This Panel concludes that Respondentís registration and use of the domain names <collegeveiw.com>, <colegeview.com> and <collageview.com>, as set forth hereinabove constitute registration and use of these domain names in bad faith according to paragraph 4(a)(iii) of the Policy.

 

7. Conclusion

In light of the Panelís findings as set forth hereinabove, the Panel finds that the Complainant has proven the cumulative elements which, according to paragraph 4(a) of the Policy, justify an order for the transfer of the domain names as prescribed in paragraph 4(i) of the Policy: (i) the domain names <collegeveiw.com>, <colegeview.com> and <collageview.com>are almost identical and confusingly similar to the Mark COLLEGEVIEW in which Complainant has legitimate rights; and (ii) Respondent, who is the current registrant of the domain names, has no right or legitimate interest in or with respect to these domain names; and (iii) Respondent has registered and used the domain names in bad faith.

 

8. Decision

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 <collegeveiw.com>, <colegeview.com> and <collageview.com>be transferred to the Complainant, Hobsons, Inc..

 


 

Ron Klagsbald
Sole Panelist

Dated: July 14, 2003