WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Standard & Poor’s, a Division of The McGraw-Hill Companies, Inc. and State Street Global Advisors, a Division of State Street Bank and Trust Company v. Whois ID Theft Protection, Whois Protection
Case No. D2007-0978
1. The Parties
The Complainants are Standard & Poor’s, a Division of The McGraw-Hill Companies, Inc., New York, New York, United States of America and State Street Global Advisors, a Division of State Street Bank and Trust Company, Boston, Massachusetts United States of America, represented by Dewey Ballantine, LLP, United States of America.
The Respondent is Whois ID Theft Protection, Whois Protection, Georgetown, West Bay , Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <spdrs.com> is registered with Rebel.com Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2007. On July 4, 2007, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On July 5, 2007, Rebel.com Services Corp 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 together with the amendment to 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 July 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2007.
The Center appointed Bernhard Meyer-Hauser as the sole panelist in this matter on August 20, 2007. 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
Complainants are the owners of the trademark SPDR registered by the Patent and Trademark Office in the United States of America on February 1, 1994 (No. 74210185). As a part of a suite of marks registered by S&P’s parent company, McGraw Hill, SPDR O-STRIP was registered as a word mark (No. 78499771) on March 14, 2006 and as a design (No. 78499757) on April 11, 2006. Additionally, Complainants own the domain name <spdr.com> registered by S&P on November 7, 2000, and operate a website associated with the domain name.
SPDR, according to Complainants, is pronounced “spider”, is the abbreviation of “Standard and Poor’s Depository Receipts”, indicating the relation with the financial services proffered.
Standard & Poors (“S&P”) and State Street entered into a trademark licensing agreement which granted State Street a worldwide, exclusive license to use the SPDR Trademark in connection with ETFs (Exchange Traded Funds).
Respondent registered the disputed domain name <spdrs.com> on May 6, 2004. The last date of modification of the website at issue was July 5, 2007, 17:57:10 UTC, only approximately three and a half (3.5) hours before the site was frozen due to the pending proceeding. By the last modification, the content of the page had been changed, but for the purposes of this UDRP proceeding, the previous content discussed below shall be relevant.
5. Parties’ Contentions
Complainants believe that Respondent has been known by different names, each representing the same entity or successor entity. In particular, the names are “Whois ID Theft Protection”, Georgetown Cayman and “Whois Protection”, West Bay, Cayman. The impression that those names belong to the same entity is supported especially by the fact that the e-mail address is precisely the same.
Complainants, as leading providers of financial services, assert that they have continuously used the SPDR trademark in commerce since 1993 and that they spend more than US$28 million worldwide in advertising and marketing activities annually to promote the SPDR Trademark. As a result of such efforts, the SPDR Trademark has received widespread public recognition and enjoys substantial goodwill.
a) Identical or Confusingly Similar:
The domain name at issue incorporates Complainants SPDR Trademark in its entirety such that it forms the dominant aspect of the domain name. Therefore, any differences should be negligible. The domain name’s incorporation of the SPDR Trademark in its entirety creates sufficient similarity such that potential consumers are likely to be confused and believe some connection exists between Complainants and Respondent. The appending of an “-s” to the SPDR does not prevent it from being confusingly similar to the SPDR Trademark.
b) Rights and Interests:
According to the Complaints, the SPDR Trademark has been invented for the sole purpose of functioning as a Trademark. However, because it is “arbitrary or fanciful”, it is not amenable to innocent adoption. Combined with the fact that Respondent has continuously obscured its true identity, the inference should be supported that Respondent is not commonly known by the domain name, nor is the domain name an acronym for the name under which Respondent’s business operates.
Complainants furthermore state, that there is no legitimate relationship between Complainants and Respondent since Respondent, under any circumstance, has never obtained authorization to use the Complainants’ Trademark. Therefore, Respondent cannot claim rights, or legitimate interests in the use of the domain name at issue.
To the contrary, Complainants allege that Respondent has used the domain name to advertise and link to third-party websites which provide goods and services similar to Complainants’ products (e.g. portfolio management, penny stocks, stock trading, online stock trading). In particular, the products “xle”, “xlf” and “xlb” on said website, represent an identical partition of Complainants’ products. This fact further exacerbates the confusion created by the domain name’s incorporation of the SPRD Trademark. In regard to these facts, Complainants are certain, that the domain name is being used to misdirect Internet users to Respondent’s website for financial gain.
