WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edgar Snyder & Associates, L.L.C. v. Henry Chan
Case No. D2003-0929
1. The Parties
The Complainant is Edgar Snyder & Associates, L.L.C. of Pittsburgh, Pennsylvania, United States of America, represented by Leland Schermer & Associates, P.C. of Pittsburgh, Pennsylvania, United States of America.
The Respondent is Henry Chan of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <edgarsynder.com> and <edgersnyder.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2003. On November 25, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On November 25, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 November 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 24, 2003.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on January 14, 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 Edgar Snyder & Associates, LLC. a law firm from Pittsburgh, Pennsylvania, United States of America. The firm and its president, Edgar M. Snyder, Esq., have been doing business in Pittsburgh and surrounding areas since 1982, under the name and service mark EDGAR SNYDER & ASSOCIATES. The firm, which now has five offices, specializes in personal injury representation and has represented over 20,000 accident and injury victims. Over past twenty years, the firm has invested over US$10,000,000 in advertising its services. The firmís mark EDGAR SNYDER & ASSOCIATES is recognizable in Western Pennsylvania as indicating legal services.
Complainant has been using continuously since 1982, the marks EDGAR SNYDER and EDGAR SNYDER & ASSOCIATES for its legal services.
The Complainant maintains an active presence on the Internet and operates and maintains websites at a number of domain names, including <edgarsnyder.com>, <edgarsnyder.net>, <edgarsnyder.org>, <edgarsnyder.biz>, <edgarsnyder.info>, and <edgarsnyder.tv>.
The Respondent registered the disputed domain name <edgarsynder.com> on July 28, 2003, and <edgersnyder.com> on February 13, 2003, and is using the domain names to direct visitors to a third-party search engine located at "www.dp.information.com", as well as a number of links to various law offices providing personal injury representation.
5. Partiesí Contentions
The Respondent registered and is using the domain names that are identical and confusingly similar to Complainant's trade-name and service marks. According to the Complainant, the Respondent is using the disputed domain names to provide links to a third-party search engine to "www.dp.information.com", as well as a number of links to various potential competitors and other law offices providing personal injury representation, the same type of service the Complainant is providing and is known for.
The Complainantís marks are well known marks, and have been used by the Complainant in connection with its legal services. The first use of the Complainant marks EDGAR SNYDER and EDGAR SNYDER & ASSOCIATES occurred in 1982, and the Complainant has been using the marks in connection with its legal services ever since.
The Respondent could not have been unaware of the Complainantís rights in the marks. The disputed domain names are identical and confusingly similar to the Complainantís marks and have been used by the Respondent in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain names, the Complainant must prove that each of the three following elements is satisfied:
1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the domain names (see below, section 6.B); and
3. The domain names have been registered and are being used in bad faith (see below, section 6.C).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Are the Domain Names Identical or Confusingly Similar to a Trademark in which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) the domain names identical or confusingly similar to such trademark or service mark.
As to the first question, the wording of Paragraph 4(a)(i) as to "trademark or service mark" has been interpreted by numerous Panels in the past, to include both registered marks and common law marks. See, inter alia, The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005, The Professional Golfersí Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc. National Arbitration Forum No. FA0009000095560. With respect to the latter, the Complaint must show (a) that the mark has been in continuous use (See, United Artists Theatre Circuit, Inc. v. Domains for Sale Inc, already cited; Keppel TatLee Bank v. Taylor, WIPO Case No. D2001-0168) and (b) that the mark achieved secondary meaning (association with the Complainant). (See, Australian Trade Commission v. Matthew Reader, WIPO Case No: D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726).
The record confirms that Complainant has been continuously using the marks EDGAR SNYDER and EDGAR SNYDER & ASSOCIATES since 1982. The Complainant has extensively promoted its services and the record confirms that the marks are undoubtedly associated with the Complainant. Therefore, the Panels finds that the Complainant has rights in the above-mentioned marks.
As to the second question, the Panel finds that the disputed domain names <edgarsynder.com> and <edgersnyder.com> are confusingly similar to the Complainantís marks EDGAR SNYDER and EDGAR SNYDER & ASSOCIATES.
The disputed domain name <edgarsynder.com> is composed of the words "Edgar" and "Synder", and the generic top-level domain reference ".com." The disputed domain name <edgersnyder.com> is composed from the words "Edger" and "Snyder", and the generic top-level domain reference ".com." In the first domain name, the order of letters in the word "Snyder" is reversed to "Synder". In the second domain name, the letter "a" in the original word "Edgar" is substituted with a letter "e" to form the word "Edger".
Numerous Panels in the past have found that misspelling of a mark, by reversing the order of letters in a mark, or by substituting letters in a mark, does not alter the mark, and therefore, the misspelled domain name is identical and/or confusingly similar to the mark. See, inter alia, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman's Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145;Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317; America Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495; Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; Playboy Enterprises International Inc. v. SAND WebNames - - For Sale, WIPO Case No. D2001-0094; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., StonybrookInvestments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587; Ziegenfelder Co. v. VMH Enterprises, Inc., WIPO Case No.D2000-0039, Sunglass Hut Corporation v. AAANET, INC., National arbitration Forum Case No. FA0003000094370.
In fact, this practice is now generally known as typo-squatting. See, inter alia, Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0756; Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317.
The panel thus finds for the Complainant on this first part of the test.
B. Does the Respondent Have Rights or Legitimate Interests in the domain name?
The Complainant submits that the Respondent has no rights or legitimate interests in the domain names based on Complainant's prior use of the EDGAR SNYDER and EDGAR SNYDER & ASSOCIATES marks. The Respondent, whom did not file a Response, did not dispute this contention nor did he provide information as to his interests in using the domain names.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial 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.
There were no elements introduced in evidence to show that the Respondent is or has been commonly known by the domain names. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain names. Quite the contrary, the evidence suggests that the Respondent is using the disputed domain names for commercial gain, and that such use of the domain names may tarnish the Complainantís marks.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain names.
C. Were the Domain Names Registered and Used in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's 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 Respondent's website or location or of a product.
There is evidence of the situation described in paragraph 4(b)(iv). The relevant facts are mentioned below.
The Respondent registered the domain names in bad faith. The domain names are functionally identical to the Complainantís marks EDGAR SNYDER and EDGAR SNYDER & ASSOCIATES. It is reasonable to conclude that only someone who was familiar with the Complainantís marks would have registered the functionally identical domain names with "deliberate typos".
Indeed, it is difficult to conceive that Respondent chose to register the domain names <edgarsynder.com> and <edgersnyder.com> by accident. Based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would not be infringing to the Complainantís marks. In addition, the Respondent is using the disputed domain names for commercial purposes creating likelihood of confusion with the Complainantís marks. Users who visit the disputed domain names are directed to a third-party search engine at "www.dp.information.com", as well as a number of links to various law offices providing personal injury representation, which are the exact services offered by the Complainant. This practice, referred to in several decision under the Policy as "typo-squatting", provides further evidence that the Respondent knew the Complainant's marks (in order to misspell them), and thus as evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. See, inter alia, AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103; Blue Cross and Blue Shield Association v. Garrett Ltd./John Nunley, WIPO Case No. D2003-0028; America Online, Inc. v. Johuanthan Invs., Inc., WIPO Case No. D2001-0918; Backstreet Productions., Inc. v. Zuccarini, WIPO Case No. D2001-0654.
The Panel finds for the Complainant on this third element of the test.
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, <edgarsynder.com> and <edgersnyder.com>, be transferred to the Complainant.
Daniel J. Gervais
Dated: January 27, 2004