WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Network Solutions, LLC v. Center for Ban on Drugs
Case No. D2005-0454
1. The Parties
1.1 The Complainant is Network Solutions, LLC, Herndon, Virginia, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States of America.
1.2 The Respondent is Center for Ban on Drugs, , Denver, Colerado, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <netorksolutions.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2005. On April 27, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On April 27, 2005, Intercosmos Media Group d/b/a directNIC.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. 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”).
3.2 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 April 29, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2005.
3.3 The Center appointed Jay Simon as the sole Panelist in this matter on May 24, 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
4.1 Complainant is the first, and remains, the largest registrar of internet domain names. Complainant avers that it spends millions of dollars each year to advertise the NETWORK SOLUTIONS mark, and provides a broad range of internet and computer related products and services, including domain name registration, electronic mail services, web hosting services and website building services.
4.2 Complainant is the assignee of the entire interest and goodwill of Network Solutions, Inc. in the NETWORK SOLUTIONS marks. All trademarks of Network Solutions, Inc. were transferred and assigned to Complainant, the assignments being recorded in appropriate jurisdictions, e.g., in the United States Patent and Trademark Office for U.S. trademarks and service marks.
4.3 Thus, Complainant is the owner of U.S. trademarks, Reg. Nos. 1,330,193 (registered April 9, 1985, and claiming a first use in 1979) and 2,468,676 (registered July 17, 2001) as well as trademarks, service marks and applications therefore in a number of other countries. Complainant’s predecessor registered the domain name NETWORKSOLUTIONS.COM on April 27, 1998.
4.4 Respondent registered the disputed domain name on January 30, 2000.
4.5 As of the date of the Complaint the disputed domain name resolved to a website <geocities.com> which displays an adult entertainment advertisement.
4.6 On June 24, 2004 Complainant sent a certified letter to Respondent demanding that Respondent cease and desist use of the disputed domain name and transfer the registration for the disputed domain name to Complainant. On August 27, 2004, Complainant’s counsel sent a similar letter to Respondent via electronic mail and courier service. Respondent did not respond to either letter.
4.7 Respondent has not responded to the Complaint and was notified of its default by the Center.
5. The Parties Contentions
5.1 Complainant contends that it is the owner of a federally registered U.S. service mark as well as subsequently filed U.S. and foreign service marks and trademarks. Complainant further contends that it has developed, as a result of its registrations, promotional activities, and advertising, valuable goodwill and an outstanding reputation in its NETWORK SOLUTIONS mark and its corresponding domain name.
5.2 Complainant contends that the disputed domain name is virtually identical to the mark in which Complainant has rights and that therefore, the disputed domain name is confusingly similar to Complainant’s mark.
5.3 Complainant further contends that the difference between its mark and the domain name – omission of the letter “w” - is de minimus.
5.4 Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, is not a licensee of Complainant and Complainant never authorized Respondent to use Complainant’s mark NETWORK SOLUTIONS.
5.5 Complainant contends that the disputed domain name has been registered and used in bad faith, and that Respondent is engaged in a practice commonly known as “typo squatting”; involving the registration of common misspellings of famous marks for the purpose of diverting internet users to a respondent’s site for commercial gain.
5.6 Complainant further contends that Respondent’s registration of the disputed domain name tarnishes the goodwill associated with Complainant’s mark, and that the registration was intentionally attempted to attract internet users, for Respondent’s commercial gain, to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.
5.7 Complainant contends that the disputed domain name should be transferred to Complainant.
5.8 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.
6. Discussion and Findings
6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of a domain name where the owner of the mark (Complainant) proves each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element of Paragraph 6.1.
6.3 Respondent having failed to respond in these proceedings is in default and in accordance with Paragraph 14(b) of the Rules, “The Panel shall draw such inferences… as it considers appropriate.”
A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)
6.4 There is but a small and insignificant difference between the disputed domain name and Complainant’s mark, i.e., the omission of a “w”. That difference is not enough to overcome a finding of confusing similarity, the difference not changing or affecting the overall impression of the mark; See, Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675. Further, the WIPO files are replete with cases similar to this case where a single letter, whether at the end of the mark of within the mark, has been omitted from a complainant’s mark. These cases unfailingly find the disputed domain name confusingly similar to the mark in which a complainant has rights. These cases are often referred to as “typo squatting”, a practice where a well known mark is intentionally misspelled for the purpose of attracting unwary internet users (and less than careful typists) to a particular website for pecuniary gain. As is the case here: this Panel finds the disputed domain name to be confusingly similar to Complainant’s mark, and that Respondent has engaged in typo squatting. See, The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492; United Airlines, Inc. v. United Airline Dot Com, WIPO Case No. D2002-0835.
B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)
6.5 Paragraph 4 (c) of the Policy lists three non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name.
6.6 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, the Complainant having made the necessary assertions (see below), it is incumbent upon the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the Respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence regarding its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions; See, Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
6.7 Complainant asserts that Respondent is not a licensee and has not been authorized to use Complainant’s mark in any way, shape, or form. These assertions are uncontested and therefore, must be deemed for purposes of these proceedings as true.
6.8 Respondent has provided no evidence that it was commonly known by the disputed domain name, and it is highly unlikely that Respondent could show such evidence in the face of Complainant’s early use of the mark, its federally registered service mark, and the registration of its domain name. Further, it is clear that Respondent’s use of the disputed domain name is neither fair use nor non-commercial use thereof.
6.9 Respondent’s use of the disputed domain name prior to institution of these proceedings is not a bona fide offering of goods and services. The disputed domain resolves to an adult entertainment site having no relationship or affiliation with Complainant. Indeed, upon reaching this site the unwary internet user is likely to be confronted with images that denigrate from the goodwill and reputation developed by Complainant in its mark. See, Victoria Rowell v. Telco, Regsnet and Jeff Martin, WIPO Case No. D2003-0712, the PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Kahn, WIPO Case No. D2002-0701. In the absence of any evidence to the contrary this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)
6.10 Paragraph 4(b) of the Policy lists several, non-exclusive indicia of bad faith registration and use of a domain name. For these proceedings, Paragraph 4(b)(iv) is, at the least, relevant. Additionally, typo squatting in and of itself has been recognized as bad faith registration and use of a disputed domain name; See Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675.
6.11 There are uncontested assertions and evidence that Respondent’s registration and use of the domain name is for intentionally attracting, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. See, for example, TalkCity, Inc. v. Robertson, WIPO Case No. D2000-0009; also Neiman Marcus Group, Inc. v. Fashionid.com, Case No. FA03040000155176 (Nat. Arb. Forum, June 10, 2003) where the respondent’s registration of <neimansmarcus.com> was confusingly similar to the complainant’s mark and respondent was found to be attracting internet users to its website for commercial gain by creating a likelihood of confusion with complainant’s mark.
6.12 Complainant has instituted recently a number of proceedings under the Policy, each requesting transfer of a disputed domain name that is confusingly similar to Complainant’s mark NETWORK SOLUTIONS. The evidence in each proceeding was overwhelmingly in Complainant’s favor and each Panel has granted, as in this case, transfer to Complainant of the disputed domain name. This Panel wishes to point out that each proceeding instituted by Complainant was some three years or so after Respondent’s registration of the disputed domain name. Complainant must recognize that protection of its marks requires vigilance and that in certain circumstances – not relevant here or in other recent proceedings – passage of time can affect decisions under the Policy.
7.1 For all of the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name <netorksolutions.com> be transferred to the Complainant.
Dated: June 7, 2005