WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION[>
Idearc Media Corp. v. Moniker Privacy Services / Mustafa Yakin
Case No. D2008-0143
1. The Parties
The Complainant is Idearc Media Corp., of Dallas/Fort Worth Airport, Texas, United States of America, represented by Hitchcock Evert LLP, United States of America.
The Respondents are Moniker Privacy Services, Pompano Beach, Florida, United States of America / Mustafa Yakin, Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed Domain Name <swithcboard.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2008. On January 31, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 4, 2008, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 8, 2008. The Center verified that the Complaint together with the amended 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 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 11, 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, a Delaware corporation based in Texas, describes itself as a media company that delivers advertising in print, online, and wireless media. In October 2007, the Complainant acquired the domain name <switchboard.com> and the associated website at “www.switchboard.com” (the “Complainant’s website”) from InfoSpace, Inc. InfoSpace.Inc and its predecessors, Switchboard, Inc. and Banyan Systems, Inc., had operated an online directory service at that address using the SWITCHBOARD trademark since 1996. The Complainant now operates the website and reports more than five million unique visitors monthly.
The Complainant holds the following trademark registrations in the United States of America:
U.S. Reg. No.
First Use in Commerce
SWITCHBOARD (service mark for providing online information about individuals and businesses and their addresses)
November 11, 1997
January 17, 1996
SWITCHBOARD (service mark for online search directory, advertising, maps, and website development)
April 24, 2001
January 17, 1996
The online database operated by the United States Patent and Trademark Office (USPTO) shows that the registrations for both marks were assigned to the Complainant, with the assignments recorded December 3, 2007.
According to the Registrar’s WHOIS database, the Domain Name was registered on March 5, 2000. The registrant used the Registrar’s domain privacy service, which meant that the registrant was listed as the Respondent: Moniker Privacy Services until the Center requested verification of the same from the Registrar after the Complaint was filed. At that time, the WHOIS database entry was revised to show the registrant as the Respondent: Mustafa Yakin of Istanbul, Turkey, as the Registrar reported in responding to the Center’s request for verification.
The Domain Name resolves to an advertising directory website (the “Respondent’s website”) headed “Find Something Interesting”. It features links to third-party advertisers under several categories: “White Pages”, “Yellow Pages”, “Find a Person”, “Find a Business”, “Search Phone Numbers”, “Search People”, “Real Estate Appraisers”, “Search by Phone”, and “Find People”. Users who enter a search term are similarly presented with pages of third-party advertising links superficially relevant to the search term. Selecting a category, such as “White Pages”, results in a display of advertising links for services that compete directly with those of the Complainant, such as “www.peoplelookup.com”, “www.dexknows.com”, “www.ussearch.com”, “www.whitepages.com”, and “www.usphones.com”.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to its SWITCHBOARD marks, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that this is a case of “typo-piracy” in that the Domain Name is a deliberately misspelled version of the Complainant’s SWITCHBOARD trademark, designed to bring Internet users who are careless typists to the Respondent’s advertising website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the Domain Name 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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered SWITCHBOARD trademark. The Domain Name differs only in transposing two letters of the mark (“hc” rather than “ch”), forming a string of characters that is not a dictionary word. The Domain Name is visually nearly identical to the Complainant’s mark, and the Panel finds that it is confusingly similar to the mark for purposes of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The Panel finds no evidence that the Respondent: Moniker Privacy Services (or the Registrar itself, if Moniker Privacy Services is merely a trade name for the Registrar’s domain privacy service) ever owned or controlled the Domain Name. As described on the Registrar’s website, registration in the name of its privacy service leaves the beneficial owner contractually in control of a domain name. Such registration merely serves to cloak the name and address of the beneficial owner until such time as a legal claim or Policy complaint is asserted. Once that happened in this instance, the Registrar changed the name of the registrant in the publicly available WHOIS to that of the Respondent: Mustafa Yakin. Thus, there is no need for the Panel to inquire into the rights or legitimate interests of the Respondent Moniker Privacy Services, and the Respondent Moniker Privacy Services has not asserted that it has any rights or legitimate interests in the Domain Name.
The Respondent: Mustafa Yakin has also not asserted any rights or legitimate interests in the Domain Name. The Domain Name is used for commercial advertising, and there is no evidence that appears in the record, or in a perusal of the Respondent’s website, indicating that the Respondent himself is commonly known by the name <swithcboard.com> or that he offers goods or services associated with this name. The Domain Name is not, so far as the Panel can ascertain, a trade name, dictionary word, or descriptive phrase.
The Panel infers, from the absence of a Response or any self-evident interest in the Domain Name, that the Respondent has no rights or legitimate interests in the Domain Name for the purposes of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The uncontested evidence in this proceeding indicates that the Complainant’s SWITCHBOARD mark has been used since January 1996, more than four years before the Domain Name was registered, for a website offering online personal and business directory services. The Complainant’s website is known to millions of users. The Respondent’s website is used largely to advertise competing online directory services offered by third parties, presumably generating pay-per-click advertising revenues.
It is more likely than not, therefore, that the Domain Name, an otherwise nonsensical misspelling of the Complainant’s mark, was registered and used precisely to divert careless typists seeking the Complainant’s website, a practice sometimes termed “typosquatting”. Typosquatting has repeatedly been condemned as indicative of bad faith in UDRP decisions. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444, and cases cited therein. The Respondent has not come forward to rebut the plausible inference of intentional typosquatting in the current proceeding.
Another UDRP panel found in 2007 that the Respondent Mustafa Yakin, at the same postal address, engaged in similar conduct in bad faith. In that case, the panel concluded that a misspelled trademark was used as a domain name, <homedepo.com>, targeting the HOME DEPOT trademark, to divert Internet users to a website displaying third-party advertising links. See Homer TLC, Inc. v. Mustafa Yakin, NAF Claim No. FA989667 and SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016. This conduct supports the conclusion in this case that the Respondent similarly chose the Domain Name to take advantage of a well-established mark for commercial gain and in bad faith under the Policy, paragraph 4(a)(iii).
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, <swithcboard.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: March 25, 2008