WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Paragon Gifts, Inc. v. Ling Shun Shing

Case No. D2003-0874

 

1. The Parties

The Complainant is Paragon Gifts, Inc., Westerly, Rhode Island, United States of America.

The Respondent is Ling Shun Shing, Shanghai, China.

 

2. The Domain Name and Registrar

The disputed domain name is <paragongift.com> and is registered with iHoldings.com Inc. d/b/a DotRegistrar.com. ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2003.

On November 6, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue.

On 10 November 2003, the Registrar transmitted by email to the Center its verification response stating that the Registrar had not received the Complaint, that the Registrar was the registrar of the domain name in issue, that the Respondent was the current registrant of the domain name in issue, that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the registration, that the domain name will remain locked during the pending administrative proceeding, that the English language is the specific language of the registration agreement and that the Respondent has in the registration agreement submitted to the jurisdiction at the location of the principal office of the Registrar.

The Center verified that the Complaint satisfied the formal requirements of 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 November 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 11, 2003.

The Center appointed James Bridgeman as the sole panelist in this matter on January 20, 2004. 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 the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a corporation engaged in the gift-ware mail order business and is the registered owner of the following registered United States service marks:

THE PARAGON registration number 2,215,985 dated January 5, 1999, in respect of inter alia mail order catalog services and PARAGONGIFTS.COM registration number 2,483,217 dated August 28, 2001, in respect of inter alia on-line catalog services.

The Complainant registered the domain name <paragongifts.com> on July 25, 1997 and established a web site at the <paragongifts.com> address in April 1999.

As there was no Response there is no information before this Administrative Panel relating to the Respondent except that contained in the Complaint and the information provided by the Registrar.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that in accordance with Paragraph 4(a) of the Policy, the Respondent is required to submit to a mandatory administrative proceeding.

The Complainant requests that this Administrative Panel direct that the domain name <paragongift.com> be transferred to the Complainant.

The Complainant submits that for more than thirty years it has provided its consumers with a wide assortment of special occasion, collectable and seasonal giftware and related products.

Millions of consumers have shopped from the Complainantís THE PARAGON mail order catalog and its on-line catalog PARAGONGIFTS.COM and the Complainant ships in excess of one million packages per year to its customers.

Since 1971, the Complainant, has substantially, continuously and exclusively used, in connection with its business, the mark THE PARAGON. The Complainant has also used the mark PARAGONGIFTS.COM since at least March 15, 2001.

The Complainant has established a strong customer base and is known throughout its trading area as a provider of quality gift and related products and retail mail order and on-line catalog services. Furthermore, the Complainant submits that by virtue of the quality of its products and services, and as a result of its expenditure of considerable sums of money on advertising and promotional activity, the Complainant has built up valuable goodwill in said registered trademarks THE PARAGON and PARAGONGIFTS.COM.

The Complainant submits that it has an active presence on the Internet. It registered its <paragongifts.com> domain name on July 25, 1997, and has operated a website at this Internet address since at least April 1999.

The Complainant states that its registered mark THE PARAGON has been featured on its website since at least 1999. The mark PARAGONGIFTS.COM has been featured on the website since at least March 2001.

The Complainant uses its website to advertise, promote and sell its giftware and related items. The Complainant states that the Internet has become an extremely important communication and marketing tool and revenue source for the Complainant.

The Complainant alleges that the Respondent has made unauthorized use of the Complainantís trademarks. In this regard the Complainant points out that the Respondent registered the domain name in dispute on or about October 11, 2002. This was subsequent to the Complainantís first use and registration of both THE PARAGON and PARAGONGIFTS.COM marks. Furthermore, the Respondentís registration of the domain name at issue in these administrative proceedings was subsequent to the Complainantís registration and first use of the <paragongifts.com> domain name and to the date on which the Complainant first made its PARAGONGIFTS.COM catalog available online.

