WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Channing Bete Company, Inc. v. Marketing Total S.A.
Case No. D2008-0130
1. The Parties
The Complainant is Channing Bete Company, Inc, South Deerfield, Massachusetts, United States of America, represented by Palmer & Dodge, LLP, United States of America.
The Respondent is Marketing Total S.A, Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Names and Registrar
The disputed domain names <ahachanningbete.com> and <channin-bete.com> (the “Disputed Domain Names”) are registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2008. On January 29, 2008, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On February 5, 2008, DomainDoorman, LLC 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 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 February 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2008.
The Center appointed Jacques de Werra as the sole panelist in this matter on March 18, 2008. 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
The Complainant is a U.S. company offering educational goods and services. It is in particular an authorized distributor of American Heart Association (AHA) products.
The Complainant is the owner of various U.S. trademarks containing the words “channing bete”, in particular the following trademarks (hereafter: the “Trademarks”):
- Trademark No 2,918,225 (registered on January 11, 2005) for the word trademark CHANNING BETE COMPANY covering various goods and services in classes 16, 35 & 42;
- Trademark No 2,918,231 registered on January 11, 2005) for the word and device trademark CHANNING BETE COMPANY covering various goods and services in classes 16, 35 & 42;
- Trademark No 2,968,033 (registered on July 12, 2005) for the word trademark CHANNING BETE COMPANY covering various goods and services in classes 9 & 41;
- Trademark No 2,968,035 (registered on July 12, 2005) for the word and device trademark CHANNING BETE COMPANY covering various goods and services in classes 9 & 41;
The Complainant is also the owner and actively operates the domain names <channing-bete.com> and <aha.channing-bete.com> in connection with its business activities.
The Disputed Domain Names were respectively registered on April 14, 2006 (<channin-bete.com>) and on August 20, 2007 (<ahachanningbete.com>).
Based on the evidence filed by the Complainant, it appears that the Disputed Domain Names have been used as portals listing commercial websites offering services which appear to compete with the ones of the Complainant whereby some of these links expressly referred to the name and Trademarks of the Complainant.
5. Parties’ Contentions
The Complainant contends that it has been using the Trademarks since 2002 and that the Disputed Domain Names are confusingly similar to the Trademarks.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent does not have any trademarks corresponding to the Disputed Domain Names, the Respondent is not commonly known by the Disputed Domain Names, the Respondent has never been authorized or otherwise be permitted to use the Trademarks or to use any domain name incorporating the Trademarks. The Complainant further contends that the mark CHANNING BETE is the name of a deceased individual which was affiliated with the Complainant, and is not a phrase that the Respondent would legitimately choose to include in the Disputed Domain Names unless it was interested in trading on the goodwill of the Complainant. Further, the Complainant contends that the Respondent’s pattern of behaviour of registering domain names comprised of the trademarks of others demonstrates its lack of any legitimate interest in the Disputed Domain Names.
Regarding the condition of registration and use in bad faith of the Disputed Domain Names, the Complainant contends that the fact that the Disputed Domain Names are pointing to pay per click sponsored websites shows that the Respondent is using the Disputed Domain Names to intentionally divert Internet’s users for Respondent’s commercial gain. In addition, the Complainant contends that the Respondent has been involved as defendant in numerous UDRP proceedings which confirms that the Respondent is engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name (under Paragraph 4(b)(ii) of the Policy).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 interests 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
The Panel finds that the Complainant has established its trademark rights in the terms “channing bete”, by virtue of the Trademarks, given that these terms are the key distinctive terms of the Trademarks (the obviously descriptive word “company” which is also contained in the Trademarks is not relevant in the overall impression left by the Trademarks).
The Panel finds that the Disputed Domain Names are confusingly similar to the Trademarks for the following reasons:
With respect to the first of the Disputed Domain Names <channin-bete.com>, the Panel finds that it merely constitutes a misspelled variation of the “channing bete” terms (protected on the basis of the Trademarks) which does not prevent a finding of confusing similarity with the Trademarks but rather constitutes a classical case of typosquatting. See, Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (finding <microosoft.com> confusingly similar to complainant’s Microsoft mark and noting that “[d]isputed domain names with misspelled variations of trademarks have been held to be ‘confusingly similar’ in many WIPO cases”); America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495 (finding a number of domain names that were misspelled variations of Complainant’s marks to be confusingly similar to those marks).
With respect to the second of the Disputed Domain Names <ahachanningbete.com>, the Panel notes that the addition of the initial letters “aha” before the terms “channingbete” is not sufficient to avoid a confusing similarity with the Trademarks. Furthermore, this prefix increases the likelihood of confusion with the Complainant’s Trademarks and services given that the Complainant owns and exploits a quasi identical domain name at <aha.channing-bete.com> with which the <ahachanningbete.com> domain name of the Respondent is quasi identical. See, by analogy, Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (admitting confusing similarity between a domain name containing a trademark with a prefix and the trademark at issue because - among other factors - the relevant prefix did nothing but reinforcing the connection in the public mind between the trademark and the Complainant, and therefore increased the risk of confusion).
The Panel, therefore, finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any legitimate right or interest in the Disputed Domain Names. Based on the Complainant’s uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Names are used to provide links to websites for services in what appears to be a “click-through” site.
The Disputed Domain Names are indeed used for the purpose of listing sponsored advertising links pointing to third party commercial websites which appear to be competing with the ones of the Complainant, whereby some of these links expressly refer to the name and Trademarks of the Complainant.
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademarks in any manner, and specifically not in the Disputed Domain Names, and that the Respondent is not commonly known by the Disputed Domain Names.
On this basis, the Panels finds that the Complainant has made a prima facie showing that the Respondent has no right or legitimate interest in the Disputed Domain Names and that the Respondent has not shown any right or legitimate interest in the Disputed Domain Names. The Complainant has consequently satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Based on the uncontradicted evidence filed by the Complainant, the Panel is prepared to find that the Respondent registered the Disputed Domain Names and uses them for the purposes of monetary gain by providing links to sites which are unrelated to the ones of the Complainant. By trading on the goodwill of the Complainant’s Trademarks, the Respondent has thus disrupted the business of the Complainant and diverted Internet traffic intended to the Complainant’s websites. Such use of the Disputed Domain Names can only be explained by the intent of the Respondent to attract Internet traffic by capitalizing on the Complainant’s Trademarks. This type of use of the Disputed Domain Names constitutes sufficient evidence of the bad faith of the Respondent under paragraph 4(b)(iv) of the Policy. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 and Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124.
It has also been shown by the Complainant that the Respondent has engaged in a pattern of conduct in registering domain names which are confusingly similar to third party trademarks which constitutes another confirmation of the bad faith of the Respondent, as evidenced by the numerous UDRP decisions which have been rendered against the Respondent. See, lastly, Myxer Inc. v. Marketing Total S.A., Domain Drop S.A., Keyword Marketing, Inc., WIPO Case No. D2008-0169; see also Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236, General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834.
Finally, by capitalizing on the misspelling by Internet users seeking Complainant’s websites, Respondent is engaged in the practice of “typosquatting” that has been consistently deemed bad faith by past Panels. See Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, referring to National Association of Professional Baseball Leagues, Inc. v. Zuccarini, WIPO Case No. D2002-1011 (“Typosquatting is inherently parasitic and of itself evidence of bad faith.”); General Electric Co. v. Cvieli, WIPO Case No. D2000-0377 (“[T]he practice of ‘typosquatting’ constitutes registration and use in bad faith.”).
For all these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) 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 names <ahachanningbete.com> and <channin-bete.com> be transferred to the Complainant.
Jacques de Werra
Dated: April 1, 2008