WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Paragon Gifts, Inc. v. Govs
Case No. D2003-0892
1. The Parties
The Complainant is The Paragon Gifts, Inc., Rhode Island, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Govs, Freeport Grand Bahama, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <wwwparagongifts.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com. (herein "Domain Name in Dispute")
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2003. On November 10, 2003, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the Domain Name in Dispute. On November 11, 2003, OnlineNic, Inc. d/b/a China-Channel.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 18, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for response was December 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 10, 2003.
The Center appointed J. Nelson Landry as the sole panelist in this matter on December 17, 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 the Rules, paragraph 7.
4. Factual Background
For more than thirty years Complainant has provided consumers with a wide assortment of special occasion, collectable and seasonal giftware and related products which Complainant sells through its mail order catalog THE PARAGON and its on-line catalog PARAGONGIFTS.COM where millions of consumers have shopped. Complainant ships in excess 1,000,000 packages per year to its customers.
Since 1971, Complainant, has substantially, continuously and exclusively used, in connection with its business, the mark THE PARAGON (herein the "Trademark" and "THE PARAGON") and has also used the mark PARAGONGIFTS.COM (herein the "Trademark" and PARAGONGIFTS.COM) since at least March 15, 2001 (herein collectively "the Trademarks").
Complainant is the owner of the following United States registrations: THE PARAGON, registered under no. 2,215,985, on May 1, 1999, in association with mail order catalog services in various field of products, disclosing 1971, as a date of first use and PARAGONGIFTS.COM, registered on. 2,483,217, on August 28, 2001, in association with on-line catalog services in the various fields of gifts and products mentioned therein, disclosing March 15, 2001, as a date of first use. While the Complaint stated that a copy of both registrations were attached as Annex D, only 2 copies of registration "985" were attached. The Panel was able to verify registration "217" on USPTO website.
Over the past thirty years, Paragon has spent substantial amounts of money on advertising and promotion of its retail mail order catalog THE PARAGON and it on-line counterpart PARAGONGIFTS.COM. Complainant advertises its goods and services and transacts business with its customers through said mail order and on-line catalogs.
Complainant registered its <paragongifts.com> domain name on July 25, 1997, and has operated a website at this Internet address since at least April 1999. Complainantís Trademarks THE PARAGON and PARAGONGIFTS.COM are prominently featured on its website. Complainant uses its website to advertise, promote and sell its gift and related items, 24 hours a day and communicates special events and promotions to its customers.
Complainant has established and implemented an affiliate program, managed and administered by Linkshare, an affiliate network that manages affiliate programs for e-commerce websites like that of Complainant.
An affiliate program is an agreement between two e-commerce websites whereby the owner advertises and provides a link to another e-commerce website. The affiliate is paid a commission for every sale that is made by someone the affiliate refers to the other e-commerce website.
Complainant's affiliate program permits owners of e-commerce website to provide a link to Complainant's website in the form of a banner ad or text link. If a customer of the e-commerce site clicks on the link to Paragonís website and then purchases a product from Paragonís website, the affiliate can earn up to 10% of the merchandise value of the sale.
On or about February 20, 2003, Respondent registered the domain name <wwwparagongifts.com> with OnlineNIC, Inc. d/b/a China-Channel.com.
Sometime after February 20, 2003, Respondent became an affiliate of Complainant. Respondent began using the Domain Name in Dispute to obtain commissions from Complainantís affiliate program by instantaneously redirecting consumers who mistype Complainantís domain name to Complainantís website; the consumer apparently ends up on the correct website. To the manager of Complainantís affiliate program however, it appears that the consumer was referred to Complainantís site by Respondent from links on Respondentís website.
According to Complainant, Respondent is using the Domain Name in Dispute to divert to its portal website that instantaneously redirects unknowing and unsuspecting consumers to Complainantís website.
As an affiliate of Complainant, Respondent does not maintain a website that contains a link to or advertisement for Complainantís online catalog but, rather, collects commissions for each time a consumer mistype the Complainantís domain name. To date, Respondent has earned over $800 in commissions from Complainant.
Complainant never authorized, licensed or otherwise permitted Respondent or anyone else to use its registered marks THE PARAGON or PARAGONGIFTS.COM, or any confusingly similar variations thereof.
Complainant has not authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainantís registered marks THE PARAGON or PARAGONGIFTS.COM.
