WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ross-Simons, Inc. v. Henry Chan
Case No. D2003-0970
1. The Parties
The Complainant is Ross-Simons, Inc., Ann Driscoll, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Henry Chan, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <rossandsimon.com> and <rossandsimons.com> (herein "domain names in dispute") are both 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 December 8, 2003. On December 9, 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 in dispute. On December 11, 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 of both domain names in dispute 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 December 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 19, 2004.
The Center appointed J. Nelson Landry as the Sole Panelist in this matter on January 21, 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
For over fifty (50) years Complainant Ross-Simons, Inc. (herein "Complainant") has sold fine jewelry, tableware, gifts, collectibles, home décor and related items (herein "Products") through its retail and outlet ROSS-SIMONS stores and through its mail order and on-line catalogs of the same name. Complainant mails more than 60 million ROSS-SIMONS catalogs to consumers each year and its ROSS-SIMONS on-line catalog, which is located at "www.ross-simons.com," operates 24 hours a day and reaches millions of consumers.
Complainant is the owner of the trademark ROSS-SIMONS which was registered in United States under No. 1.317,429 on January 29, 1985, in association with the following services: retail store and mail order services specializing in jewelry, china, silver and gift items. The registration discloses July 20, 1952, as date of first use in commerce. Complainant states that it has, since 1952, substantially, continuously and exclusively used, the trademark ROSS-SIMONS (herein "the Trademark") in connection with its business including the sale of the Products.
Complainant registered its <ross-simons.com> domain name on May 16, 1996, has operated a website and on-line catalog at this Internet address since at least December 1996 and thus has an active presence on the Internet. Complainantís registered Trademark is prominently featured on its website and has been featured on this website since December 1996.
Complainant uses its ROSS-SIMONS website to advertise, promote and sell its Products. Complainantís website permits consumers to browse and order its Products from its on-line catalog, purchase gift certificates and track orders. The site also communicates special events and promotions to customers and provides customer service information.
In order to increase its presence on the Internet and its on-line sales, Complainant has established and implemented an affiliate program which is managed and administered by Linkshare, an affiliate network that, together with its "www.linksynergy.com" website, manages affiliate programs for numerous e-commerce websites such as Complainantís.
Complainantís affiliate program permits owners of e-commerce websites (the "affiliate") to advertise and provide a link to Complainantís website in the form of a banner ad or text link. If a customer of the e-commerce site clicks on the link to Complainantís website and then purchases a product from said website, the affiliate can earn up to seven percent of the merchandise value of the sale. Thus the Internet has become an extremely important communication and marketing tool and revenue source for Complainant.
According to Exhibit A, the Whois Search, Respondent registered a first domain name, <rossandsimons.com>, on November 17, 2002, and a second domain name, <rossandsimon.com>, on February 14, 2003.
Sometime during or after November 2003, Respondent became an affiliate of Complainant. At that time, Respondent began using the domain names in dispute to re-direct Internet users to a search engine and portal website at "www.dp.information.com."
Respondentís "www.dp.information.com" website displays a list of "Popular Searches" for the same types of items and services offered by Complainant on its website and in its on-line catalog, retail and outlet stores and mail order catalog offering its Products and bridal registries. When an Internet user clicks on one of these items, the Internet user is presented with a list of links to websites that sell competing products and services such as Bloomingdalesí and Macyís wedding registry, the Home Shopping Club and Amazonís jewelry websites and Replacementsí and Lenoxís websites both of which sell tableware including china.
Respondentís website also provides a link to Linkshareís affiliate tracking site "www.linksynergy.com" under the heading "Ross-Simons Official Site" If an Internet user clicks on this link, the user is instantaneously transported to Linkshare and then onto Complainantís website. To the manager of Complainantís affiliate program it appears that the consumer was referred to Complainantís website via a link on a legitimate affiliate website. Respondent collects a commission for any purchase made by the consumer from the Complainant on-line catalog.
Complainant never authorized, licensed or otherwise permitted Respondent to use its Trademark or any confusingly similar variation thereof.
Complainant has not authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising, incorporating or confusingly similar to Complainantís Trademark.
5. Partiesí Contentions
Firstly Complainant represents that the domain names in dispute are confusingly similar to Complainantís Trademark, in that the only difference between Complainantís Trademark, Complainantís domain name <ross-simons.com>, and Respondentís first domain name <rossandsimons.com>, is the substitution of the word "and" for the hyphen while the only difference between Complainantís Trademark, Complainantís domain name <ross-simons.com>, and Respondentís second domain name <rossandsimon.com>, is the substitution of the hyphen for the word "and" and the deletion of the letter "s" and the addition of "www" in both domain names.
Complainant cites numerous UDRP decisions wherein panels have characterized situations where the Respondentís domain name is one letter or character less than or different from Complainantís mark as "typosquatting" and have found such domain names to be confusingly similar to Complainantís trademark. See Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises Intíl, Inc. v. SAND Web Names For Sale, WIPO Case No. D2001-0094; NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty, Ltd., WIPO Case No. D2000-1293.
