WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wagamama Limited v. Transure Enterprise Ltd.
Case No. D2008-1200
1 The Parties
The Complainant is Wagamama Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Transure Enterprise Ltd., Mill, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <waggamama.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2008. On August 7, 2008, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 9, 2008, Above.com, Inc. 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 August 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 2, 2008.
The Center appointed Jane Lambert as the sole panelist in this matter on September 16, 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 operates a popular chain of noodle restaurants in the United Kingdom of Great Britain and Northern Ireland (“UK”) and elsewhere under the WAGAMAMA brand. It served 6.4 million meals in 2006/2007 in the UK, having spent £1.2 million on marketing and promotion. It has protected its brand by registering WAGAMAMA as a trademark for several classes of goods and services in the UK, European Community and many other countries.
Very little is known of the Respondent other than that it appears to be a private company based in the British Virgin Islands. It has parked the disputed domain name with Sedo GmbH (“Sedo”) which claims to be “the world's only global domain marketplace.” Parking in this context means using a domain name as the URL for a web page that consists mainly of pay-per-click advertising. A pay-per-click advertisement contains a short description of the advertiser's product or service together with a link to his or her website. Whenever an Internet user clicks the link, the advertiser pays a small fee to the parking space owner (in this case Sedo), which in turn passes on a portion of that fee to the domain name parker. As Sedo explains on its website:
“Domain Parking is a simple way to earn money from your domains' natural traffic. If you have registered domain names, but they are not currently being used, then domain parking is a great way to put those domains to work earning you revenue. You can make money without even lifting a finger! The idle domain is used to display relevant advertisements - every time a consumer clicks on one of the advertisements you earn money.”
(See “What is Domain Parking” “Earn Money while you sleep!” on the Sedo website at “http://www.sedo.com/services/tour_parking.php?tracked=&partnerid=&language=us” )
The Complaint annexes a screen shot of the web page at “http://www.waggamama.com” which advertises treatment for eating disorders, various restaurant guides and a Mexican and an Italian restaurant. A statement that this domain may be for sale by its owner appears just below <waggamama.com>. That statement is repeated in the bottom right hand corner under the words “BUY THIS DOMAIN” together with a link promising more details near the Sedo logo.
5. Parties' Contentions
The Complainant seeks the transfer of the disputed domain name on the grounds that the disputed domain name is confusingly similar to one or more trademarks in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
In support of its contention that the disputed domain name is confusingly similar to one or more trademarks in which it has rights, the Complainant annexes a 42-page schedule of registrations of the WAGAMAMA mark for various goods and services around the world. In each case the Complainant appears to be the registered proprietor. The Complainant points out that the disputed domain name differs from the registered mark by the addition of a single letter “g”.
As for its contention that the Respondent has no rights or legitimate interests in the domain name, the Complainant states that it has never licensed, permitted or authorized the Respondent to use its mark. It observes that the Respondent's name does not include the disputed domain name. It submits that the obvious reason for registering a misspelling of the Complainant's name was to attract stray traffic to a parking site in the expectation of earning some pay-per-click revenue.
The Complainant argues that the registration and use of such a domain name for such use and the marketing of the domain name manifest bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Respondent's application to register the disputed domain name incorporated the Policy by reference. Paragraph 4(a) of the Policy provides:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires a complainant to have “rights” in a trademark or service mark and the disputed domain name to be identical or confusingly similar to such mark.
There can be no better “right” in a trade or service mark than that of registered proprietor. The Complainant is the registered proprietor of the word mark WAGAMAMA which is registered in the United Kingdom of Great Britain and Northern Ireland for various goods and services in classes 29, 30, 31, 32, 33 and 42 from June 25, 1992 under registration number 1504919. Accordingly the first tier of this requirement is satisfied.
As to the second tier, the disputed domain name differs from the registered mark by a single letter. Clearly, it is similar to the mark. It appears to be a misspelling of a mark that is not commonplace in the English language. More importantly, it is also a typing error that is likely to be made occasionally by Internet users searching for the Complainant's website.
The Panel finds that the first element is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances in which a respondent can show that he or she has a right or legitimate interest in the disputed domain name. On the available record, and taking into account the Complainant's prima facie case under the Policy, as set out above in section 5, none of them applies to this case. While those circumstances in paragraph 4(c) are not exhaustive, there must be at least some evidence of a right or legitimate interest in the materials before the panelist if a respondent is to succeed on this point. In this case there is none.
Accordingly, the Panel finds that the second element is met.
C. Registered and Used in Bad Faith
Paragraph 4 (b) provides:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or […]
(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 screen shot of the web page at “www.waggamama.com” which is annexed to the Complaint states that the domain may be for sale by its owner and the invitation “BUY THIS DOMAIN” are circumstances indicating that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. In the Panel's view, based on the evidence of record, on balance, that alone constitutes evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(b).
The Complainant had submitted that it was entitled to succeed under paragraph 4(b)(iv) on the ground that the purpose of domain parking is to earn money from the domain's “natural traffic” or, as Sedo put it,
“The idle domain is used to display relevant advertisements - every time a consumer clicks on one of the advertisements you earn money.”
There is certainly sufficient evidence to infer that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant's mark.
There is a clear likelihood of confusion between the disputed domain name and the Complainant's mark, and the Respondent is evidently profiting from that. Whether or not on arrival at the pay-per-click page an Internet user were to be disabused of their initial confusion is irrelevant, as the Respondent's objective has been met (See e.g., PNY Technologies Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0544).
Accordingly the Panel finds that the third element is met having found that there is evidence of registration and use in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(iv).
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, <waggamama.com> be transferred to the Complainant.
Date: September 30, 2008