5. Partiesí Contentions
Complainant represents that the <wwwparagongifts.com> domain name is confusingly similar to Complainantís THE PARAGON and PARAGONGIFTS.COM registered Trademarks. Respondentís domain name <wwwparagongifts.com>, is identical to Complainantís registered mark PARAGONGIFTS.COM and domain name <paragongifts.com>. The only difference is the insertion of "www".
Complainant relies on panel decisions which have characterized as confusingly similar with the trademarks situations where the respondentís domain name contains the letters "www" in front of complainantís trademark as "typosquatting", for the purpose of exploiting usersí typographical mistakes. Complainant relies on decisions The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Claim No. 124516; Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199.
In other instances where Respondentís domain name also encompasses the dominant portion of Complainantís Trademark Panels have found that such domain name creates sufficient similarity to render it confusingly similar. Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO, WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark OíFlynn, WIPO Case No. D2000-1424.
Complainant represents that the Domain Name in Dispute does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent and that Respondent did not use the Domain Name in Dispute in connection with a bona fide offering of goods or services and finally that Respondent has not made a bona fide non-commercial, fair use of the Domain Name in Dispute.
Complainant relies on the same as well as other panel decisions holding that use of a confusingly similar domain name to redirect Internet traffic to Complainantís website in order to receive a commission is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Register.com, Inc. v. Mike Torres, et al., NAF Claim No. 145209; The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Claim No. 124516; The Sports Authority Michigan, Inc. v. Lajos Szabo, NAF Claim No. 139694 The Sports Authority Michigan, Inc. v. Domhold a/k/a DíVaul L, NAF Claim No. 135011; Deluxe Corp. v. Dallas Internet, NAF Claim No. 105216.
According to Complainant, Respondentís registration of the Domain Name in Dispute was done in bad faith for the purpose of intentionally attracting for commercial gain, Internet users to Respondentís website, by creating a likelihood of confusion with the Complainantís mark as to sponsorship, affiliation or endorsement of the Respondentís website.
Complainant alleges that in using this confusingly similar Domain Name in Dispute to Complainantís website, Respondent is making a profit from every Internet user it re-directs and that purchases and relies on the same group of The Sports Authority Michigan, Inc. decisions which held that such domain name were registered and used name in bad faith and on Register.com, Inc. v. Mike Torres, et al., NAF Claim No. 145209; and National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011, which decisions hold that such act of "typosquatting" has often been recognized as evidence of bad faith registration and use.
Furthermore Complainant submits that some Panels have held that "typosquatting" is inherently parasitic and of itself evidence of bad faith; The Sports Authority Michigan, Inc. v. Domhold Co. a/k/a DíVaul L, NAF Claim No. 135011, while from Medline, Inc. v. Domain Active Pty., Ltd., NAF Claim No. 139718 it can be inferred that Respondent had actual knowledge of Complainantís rights in its registered marks THE PARAGON and PARAGONGIFTS.COM.
Complainant submits that the Domain Name in Dispute does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent and the latter did not, prior to notice of this dispute, use the Domain Name in Dispute in connection with a bona fide offering of goods or services.
Complainant never authorized, licensed or otherwise permitted Respondent or anyone else to use its registered marks THE PARAGON or PARAGONGIFTS.COM, or any confusingly similar variations thereof nor to apply for or use any domain name comprising or incorporating Complainantís registered marks THE PARAGON or PARAGONGIFTS.COM.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following 3 elements in order for a domain name to be cancelled or transferred:
(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
(ii) The respondent has no rights or legitimate interest with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that the domain name <wwwparagongifts.com> is confusingly similar with both the Trademark THE PARAGON and PARAGONGIFTS.COM of Complainant for purposes of the Policy. The Domain Name in Dispute incorporates in its entirety the PARAGONGIFTS.COM trademark and the distinctive element paragon of the trademark THE PARAGON.
In the opinion of the Panel relying on UDRP panel decisions properly cited by Complainant, the addition first of the three letters "w" without a dot and second of the word gifts.com to the distinctive part of the trademark THE PARAGON does not deter the reader from the fact that both the trademark THE PARAGON and PARAGONGIFTS.COM have been taken and associated with the descriptive word gifts, the prefix "www" and the suffix ".com" which result in the Domain Name in dispute. This view and assessment of the situation by the panel is further reinforced by the volume of business and publicity that the Complainant carries under its two registered Trademarks and the trademark notice applied by the Complainant at the bottom of each page of its web-site.
