WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Scotsman Publishing, Inc. v. LaPorte Holdings, Inc.

Case No. D2005-0228

 

1. The Parties

The Complainant is Scotsman Publishing, Inc., Bothell, Washington, United States of America, represented by Williams, Kastner & Gibbs, PLLC, United States of America.

The Respondent is LaPorte Holdings, Inc., Los Angeles, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <scotsmansguide.com> is registered with NameKing, Inc. (“NameKing” or the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on March 2, 2005, and in hardcopy on March 3, 2005. On March 2, 2005, the Center by email formally acknowledged receipt of the Complaint.

On March 2, 2005, the Center transmitted by email to NameKing a request for registrar verification in connection with the domain name at issue. On March 3, 2005, NameKing transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the registrant. 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 Respondent of the Complaint, and the proceedings commenced on March 4, 2005. As required by the Rules, the Center sent a copy of the Complaint, along with a Notification of Complaint and Commencement of Administrative Proceeding, to Respondent by Federal Express to its street address1 and to all of Respondent’s known email addresses, including for its administrative and technical contacts. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 24, 2005. Respondent did not submit any Response. Accordingly, the Center issued a Notification of Respondent Default on March 29, 2005.

The Center appointed David H. Bernstein as the Sole Panelist in this matter on April 6, 2005. 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

Because Respondent failed to file a Response, the Panel accepts as true all statements of fact made by Complainant in its submission. See EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000).

Complainant, a Washington corporation, is the owner of the common law mark SCOTSMAN GUIDE for use in connection with printed and online publications for the commercial and residential mortgage industries, as well as online searchable databases of information on lenders. Complainant has been serving the mortgage lending industry since 1985. Beginning in 1994, Complainant began publishing the “Scotsman Guide”, which has since been divided into two publications that both contain the “Scotsman Guide” name. Starting in 1998, Complainant made its services available at the website located at “www.scotsmanguide.com”.

Respondent registered the <scotsmansguide.com> domain name (the “Domain Name”) on December 23, 2003. The Domain Name currently does not resolve to any webpage.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical to its SCOTSMAN GUIDE mark, except that Respondent has added an “s” between the words “scotsman” and “guide” and has added “.com” at the end.

Complainant alleges that Respondent lacks any rights or legitimate interests in the Domain Name. Complainant contends that Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the Domain Name or to the SCOTSMAN GUIDE mark. Complainant asserts that neither the Domain Name nor the SCOTSMAN GUIDE mark is Respondent’s personal name, nor is Respondent known to the public under such a name. Complainant states that Respondent is not a licensee of Complainant, nor has it ever been authorized by Complainant to use the SCOTSMAN GUIDE mark or to register the Domain Name. Complainant further alleges that Respondent has never used the Domain Name in connection with the bona fide offering of goods or services, and is not using the Domain Name in a noncommercial or fair use manner.

Complainant alleges that the Domain Name was registered and is being used in bad faith. Complainant contends that Respondent uses the Domain Name to direct users to a website that offers competing goods and services to those offered by Complainant. As a result, Complainant contends, Respondent is clearly attempting to create the false impression that Respondent’s website is associated with Complainant, and consumers who visit Respondent’s website may even mistakenly believe that they have arrived at Complainant’s official site. Complainant presumes that Respondent is earning advertising and click-through fees and is generating sales revenues through the links to competing products and the “pop-up” advertisements that appear on its site. Therefore, Complainant alleges, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source or affiliation of Respondent’s website.

Complainant further alleges that Respondent is a prolific registrant of infringing domain names that are based on well-known trademarks or brand names, and that Respondent and/or various alter egos of Respondent have been the subject of a number of UDRP decisions for engaging in bad faith conduct in the past. Complainant contends that Respondent registered the Domain Name in order to prevent Complainant from reflecting its mark in the Domain Name, and that Respondent’s practices also tarnish the goodwill associated with the SCOTSMAN GUIDE mark, primarily for the purpose of disrupting Complainant’s business. Finally, Complainant states that Respondent cannot claim that it was not aware of the SCOTSMAN GUIDE mark at the time it registered the Domain Name because Respondent could not have coincidentally chosen to use an almost identical mark in connection with the same goods and services.

B. Respondent

Respondent did not reply to Complainant’s contentions.2

 

6. Discussion and Findings

The burden for Complainant under paragraph 4(a) of the Policy is to prove:

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

(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proving all three of these elements notwithstanding the absence of a Response. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Decision Overview”), “[t]he respondent’s default does not automatically result in a decision in favor of the complainant.” Rather, “the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.” WIPO Decision Overview § 4.6 (available at http://www.wipo.int/amc/en/domains/search/overview/).3

A. Identical or Confusingly Similar

Complainant has applied to the U.S. Patent and Trademark Office for a federal registration for its SCOTSMAN GUIDE mark, but does not currently own such a registration. The Policy, though, is not limited to registered marks; rather, it protects any trademark. See, e.g., Stanford Microdevices, Inc. v. Sheryl Morace, WIPO Case No. D2001-0382 (May 13, 2001). Complainant can prevail under the first factor if it can show sufficient use of the mark in commerce to create common law trademark rights. Id.; see also WIPO Decision Overview § 1.7.