The Complainant alleges that sometime after October 11, 2002, the Respondent established a website at the <paragongift.com> domain name address. The Complainant alleges that the Respondentís website established at the <paragongift.com> address currently contains the heading "Paragongift.com your source for the most popular Paragon gift info!" The Complainant submits that the Respondentís website provides hyperlinks to seven on-line catalogs, all of which sell a variety of special occasion, seasonable and collectable giftware and related products. In support of this allegation the Complainant has furnished this Administrative Panel with a copy of the home page of the Respondentís website as an annex to the Complaint.

The Complainant submits that the Respondentís website provides hyperlinks to competitors of the Complainant including: The Bombay Company, Shop 10, Lillian Vernon, Pegasus Discount Gifts, Send.com and Reach4Life.com. The Complainant states that these on-line catalogs sell the same type of giftware that is featured and sold by the Complainant in its on-line catalog PARAGONGIFTS.COM and are in direct competition with the Complainantís giftware catalogue.

The Complainant furthermore alleges that the Respondent has also registered numerous other domain names containing famous or well known trademarks, or mis-spelling of trademarks, of third parties including: <chevronusa.com>, <salliemae.com>, <citigroups.com>, <ameriquest.com>, various mis-spellings of LTD Commodities, a mail order catalog distributor, including, <ltdcommodities.com>, <ltdcommododities.com>, <ltdcommocities.com>, <ltdcommoditeis.com>, <ltdcommoditie.com>, <ltdcommoditied.com>, <ltdcommodoities.com>, <ltdcommoodities.com>, <ltdcommotidies.com>, <ltdcommodiites.com>, <ltdcommoditis.com> and <ltdcommoditities.com> and various mis-spellings of ABC Distributing, a general merchandise catalog and mail order service provider, including, <abcdistribuitng.com>, <abcdistributingco.com>, <abcdistrivuting.com>, <abcdisributing.com> and <abcdistrbiting.com>. The Complainant states that all of these domain names have been subject to other UDRP proceedings in which the respective complainants succeeded against the Respondent.

The Complainant submits that the domain name <paragongift.com> is confusingly similar to the Complainantís THE PARAGON and PARAGONGIFTS.COM registered trademarks.

Said domain name <paragongift.com>, is the singular form of the Complainantís registered mark PARAGONGIFTS.COM. The only difference between the Complainantís registered mark PARAGONGIFTS.COM and the domain name <paragongift.com> is the elimination of the letter "s". The domain name at issue also encompasses the dominant element of the Complainantís registered service mark THE PARAGON.

The Complainant refers to the decisions in a number of administrative proceedings where the administrative panels have characterized situations where a respondentís domain name is one letter less than or different from a complainantís mark. In each of these cases the administrative panel accepted that the domain name was confusingly similar to the complainantís trade marks. Furthermore in these cases the administrative panel accepted that the registration of such domain names were a "typical case of typosquatting". In particular the Complainant refers to the decisions in Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035 (October 24, 2001) (finding <redbul.com> confusingly similar to RED BULL); Playboy Enterprises Intíl, Inc. v. SAND Web Names For Sale, WIPO Case No. D2001-0094 (April 3, 2001) (finding <plaboy.com> confusingly similar to PLAYBOY); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (finding <netwizard.net> confusingly similar to NETWIZARDS); Telstra Corp. Ltd. v. Warren Bolton Consulting Pty, Ltd., WIPO Case No. D2000-1293 (Nov. 21, 2000) (finding <bigpons.com> confusingly similar to BIG PONDS).

The Complainant further states that Respondent in the present case was a respondent in other administrative proceedings where the administrative panel held that the Respondentís registration of the domain name <ameriquest.com>, which is one letter less than the complainantís AMERIQUEST mark, was confusingly similar to the complainantís mark. Ameriquest Mortgage Co. v. Ling Shun Shing, WIPO Case No. D2003-0294 (June 6, 2003).