Complainant represents that a result of its continuous and exclusive use of the Trademark since at least as early as 1954, it has built up substantial value and goodwill in its registered Trademark.
According to Complainant, through its efforts, it has established a strong customer base and is known throughout its trading area as a provider of quality Products and retail store, mail order and on-line catalog services. 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, Complainant has built up valuable goodwill in its registered Trademark. Such Trademark is allegedly of immeasurable value to Complainant.
Secondly Complainant alleges that Respondent has no rights or legitimate interest with respect to the Trademark, or the domain names in dispute. According to Complainant, upon information and belief, the domain names in dispute do not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent and that there is nothing in Respondentís Whois information that indicates that Respondent is commonly known by any of the disputed domain names. See Terecent, Inc. v. Lee Yi, NAF Claim No. 139720.
Furthermore Complainant represents that Respondent firstly did not, prior to notice of this dispute, use the domain names in dispute or a trademark corresponding to the domain names in dispute, in connection with a bona fide offering of goods or services and secondly has not made a legitimate non-commercial or fair use of the domain names in dispute.
Complainant submits that Respondent is using the domain names in dispute to divert Internet traffic to its portal websites where it provides links to competing websites. The use of domain names that are confusingly similar to a registered trademark to divert Internet users to a competitorís website is not a use in connection with the bona fide offering of goods or services or a legitimate non-commercial or fair use. See America On-Line, Inc. v. Ten Cent Comm. Corp., NAF Claim No. 93668.
According to Complainant, Respondent is also using the domain names in dispute to divert Internet traffic to its website that instantaneously re-directs 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 on-line catalog but, rather, collects commissions each time a consumer misspells or mistypes the Complainantís domain name.
Complainant therefore submits that use of a confusingly similar domain name to redirect Internet traffic to Complainantís website in order to receive a commission as part of Complainantís affiliate program is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of such domain names. See 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 and Deluxe Corp. v. Dallas Internet, NAF Claim No. 105206.
Complainant has reiterated that it never authorized, licensed or otherwise permitted Respondent to use its Trademark or any confusingly similar variation thereof nor authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainantís Trademark.
Thirdly Complainant submits that Respondent registered and is using the domain names in dispute in bad faith, primarily for the purpose of intentionally attracting for commercial gain, Internet users to Respondentís portal website, by creating a likelihood of confusion with the Complainantís Trademark as to the source, sponsorship, affiliation or endorsement of the Respondentís catalogs and websites or of a product or service on the Respondentís websites.
According to Complainant, Respondent has registered domain names in dispute to attract Internet users who are looking for Complainant but merely misspell or mistype Complainantís domain name by substituting the hyphen with the term "and" and, in the case of <rossandsimon.com>, eliminates the letter "s" to its portal website which provides links to competing websites.
Complainant represents that Respondentís unauthorized and unapproved re-direction of consumers searching for Complainant to its websites where it provides links to competing websites which sells similar merchandise is solely for the purpose of achieving commercial gain. Such behavior has been found by many UDRP panels to constitute bad faith registration and use. See NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768, Tarjeta Naranja SA v. Mr. Dominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295, AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289 and Express Messenger Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063.
Furthermore Complainant alleges that Respondent also uses the domain names in dispute to re-direct unsuspecting Internet users who inadvertently misspell or mistype Complainantís name to Linkshareís website and then immediately to Complainantís website. As a member of Complainantís affiliate program, Respondent is making a profit every time an Internet user re-directed as a result of Respondentís scheme purchases a product from Complainant.
Again relying on the above cited three decisions The Sports Authority Michigan, Inc. and decision Deluxe Corp. v. Dallas Internet, Complainant submits that this type of behavior is evidence of bad faith registration and use.
According to Complainant, the mere act of "typosquatting," or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of inherent parasitic behavior, of a difficulty for Respondent to prove to the Panel that it did not have actual knowledge of Complainant and of bad faith registration and use. See National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011 and Medline, Inc. v. Domain Active Pty., Ltd., NAF Case No. 139718.
Due to the fact that Respondent is an affiliate of Complainant and Respondentís domain names in dispute link to websites that sell competing products and in addition Respondentís domain names are virtually identical to Complainantís Trademark and <ross-simons.com> domain name, Complainant submits that it can be inferred that Respondent had actual knowledge of Complainantís rights in its Trademark when it registered its domain names in dispute. See Dollar Rent A. Car, Inc. v. Albert Jackson, NAF Claim No. 187421, The Sports Authority Michigan, Inc. v. Domhold Co. a/k/a DíVaul, NAF Claim No. 135011 and Digi Intíl v. Digi Sys, NAF Claim No. 124506.