The Panel finds that the Domain Name in Dispute is confusingly similar with the registered trademark THE PARAGON and its on-line counterpart registered trademark PARAGONGIFTS.COM.
B. Rights or Legitimate Interests
Respondent has not submitted a Response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the Domain Name in Dispute by stating that the Respondent has never been known by the name Paragon, Paragongifts or the Domain Name in Dispute, is not making legitimate known commercial or fair use of the Domain Name in Dispute.
As shown by the Complainant, the use of the Domain Name in Dispute by the Respondent is to act as an unsolicited affiliant of Complainant to divert internet users who have made a mistake in attempting to reach the Complainant at its own website, do reach Respondent through the Domain Name in Dispute and thereafter said internet users are diverted back to Complainant whereby the Respondent is being paid in a commission for such unsolicited services. In so doing the Respondent uses in the Domain Name in Dispute the Trademarks of Complainant and such use is made without the authorization or license of the Complainant. This is a classic trademark infringement. Consequently such activities of the Respondent cannot be legitimate non commercial or fair use, even more so when Respondent is profiting from every approaching Internet user as it has been held in Sports Authority Michigan, Inc. v. Internet Hosting, NAF Claim No 124516.
The Complainantís representations that such activities by Respondent do not constitute non commercial or fair use of a domain name, are based on several URDP decisions as cited hereinabove supporting its representations which the Panel considers well founded. Respondent has been made aware of the Complainantís position in the Complaint that was served upon the Respondent and the later has neglected to file any evidence which may rebut the prima facie case that the Complainant has made.
The Panel concludes that the Respondent has not made use of the Domain Name in Dispute in connection with the bona fide offering of goods and services.
Accordingly, there is no evidence that the Respondent has any rights or legitimate interest in the Domain Name in Dispute and the conditions for the second criteria have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name 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 the 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 of 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 intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood or 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.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith.
The Panel has determined from the well documented evidence that the Domain Name in Dispute was registered in February 2003, more than 20 years after the continuous extensive use and rendering of services of the THE PARAGON Trademark on the one hand and two years after Complainant has commenced the extensive use of its on-line catalog activities under the Trademark PARAGONGIFTS.COM. Both of these Trademarks are registered in the United States respectively since May 1999, and August 2001. Based on the evidence, the Panel finds that Complainant benefits substantial goodwill in association with these two Trademarks.
The Panel considers that the Respondent in diverting internet users that have made a mistake back to the Complainant in payment for a commission, had on purpose selected a domain name identical or very close to the two Trademarks of Complainant and the Panel therefore concludes that, in so doing, the Respondent was well aware of the rights of the Complainant in the two registered Trademarks which are the subject of a notice at the bottom of every page of the on-line catalog as the Panel was able to verify on his own.
The Respondent was thus imitating Complainantís Trademarks THE PARAGON and PARAGONGIFTS.COM when registering the Domain Name in Dispute. Respondent has adopted a practice of "typosquatting" which has been recognized as bad faith use of a domain name under the UDRP. See AltaVista C. Stoneybrook, WIPO Case No. D2000-0886.
It has been recognized in several URDP decisions including those cited by Complainant that using a confusingly similar domain name to the Trademarks of a Complainant to redirect internet traffic to Complainantís website in order to receive a commission is neither a bona fide offering of goods or services nor a legitimate non commercial or fair use. Furthermore, the same URDP decisions have qualified that such use as the one in the present instance made by Respondent to make a profit from every Internet user it redirects for its own financial gain amounts to registration and use of a domain name in bad faith.
The Panel in Sports Authority, NAF Claim No.124516, has even qualified such action of redirecting Internet users to a complainant's website as a "reward" for infringing complainant's trademarks without license or authorization. The Panel in the present case finds that the intentional registration and use of the Domain Name in dispute clearly manifests an intent by Respondent to capitalize on and to benefit from the goodwill in the Trademarks of Complainant as well as an intent to take advantage of Internet users misspelling a domain name which constitutes use of the Domain Name in Dispute in bad faith.
Therefore, the Panel finds that the Domain Name in Dispute was registered and is being used in bad faith.
The Panel concludes that:
(a) the domain name <wwwparagongifts.com> is confusingly similar to the Complainantsí Trademarks " THE PARAGON" and "PARAGONGIFTS.COM";
(b) the Respondent has no rights or legitimate interest in the Domain Name in Dispute;
(c) the Domain Name in Dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wwwparagongifts.com> be transferred to the Complainant.
J. Nelson Landry
Dated: December 27, 2003