Similarly, other administrative panels have found that a domain name that encompasses the dominant element of a registered mark creates sufficient similarity between the mark and the domain name to render it confusingly similar. Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO, WIPO Case No. D2000-0138 (April 19, 2000); GA Modefine S.A. v. Mark OíFlynn, WIPO Case No. D2000-1424 (February 27, 2001).

Based on the Respondentís registration of a domain name that is comprised of a singular form of the Complainantís registered mark PARAGONGIFTS.COM and which encompasses the dominant element of the Respondentís registered mark THE PARAGON, the Complainant submits that the Respondentís use of its <paragongift.com> domain name in connection with the same goods and services provided by the Complainant and the Complainantís well known, long standing use of its registered marks, the Respondentís domain name <paragongift.com> is confusingly similar to the Complainantís registered marks THE PARAGON and PARAGONGIFTS.COM.

The Complainant alleges that the Respondent has no rights or legitimate interest with respect to the Complainantís registered marks THE PARAGON and PARAGONGIFTS.COM, or the <paragongift.com> domain name.

The Complainant states that upon information and belief, the <paragongift.com> domain name does not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent. The Respondent did not, prior to notice of this dispute, use the <paragongift.com> domain name or a trademark corresponding to the domain name, in connection with a bona fide offering of goods or services. The Respondent has not made a bona fide non-commercial, fair use of the <paragongift.com> domain name.

The Complainant alleges that the Respondent is using the <paragongift.com> domain name to divert Internet traffic to its portal website that provides hyperlinks to websites of the Complainantís competitors. The use of a confusingly similar domain name to divert Internet users is not a use in connection with a bona fide offering of goods or services nor a legitimate non-commercial or fair use. In this regard the Complainant refers to the decision of the administrative panel in America On-Line, Inc. v. Ten Cent Comm. Corp., NAF Case No. FA 93668 (March 21, 2000) (finding that use of a complainantís mark "as a portal to suck surfers into a site sponsored by the Respondent hardly seems legitimate").

Moreover, the Complainant submits that other administrative panels considering the Respondentís registration and use of other domain names containing well known trademarks or mis-spellings of trademarks of others for a similar purpose have found that such conduct on the part of a registrant does not constitute a bona fide offering of goods or services or a legitimate non-commercial fair use.

In this regard the Complainant refers to the decisions of the administrative panels in LTD Commodities LLC v. Ling Shun Shing, NAF Case No. FA 146938 (April 1, 2003); Chevron Texaco Corp. v. Ling Shun Shing, NAF Case No. FA 146570 (April 14, 2003) (The Respondentís use of <chevronusa.com> domain name to divert Internet users to a portal website whereby the Respondent receives a commission for the Internet traffic it diverts is not a bona fide offering of goods or services nor a legitimate non-commercial fair use); ABC Distributing, Inc. v. Ling Shun Shing, NAF Case No. FA 126640 (December  11, 2002) (finding the Respondentís use of domain names containing various mis-spellings of the Complainantís trademark to divert Internet users to websites that compete with the Complainantís business is not considered to be in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use).

The Complainant states that it has never authorized, licensed or otherwise permitted the Respondent or anyone else to use its registered marks THE PARAGON or PARAGONGIFTS.COM, or any confusingly similar variations thereof.

The Complainant states that it has not authorized, licensed or otherwise permitted the Respondent to apply for or use any domain name comprising or incorporating the Complainantís registered marks THE PARAGON or PARAGONGIFTS.COM.

The Complainant alleges that the Respondentís registration of the domain name <paragongift.com> was made in bad faith primarily for the purpose of intentionally attracting for commercial gain, Internet users to the Respondentís website, by creating a likelihood of confusion with the the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the the Respondentís website or of a product or service on the Respondentís web site.

Furthermore, the Complainant alleges that the Respondent has registered a mis-spelling of the Complainantís registered mark PARAGONGIFTS.COM and <paragongifts.com> domain name. The latter domain name being the address of the website that is the home of the Complainantís on-line catalog. The Complainant submits that the Respondent is using its <paragongift.com> domain name to attract Internet users who are looking for the Complainant but merely mis-spell or mis-type the Complainantís domain name by dropping the letter "s".