Finally, according to Complainant, further evidence of Respondentís bad faith use and registration of the domain names in dispute is the fact that Registrant has been found to have registered and used other domain names in bad faith in at least four (4) other administrative proceedings under this Policy. These cases involved approximately 83 domain names containing the famous or well known trademarks, or misspelling of such trademarks of others which Respondent used in the same manner as the domain names in dispute in the present case. In each instance, Respondent used these other domain names to link consumers looking for the complainant to a portal website that provides links to websites of the complainantís competitors, all for financial gain. Complainant submits that such pattern of behavior establishes bad faith use and registration. See Inter-IKEA Sys.B.V. v. Tech Educ. Ctr., WIPO Case No. D2000-0522 and Bell-Phillip Televisual Prods. v. Aford., WIPO Case No. D2000-0180.
The Respondent did not reply to the Complainantís contentions nor filed any evidence.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three 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
Complainant has submitted sufficient evidence that it has since 1952 used the Trademark at least in the USA and on the Internet and also registered it. Accordingly, the Panel finds that the Complainant has rights in the ROSS-SIMONS Trademark.
There is no doubt that the domain names <rossandsimon.com> and <rossandsimons.com> are confusingly similar with the Trademark ROSS-SIMONS of Complainant for purposes of the Policy. One domain name in dispute incorporates in its entirety the Trademark while the other is missing only the "s" after "Simon".
In the opinion of the Panel relying on panel decisions properly cited by Complainant, the addition first of the three letters "w" and second the deletion of the letter "s" does not deter the reader from the fact that the Trademark has been taken and associated with the prefix "www", the suffix ".com" and the substitution of "and" for the hyphen which result in the domain names in dispute.
The Panel finds that the domain names in dispute is confusingly similar with the registered Trademark ROSS-SIMONS.
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 names in dispute by stating that the Respondent has never been known by the name Ross and Simons or the domain names in dispute and is not making legitimate non commercial or fair use of the domain names in dispute.
As shown by the Complainant, the use of the domain names in dispute by the Respondent is 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 names in dispute and thereafter said Internet users are either diverted back to Complainant or to the website of competitors whereby the Respondent is presumably obtaining a commercial benefit for such services. In so doing the Respondent uses in the domain names in dispute the Trademark of Complainant and such use is made without the authorization or license of the Complainant. 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 the UDRP three decisions The Sports Authority Michigan, Inc. v. Domhold Co. a/k/a DíVaul, Register.com, Inc. v. Mike Torres, et al. and Deluxe Corp. v. Dallas Internet cited by Complainant in the present case.
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 names 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 names 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 names in dispute were registered and are used in bad faith.
The Panel has determined from the well documented evidence that the domain names in dispute were registered respectively on November 17, 2002, and February 14, 2003, more than 50 years after the continuous extensive use and sale of Products under the Trademark on the one hand and six years after Complainant has commenced the extensive use of its on-line catalog activities under the Trademark on the other hand. The Trademark is used extensively since 1952, and was registered in the United States in 1985. Based on the evidence, the Panel finds that Complainant benefits substantial goodwill in association with the Trademark.
The Panel considers that the Respondent in diverting Internet users that have made a mistake back to the Complainant in payment for a commission or to the website of competitors as put in evidence, had on purpose selected a domain name identical or very close to the Trademark of Complainant and the Panel therefore concludes that, in so doing, the Respondent was well aware of the rights of the Complainant in the registered Trademark.
The fact that for a period of time commencing after the registration of a first domain name in dispute in November 2002, and the second domain name in dispute in February 2003, the Respondent became an affiliate of Complainant sometime during or after November 2003, does not change the situation. Respondent has not been authorized at anytime to use the Trademark nor to register domain names which incorporate the Trademark or a confusingly similar thereto.
The Respondent was thus imitating Complainantís Trademark when registering the domain names in dispute and has adopted a practice of "typosquatting" which has been recognized as bad faith use of a domain name under the UDRP decisions cited by Complainant and which the Panel follows.
It has been recognized in several URDP decisions including those cited by Complainant that using a confusingly similar domain name to the trademark 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, in many URDP decisions, the Panel has qualified that use as the one in the present instance made by Respondent to divert Internet users to the website of competitors amounts to registration and use of a domain name in bad faith.
The Panel in the present case finds that the intentional registration and use of the domain names in dispute clearly manifests an intent by Respondent to capitalize on and to benefit from the goodwill in the Trademark of Complainant as well as an intent to take advantage of Internet users misspelling a domain name which constitutes use of the domain names in dispute in bad faith. This bad faith is furthermore confirmed by the pattern of Respondent registering at least 80 domain names containing famous or well-known trademarks or misspelling of such trademarks and having been found as acting in bad faith in four UDRP proceedings under this Policy.
Therefore, the Panel finds that the domain names in dispute was registered and is being used in bad faith.
The Panel concludes that:
(a) the domain names <rossandsimon.com> and <rossandsimons.com> are confusingly similar to the Complainantsí Trademark ROSS-SIMONS;
(b) the Respondent has no rights or legitimate interest in the domain names in dispute;
(c) the domain names in dispute have been registered and are 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 names, <rossandsimon.com> and <rossandsimons.com > be transferred to the Complainant.
J. Nelson Landry
Dated: January 31, 2004