On that account, Complainants highlight, that Respondent’s use of the domain name, which is almost identical and confusingly similar to Complainants’ SPDR Trademark, causes dilution of the distinctive quality of the mark.
c) Used and Registered in Bad Faith
On Complainants’ information and belief, Respondent has been the subject of numerous domain name complaints and has engaged in a clear pattern of illicit behavior. Respondent appears to register domain names very similar to well-known trademarks. These domain names are then used to host websites that provide links to third-party websites offering goods and services related to the well-known trademark. Upon the filing of a complaint, Respondent generally fails to respond allowing a default decision to accrue.
Due to these facts, Complainants attest, that Respondent has a history of registering domain names to prevent trademark owners from reflecting their marks in a corresponding domain name by cyber squatting and typo squatting. E.g., King Pharmaceuticals, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0009; Edmunds.com, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0016; Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; The Chancellor, Masters, and Scholars of the University of Cambridge v. Whois ID Theft Protection, WIPO Case No. D2006-1188; Société des Produits Nestle v. Whois ID Theft Protection, WIPO Case No. D2006-1154; The Hartz Mountain Corporation v. Whois ID Theft Protection, WIPO Case No. D2006-1319; Fifth Third Bancorp v. Whois ID Theft Protection, WIPO Case No. D2006-1209; Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146; Mannheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
Respondent has designed a website under the domain name in order to advertise services related to, and in competition with, Complainants’ services. The domain name differs from Complainants’ <spdr.com> domain name by a single letter. This can only be interpreted as a clear attempt to misdirect traffic intended for Complainants’ online presence to Respondent’s advertisers.
The registration of the domain name is not an isolated incident and therefore, combined with the above mentioned, Respondent has engaged in a pattern of abusive behavior which constitutes both bad faith registration and bad faith use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the policy provides that the Complainant must prove each the following three elements in order to succeed in an administrative proceeding:
(i) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no legitimate rights or interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence of its right to the trademark SPDR.
The Panel finds that the top level domain name at issue, <spdrs.com>, is confusingly similar to the trademark SPDR. The mere inclusion of an additional letter, in the present case an “s”, does not prevent the domain name from being confusingly similar nor can it be considered a distinctive feature. In particular, where the only difference between the Complainant’s mark and the domain name in dispute is the letter “s”, indicating a plural, panelists consistently have found the domain name to be confusingly similar to the Complainant’s registered trademark. See McIlhenny Company v. Whois Protection/ Domain Name Administrator, WIPO Case No. D2006-0767; Kirkbi AG v. Company Require / Karlina Konggidinata and Pool.com,Inc. WIPO Case No. D2004-0359.
The Complainants, therefore, prevail on the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent has not responded to the complaint. Thus, the elements, set forth by paragraph 4(c) of the Policy, which may be used by the Respondent to establish legitimate interest in the use of a domain name appear to be negligible.
It is uncontested, that the owner of the trademark, the Complainants, have not authorized the Respondent to use the trademark. The use of the registered trademark in the disputed domain name for advertising related services without further explanation of the legitimacy of such use is a strong indication that a legitimate interest on the part of Respondent is lacking.
Therefore, the Panelist holds that the second element of the Policy has been complied with.
C. Registered and Used in Bad Faith
In order to fulfill the third element, paragraph 4(a)(iii), Complainants are bound to prove the elements provided by paragraph 4(b) of the Policy.
The Panel finds it evidenced, as Complainants assert, that Respondent registered the domain name <spdrs.com> in order to disrupt the business of the Complainant, offering or advertising, under a confusingly similar domain name, competing financial services. Additionally Respondent used the domain name in an attempt to attract, for commercial gain, internet users to his website and other on-line locations, by creating a likelihood of confusion with the complainants mark. The Panel also notes the alleged fact (uncontested by Respondent) that Respondent is heavily involved in typo and cyber squatting, and that Respondent appears to have updated the website at the disputed domain name (“www.spdrs.com”) on the same day (July 5, 2007) when the website was frozen. The fact that the website at the disputed domain name, today show content other than that displayed in the complaint, does not establish the Respondent’s good faith, and indeed suggests that the content of the website may have been changed in response of the filing of complaint. Altogether, the facts and assertions set out above on balance and in the absence of any response indicate that Respondent registered and used the disputed domain name in bad faith.
The Panel therefore finds, that Complainant has proven that Respondent registered and used the domain names in dispute in bad faith as set out in paragraphs 4(b)(iii) & (iv) of the policy.
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, <spdrs.com>, be transferred to Complainants.
Date: September 3, 2007