Once at the Respondentís website, consumers looking for the Complainant are faced with hyperlinks to several of the Complainantís competitors, mentioned above.

The Complainant submits that the owners of at least two of the sites to which the Respondent provides hyperlinks namely Lillian Vernon and Personal Creations, maintain affiliate programs. The Complainant has submitted copies of pages from these websites explaining their respective affiliate programs are attached as an annex to the Complaint. The Complainant submits that in a typical affiliate program, the owner of an e-commerce site, such as Lillian Vernon and Personal Creations, engages owners of other websites, such as the Respondent, to direct a user to its e-commerce website in exchange for a percentage of any purchases by that user.

The Complainant alleges that upon information and belief, the Respondent is part of Lillian Vernonís and/or Personal Creationís affiliate programs. Accordingly, when an Internet user who is looking for the Complainant ends up on the Respondentís website and then links to the Lillian Vernon or Personal Creations sites, the Respondent profits.

Accordingly, the Respondentís unauthorized and unapproved redirection of consumers searching for the Complainant to its website containing hyperlinks to the Complainantís competitors, some of whom provide the Respondent with a commission for re-directed Internet traffic, is solely for the purpose of achieving commercial gain. Such behavior has been found by many panels to constitute bad faith registration and use. NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (registration and use of a domain name to re-direct Internet users to websites of competing organizations constituted bad faith registration and use); Tarjeta Naranja SA v. Mr. Dominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295 (April 10, 2001) (to link Internet surfers looking in their browsers for the well known mark of a complainant to a competitorís website is a typical bad faith use under the Policy).

Moreover, other administrative panels considering the Respondentís similar behavior with respect to other domain names, found that the Respondentís registration and use of those domain names was in bad faith. Chevron Texaco Corp. v. Ling Shun Shing, NAF Case No. FA 146570 (April 14, 2003) (Bad faith registration and use found where the Respondent used a confusingly similar domain name to divert consumers to a website whereby the Respondent received a commission for every consumer diverted to such website); ABC Distributing, Inc. v. Ling Shun Shing, NAF Case No. FA 126640 (December 11, 2002) (finding the Respondentís use of disputed domain names to divert Internet users to competing websites constitutes bad faith registration and use).

In addition, the Complainant submits, the mere act of "typosquatting" has often been recognized as evidence of bad faith registration and use. National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011 (January  21, 2003) ("Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith."); Medline, Inc. v. Domain Active Pty., Ltd., NAF Case No. FA 139718 (February 6, 2003) (stating that "in typosquatting cases, such as this one, it would be difficult for the Respondent to prove to the Panel that it did not have actual knowledge of the Complainant").

The Complainant submits that further evidence of the Respondentís bad faith use and registration of the <paragongift.com> domain name is the fact that Registrant has registered several other domain names containing the famous or well known trademarks, or misspelling of trademarks, of others including: <chevronusa.com>, <salliemae.com>, <citigroups.com>, <ameriquest.com>, various mis-spellings of LTD Commodities, a mail order catalog distributor, including, <ltdcommodities.com>, <ltdcommododities.com>, <ltdcommocities.com>, <ltdcommoditeis.com>, <ltdcommoditie.com>, <ltdcommoditied.com>, <ltdcommodoities.com>, <ltdcommoodities.com>, <ltdcommotidies.com>, <ltdcommodiites.com>, <ltdcommoditis.com> and <ltdcommoditities.com> and various mis-spellings of ABC Distributing, a general merchandise catalog and mail order service provider, including <abcdistribuitng.com>, <abcdistributingco.com>, <abcdistrivuting.com>, <abcdisributing.com> and <abcdistribiting.com>. The Complainant alleges that the Respondent used many of these domain names in the same manner as the Complainantís domain name, i.e., to link consumers looking for the trademark owner to websites of their competitors or its own Internet search engine, all for financial gain.