Complainant has carried that burden. Complainant has averred that it has used the SCOTSMAN GUIDE mark to identify its services for more than a decade. Complainant alleges that its publications have a combined subscriber base of between 65,000 and 70,000 persons, its website averages approximately 15,000 to 17,000 visits each month, and it has invested hundreds of thousands of dollars to develop and promote the SCOTSMAN GUIDE mark. Respondent has not submitted any evidence to refute these assertions.

Moreover, there can be no question but that the Domain Name is confusingly similar to Complainant’s SCOTSMAN GUIDE mark for the purposes of the Policy. The Domain Name incorporates in its entirety the SCOTSMAN GUIDE mark. The addition of the letter “s” and/or a gTLD and the elimination of spaces does not prevent a finding of confusing similarity. See, e.g., Habit Holding Co., L.L.C. v. None/Michael Pimentel, WIPO Case No. D2004-1009 (February 9, 2005); Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, NAF Case No. FA406512 (March 9, 2005); see also America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001) (the “addition or insertion of letters” does not prevent a finding of confusing similarity). The Panel thus finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant, which asserts that it has not licensed or authorized Respondent to use its mark, has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name.

Respondent uses the Domain Name in connection with a website that contains links to other sites that offer goods and services that compete with those offered by Complainant.4 This type of use is neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii). Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy, NAF Case No. FA290633 (August 11, 2004).

Moreover, there is no evidence in the record that Respondent was commonly known by the name “Scotsman Guide” prior to registration of the Domain Name. The Panel thus finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to paragraph 4(c)(ii) of the Policy. Citigroup Inc., supra.

Respondent, having submitted no Response, has failed to rebut this showing of no legitimate interests. See WIPO Decision Overview § 2.1; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent has registered and used the Domain Name in bad faith.

Internet users who are looking for Complainant’s website, but accidentally input the Domain Name into a browser (by adding an “s” to “scotsman”) are instead directed to Respondent’s website, which contains a number of links to websites that offer competing goods and services to those offered by Complainant. Complainant serves the mortgage lending industry, and its website, among other things, allows mortgage brokers, property owners and investors to locate the best lender for their specific type of property, location and deal. Respondent’s website contains links for, among other things, “lenders,” “mortgage loans” and “broker[s].” Moreover, if a user searches Respondent’s site for “commercial loans,” a page appears with a number of links to Complainant’s competitors. Using a domain name “to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors,” is evidence of bad faith. Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 (March 5, 2003).

In addition, the Panel accepts as a fair inference Complainant’s unrebutted contention that Respondent receives revenues from certain third parties whose websites are accessed via Respondent’s website, as well as from advertising pop-up windows that appear on Respondent’s site. Thus, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant’s mark. This constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Societe des Hotels Meridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849 (December 16, 2004) (finding bad faith where this very same Respondent linked a confusingly similar domain name to a website that contained links to online stores that offered the same type of services as complainant); Citigroup Inc., supra (respondent used confusingly similar domain names to divert users to websites that featured search engines, “pop-up” advertisements, and links to websites that were in direct competition with the services offered by complainant); Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 (March 21, 2005) (respondent’s website contained a number of links to complainant’s competitors).

The Panel finds that the above evidence is sufficient to establish registration and use in bad faith under paragraph 4(b) of the Policy. Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

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 <scotsmansguide.com> be transferred to Complainant.


David H. Bernstein
Sole Panelist

Dated: April 15, 2005


1 Federal Express packages were also sent to two other addresses. The first was an address that appeared in a ChoicePoint Online corporate database search of United States companies that was conducted by Complainant. The second address belonged to Respondent’s apparent registered agent, also found in Complainant’s ChoicePoint Online search.

2 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center gave Respondent fair notice of the Complaint. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001). Federal Express packages containing the Complaint were delivered to two of Respondent’s street addresses, one as listed in its WHOIS registration data and the other as it appeared in Complainant’s ChoicePoint Online search. See supra, n.1. Both packages were signed for on March 7, 2005. A third Federal Express package, sent to Respondent’s apparent registered agent, was also signed for on March 7, 2005. See id. In addition, an electronic copy of the Complaint was sent to the email address listed for both the administrative and technical contacts; the Center did not receive a bounce back notice indicating that its emails to this address (including both the Notification of Complaint and Commencement of Administrative Proceeding and the subsequent Notification of Respondent Default) were not delivered. The Complaint was not sent by fax because Respondent did not provide a fax number for itself or any of its contacts when it registered the Domain Name. The Panel notes that its own research reveals that Respondent has since changed the registrant contact information in its WHOIS registration data. However, a copy of the Complaint was, in fact, sent to the address that now appears because that address appeared in Complainant’s ChoicePoint Online search. Although neither the Complaint nor the Notification of Respondent Default was sent to the new email address that appears in Respondent’s WHOIS registration data, Respondent, which had to have been aware of the Complaint, had the responsibility to inform the Center of any change in its email address so that the Notification of Respondent Default could be emailed to that new address. Accordingly, the Panel finds that the Center discharged its obligations to provide fair notice, as required by paragraph 2(a) of the Rules.

3 As this Panel previously explained, although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 (March 21, 2005). Accordingly, when such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004).

4 Although the Domain Name currently does not resolve to a website, Complainant has submitted with its Complaint printouts from Respondent’s website as it appeared on February 25, 2005.