WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ross-Simons of Warwick, Inc. v. Noel Summers
Case No. D2004-0194
1. The Parties
The Complainant is Ross-Simons of Warwick, Inc., Cranston, Rhode Island, United States of America, represented by Deborah Benson and Amy B. Spagnole, Hinckley, Allen & Snyder, LLP, Boston MA, United States of America.
The Respondent is Noel Summers, Cocoa, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rosssimonscatalog.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2004. On March 16, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. eNom did not reply to the Center's registrar verification request and, on March 18, 2004, the Center verified on eNom's Whois website that the Respondent is listed as the registrant and confirmed 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 March 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 13, 2004.
The Center appointed the undersigned as the sole panelist in this matter on April 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
Complainant is a U.S.-based company marketing and selling jewelry, tableware, home décor material and other items. It makes significant sales through mail order and on-line catalogs.
Complainant's on-line catalog is located at <ross-simons.com>, which was registered in 1996. Complainant avers that it has been an active presence of the Internet since at least December 1996.
Complainant's U.S. Service Mark No. 1,317,429 for ROSS-SIMONS was registered in 1985, for retail and mail order services in jewelry, china and gift items. Complainant also avers that it has built up substantial value and good will in its mark.
On or about January 8, 2003, Respondent registered the disputed domain name <rosssimonscatalog.com>. That site displays the disputed domain name prominently and offers links for shopping for various goods including those of competitors of Complainant, but apparently no link to Complainant's site or catalog.
5. Parties' Contentions
Complainant alleges that the disputed domain name is confusingly similar to its mark; the only real difference being the elimination of the hyphen in "Ross-Simons"; that Respondent has no right or legitimate interest in its mark and, a fortiori no license or right from Complainant; and that such a "competing" domain name registration by Respondent, long after Complainant and its mail order and on-line catalog business was abundantly known, can only constitute bad faith registration and use. Complainant accordingly requests the transfer to it of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Complainant has submitted a clear and well-documented Complaint, which readily meets its burden of proving the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
As noted above the only difference between the beginning of the disputed domain name and the Complainant's mark is the omission of a hyphen in the former. Complainant correctly argues that this does not stop the two from being confusingly similar. Minor differentiations of a letter, accent or the like between a domain name and mark, often termed "typo squatting," have frequently been found to constitute "confusing similarity" within the meaning of the Policy. See Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; see also Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869. The addition of the noun "catalog" to part of the disputed domain name incorporating the mark does nothing to diminish this confusing similarity. See e.g., Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456. Indeed, given that Complainant's sales and business are so linked to catalog merchandising and purchasing this addition is an indicia of bad faith under paragraph 4(a)(iii) of the Policy.
B. Rights or Legitimate Interests
There is here no evidence of any right or legitimate interest of Respondent in Complainant's mark, and none can be inferred. On the contrary, Complainant's allegations, backed up by its inferences and evidence all point to a wrongful use.
C. Registered and Used in Bad Faith
There is no good faith explanation of Respondent's 2003 registration of the disputed domain name, particularly given the proof that Complainant and its mark had for many years prior been well known to online and other "catalog shoppers." On the contrary there is strong evidence and inference that both the registration, and the subsequent use, was in bad faith. In particular, the disputed domain name has been used to direct or divert web users, presumably potential customers, to sites that sell products that, compete with Complainant's. This genre of activity is a specific evidence of bad faith under paragraph 4(b)(iv) of the Policy. Respondent's "typo squatting," noted above, is further indicia of bad faith.
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 <rosssimonscatalog.com>, be transferred to the Complainant.
Dated: April 28, 2004