The Complainant submits that such a pattern of behavior establishes bad faith use and registration. Inter-IKEA Sys.B.V. v. Tech Educ. Ctr., WIPO Case No. D2000-0522 (Aug.7, 2000); Bell-Phillip Televisual Prods. v. Aford, WIPO Case No. D2000-0180 (May 2, 2000).

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(i) the Respondent has no rights or legitimate interests in respect of the domain name in question; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of and has rights in the U.S.A. registered trademarks THE PARAGON and PARAGONGIFTS.COM. The dominant element in both of these trademarks is the English language word "paragon".

The domain name in issue in these administrative proceedings is <paragongift.com>. In the view of this Administrative Panel the dominant element of the domain name is the English language word "paragon" and there is also the descriptive element "gift".

The dominant element of the domain name is therefore identical to the dominant element of both of the Complainant's registered service marks and in the view of this Administrative Panel, the domain name is confusingly similar to both of the marks in which the Complainant has rights and the provisions of paragraph 4(a)(i) of the Policy are satisfied.

B. Rights or Legitimate Interests

The Complainant had an established mail order business for a number of years and since April 1999 the Complainant has established a presence on the Internet through the web site established at its <paragongifts.com> domain address.

In the absence of any Response there is no evidence or submissions before this Administrative Panel as to any rights or legitimate interest that the Respondent may claim in said <paragongift.com> domain name.

The Respondent registered the domain name in dispute on or about October 11, 2002.

The Complainant has pointed out that this was long subsequent to July 25, 1997, when the Complainant first registered its <paragongifts.com> domain name and April 1999, when the Complainant first established a web site at the <paragongifts.com> address.

The Respondent must have been aware of the Complainants reputation in the field of gift catalogs when it first registered the domain name in issue in these proceedings. There is no evidence of any concurrent use of this name by the Respondent or any other circumstances in which it may have rights.

The fact that the Respondent has clearly used this domain name as the address of a portal site offering goods and services directly in competition with the Complainant in the circumstances outlined above, permits this Administrative Panel to conclude that the Respondent had no rights or legitimate interest in the domain name in issue, either at the date of registration or since.

Furthermore, the print out of the home page of the Respondentís site is clearly a portal site and there is nothing on the Respondentís web site to indicate that the Respondent was commonly known by the domain name or has acquired any rights in any trademark rights or service mark rights in the domain name or the word PARAGON or PARAGONGIFT or any similar mark.

The Respondent's use is clearly commercial and as such there is no issue that he might be making any legitimate non-commercial use of the domain name.

In the circumstances, this Administrative Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the domain name and the provisions of paragraph 4(a)(ii) are satisfied.

C. Registered and Used in Bad Faith

The Complainant has made out a prima facie case that the Respondent has been engaged in "typosquatting" in this case.

It is most likely that the Respondent was aware of the existence of the Complainant and the Complainant's trademarks and goodwill when he registered the domain name in issue.

This Administrative Panel has reached this conclusion inter alia because of the similarity between the domain name registered by the Respondent and the earlier registration and use of the domain name <paragongifts.com> by the Complainant and the fact that the Respondent established a portal site with hyperlinks to the Complainantís competitors at the <paragongift.com> address.

This Administrative Panel therefore concludes that in the above circumstances the Complainant has made out a prima facie case that the Respondentís registration of the domain name <paragongift.com> was made in bad faith primarily for the purpose of intentionally attracting for commercial gain, Internet users to the Respondentís website, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the Respondentís website or of a product or service on the Respondentís web site.

This Administrative Panel makes no determination with regard to the Complainantís allegation that the Respondent is in any affiliate programs of any third party. The Complainant has not provided any evidence whatsoever to substantiate this allegation.

 

7. 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 name <paragongift.com> be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: February 1, 2004