The Complainant is Network Solutions, LLC, of Herndon, Virgina, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.
The Respondents are K. A., and Khalid Ali, both of Toronto, Ontario, Canada.
The disputed domain names <mnstermarketplace.com>, <monstermaretplace.com>, <monstermarketplaces.com>, <monstrmarketplace.com> and <montrmarketplace.com> are registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2008. On November 12, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain names. On November 12, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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” or “UDRP”), 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 November 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2008. Two email communications were received by the Center from the Respondent Khalid Ali on November 18, 2008 and November 21, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 22, 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.
The Respondents, K. A. and Khalid Ali, are believed to be the same and will generally be referred to hereafter as the Respondent.
The Complainant operates an online selling operation in the form of a shopping search engine and comparison website under the MONSTERMARKETPLACE trademark and the <monstermarketplace.com> domain name. The Complainant owns MONSTERMARKETPLACE trademarks or applications including:
United States Registration No. 3361203
CTM Reg. No. 005600408
Australian Reg. No. 1155761
Canadian App. No. 1330470
Mexican App. Nos. 827710 and 827711
New Zealand App. No. 761684.
The Complainant's domain name <monstermarketplace.com> was originally registered on May 15, 2003 by the Complainant's predecessor in interest and was transferred to the Complainant on March 28, 2006.
The Respondent operates the online selling operation or shopping search engine known as GrabCart. The disputed domain names appear to have been registered on November 14, 2005.
The Complainant submits documentary evidence of its ownership of the MONSTERMARKETPLACE trademarks listed above.
The Complainant contends that its trademark is well known in the United States and worldwide, and submits an affidavit to that effect.
On December 14, 2006, the Complainant wrote to the Respondent demanding that he cease and desist the use of three of the disputed domain names. No reply was received.
On September 23, 2008 a second cease and desist letter was sent to the Respondent, who replied confirming the affiliation between the Respondent and GrabCart, and offering to sell the initial three disputed domain names to the Complainant.
The Complainant contends that the disputed domain names are typographically erroneous variants of the trademark MONSTERMARKETPLACE, thereby constituting confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has never been authorized by the Complainant to use the MONSTERMARKETPLACE trademark in any way. He has no legitimate interests in the disputed domain names, they do not reflect the Respondents' common name, and they redirect to a competing website.
The Complaint further contends that the disputed domain names have been registered and used in bad faith. The Respondent has asked for a transfer price higher than the direct cost of registration. His operation, by diverting traffic, is disruptive of the Complainant's business. It is inconceivable that the Respondent was not aware of Complainant's trademark when he registered and used the disputed domain names. He has, by misspelling the Complainant's trademark, i.e. by typosquatting, intentionally attempted to attract Internet users to his website for commercial gain. Visitors are likely to be confused into thinking that the Respondent's website is endorsed by the Complainant, therefore the Respondent has disrupted the Complainant's business by diverting viewers.
The Complainant has submitted a number of citations of previous UDRP decisions for consideration.
The remedy requested by the Complainant is the transfer to it of the disputed domain names.
The Respondent's reply was informal, comprising two emails to the Center with attached correspondence with the Complainant.
The Respondent has contended throughout that he is unwilling to commit the time and resources to contesting the Complaint. He wants a peaceful settlement and is willing to transfer the disputed domain names for what he considers to be his reasonable out of pocket costs in registering and holding them, namely USD 100 each, which is not negotiable. He has contacted the Complainant “instructing them on the steps they need to take to make the transfer successful”. He was not prepared to sign an undertaking not to register certain categories of domain names in the future because he considered this to be an unreasonable demand.
Paragraph 4(a) of the Policy states that the Respondent is 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.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The correspondence between the Respondent and the Center will be considered as a Response to the Complaint, and accompanying correspondence between the Respondent and the Complainant will be treated as the Respondent's evidence.
The domain names <montrmarketplace.com>, <mnstermarketplace.com>, <monstermaretplace.com>, <monstermarketplaces.com> and <monstrmarketplace.com> will be referred to as “the disputed domain names”.
First it is necessary to establish that the Complainant has rights in the trademark MONSTERMARKETPLACE. The Complainant has established to the satisfaction of the Panel by means of documentary evidence that it owns the said trademark.
The Complainant is required to establish in respect of each disputed domain name that it is confusingly similar to its trademark.
Each of the disputed domain names begins with an element that, in any reasonable attempt to pronounce it, is similar to, or is, “monster”. The remainder of the domain name either is closely similar to, or is, “marketplace”. In this second element of the domain names, one of them has a letter “k” missing, representing a plausible typographical error, and another has a plural “s” on the end, representing a possible misunderstanding or typographical error. The Panel finds confusing similarity with the Complainant's trademark to be proven in respect of the five disputed domain names in the terms of paragraph 4(a)(i) of the Policy.
The Complainant must establish that the Respondent has no rights or legitimate interests in the disputed domain names. In setting out a prima facie case to this effect, the Complainant states that it has not in any way authorised the Respondent to use the Complainant's trademark.
The Respondent has conceded, in effect, that he uses the disputed domain names to gather viewers who are then channeled into his online selling operation, “GrabCart”. The Respondent's selling operation is in the nature of a market place and, within the meaning of the Policy, is in competition with the Complainant. Thus in the terms of paragraph 4(c) of the Policy the Respondent's operation is not bona fide, in so far as it attracts viewers by means of domain names confusingly similar to the Complainant's trademark; there is no claim by the Respondent that he has been commonly known by the disputed domain names; and the use of them is commercial, and by incorporation of the Complainant's trademark, is not fair. The Respondent has not established rights or legitimate interests in the disputed domain names either in the terms of paragraph 4(c) of the Policy or otherwise, and the Panel finds for the Complainant.
The Complainant is required to prove that the disputed domain names were registered and are used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, 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
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The Complainant has invoked paragraph 4(b)(i) of the Policy on the basis that at various stages of negotiations with the Respondent, the Complainant talked in terms of a purchase offer of USD 50 per disputed domain name (later withdrawn) and the Respondent wanted a refund of costs that he said were USD 100 per disputed domain name, which the Complainant considered to be in excess of out-of-pocket costs directly related to their registration. The Panel considers it improbable, on the facts, that the Respondent's primary intention in registering the disputed domain names was to sell them to the Complainant or a competitor for a profit, and more probable that he intended to attract viewers to his “GrabCart” operation. The Internet technique of typosquatting is well recognised, whereby a domain name is created to match a predictable misspelling or typographical error in a trademark, in order to capture Internet users and direct them to an entirely different website. Paragraph 4(b)(iv) of the Policy is therefore more relevant, in accordance with which the Panel finds that the disputed domain names have been used to attract viewers to the Respondent's commercial operation, by intentional confusion with the Complainant's trademark, in circumstances amounting to bad faith registration and use.
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 <montrmarketplace.com>, <mnstermarketplace.com>, <monstermaretplace.com>, <monstermarketplaces.com> and <monstrmarketplace.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: January 5, 2009