The Complainant is Diglloyd Inc. of Portola Valley, California, United States of America, represented by Fredrikson & Byron, P.A., of Minneapolis, United States of America.
The Respondent is Rakshita Mercantile Private Limited of Mumbai, Maharashtra, India.
The disputed Domain Name <digilloyd.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. “Domain Admin”, care of PrivacyProtect.org, with an address in Moergestel, Netherlands, was named as the Respondent. The registrar for both the disputed Domain Name and for PrivacyProtect.org is Directi Internet Solutions Pvt. Ltd. On May 10, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On May 14, and May 19, 2010, Directi Internet Solutions Pvt. Ltd.d/b/a PublicDomainRegistry.com 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 May 19, 2010 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 amendment to the Complaint on May 21, 2010 (together with the Complaint, the “Amended Complaint”), naming Rakshita Mercantile Private Limited as the Respondent. The Center verified that the Amended 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 Amended Complaint, and the proceedings commenced on May 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2010.
The Center appointed Isabel Davies as the sole panelist in this matter on June 23, 2010. 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.
Unless otherwise stated, the following information is derived from the Amended Complaint. The Respondent did not file a Response, and therefore did not dispute the statements of fact set out in the Complaint. Accordingly, the Panel accepts the factual background set out in the Complaint.
The Complainant states that, since December 2005, it has used the unregistered trade mark DIGLLOYD in connection with consulting, instructional seminars and web content, accessible via subscription on the Complainant's website, in the field of photography and computer use and performance and online journals, namely blogs, to market and sell its products. The Complainant has used this actual commercial use to file for a United States registered trade mark for DIGLLOYD for “instruction in the field of photography and computer use and performance; Online journals, namely blogs featuring instruction in the fields of photography and computer use and performance”. The application was filed on March 29, 2010 under application number 85000711. The Complainant operates and maintains the website “www.diglloyd.com”. The Complainant has not authorised the Respondents to use its DIGLLOYD trade mark. As at July 5, 2010, the Domain Name resolves to a website showing sponsored listings for retailers of digital photography and computing products. The links appear to be to websites of retailers offering for sale products that compete with the Complainant's products.
The Complainant makes the factual assertions set out above.
The Complainant asserts that the Complainant's DIGLLOYD mark was created by combining DIG, the first syllable of the word “digital” with the first name of the Complainant's principal, Lloyd Chambers, a widely respected photographer and computer expert. Taken in the context of digital photography, the Complainant contends that DIGLLOYD suggests the concept of “Digital Lloyd”.
The Complainant asserts that this is a case of “typosquatting”. In connection with the first UDRP element (identity / confusing similarity), citing Edmunds.com Inc v. The Registrant of <edmounds.com>, Free Domains Parking, Andrey Vasiliev, WIPO Case No. D2006-0741, the Complainant asserts that domain names featuring misspelled trade marks have previously been held to be confusingly similar to the trade marks and that it has also been held that neither omission of apostrophe, nor additional vowel, significantly affects appearance or pronunciation. The Complainant asserts that the Respondent's Domain Name differs from the Complainant's trade mark by only one letter, an additional “i” inserted after DIG, in turn this means that it differs by only one additional syllable, “dig-i-lloyd” instead of “dig-lloyd”; and because it contains the first two syllables of the word “digital”, it conveys the same meaning as the Complainant's trade mark, “Digital Lloyd”.
Citing several UDRP cases, the Complainant asserts that there is a long history of UDRP panels accepting that when a respondent's domain name differs from a complainant's trade mark by only one letter, when the domain name is a common or typical misspelling of the complainant's trade mark, and where the minor one letter difference does not significantly alter the appearance, pronunciation or meaning of the domain name from that of the complainant's trade mark, the respondent's domain name constitutes typosquatting and is consequently confusingly similar to the complainant's trade mark.
On this basis the Complainant asserts that, given that the Respondent's Domain Name contains the entirety of the Complainant's DIGLLOYD trade mark, the Respondent's addition of a single letter fails to make the Domain Name distinguishable from the Complainant's trade mark and therefore creates a virtually identical or confusingly similar mark to the Complainant's mark in appearance, pronunciation and meaning.
In connection with the second UDRP element (no rights or legitimate interests), the Complainant asserts that the Respondent is not commonly known by the “Digilloyd” name, there is no evidence of any trade mark registrations for a “Digilloyd” mark owned by the Respondent, and internet searches that the Complainant has carried out have not revealed any connection between the Respondent and “Digilloyd” other than the <digilloyd.com> Domain Name.
The Complainant asserts that because the Domain Name resolves to a website offering paid and sponsored hyperlinks to sites offering competing products to those offered by the Complainant, the Respondent is not making a legitimate, non-commercial or fair use of the <digilloyd.com> Domain Name.
In connection with the third UDRP element (bad faith), the Complainant asserts, citing numerous UDRP cases, that there is a long history of UDRP panels accepting that typosquatting is presumptive of a registration in bad faith and contesting that the Complainant had already demonstrated that the Respondent's registration of the <digilloyd.com> Domain Name was typosquatting. “It is well-settled that the practice of typosquatting, or itself, is evidence of a bad faith registration of a domain name.” (Longs Drugs Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069).
The Complainant notes that under paragraph 4(b), it is obliged to demonstrate that the Respondent has also used the <digilloyd.com> Domain Name in bad faith. The Complainant asserts that the links on the Respondent's website to digital photography products and services, when viewed in connection with the Respondent's domain name which uses the Complainant's mark in its entirety, allows the Panel to draw the inference that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, as described by paragraph 4b (iv) of the Policy. The Complainant asserts that it appears that the Respondent is attempting to take advantage of Internet Users who mistakenly misspell the Complainant's <diglloyd> domain name by adding an “i”. Citing Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587, the Complainant contends that even if such inadvertent website visitors realise their mistake, the Respondent has already succeeded in using the Complainant's DIGLLOYD trade mark to attract potential customers to the Respondent's website for commercial gain.
The Respondent did not reply to the Complainant's contentions.
The Respondents have not filed a Response. This does not mean that a decision should automatically be granted in favour of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. However, under paragraph 14(a) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of, or requirement under, the Rules, including the Respondents' failure to file a Response.
The Complainant contends that he has unregistered common law rights in the mark DIGLLOYD in respect of the products and services supplied by him and that such use has generated a reputation in the mark, such that the mark amounts to an unregistered trade mark. The Complainant has submitted evidence in the form of web pages and online product reviews, of his use of the mark in connection with digital photography and computer services. This evidence is unchallenged by the Respondents and the Panel has no reason to doubt that it is factually correct. The Complainant has also submitted evidence of his application for a registered trade mark for DIGLLOYD in the field of photography and computer use and performance and online journals, namely blogs in the field of photography and computer use and performance. It is well established under the Policy that an unregistered mark may constitute a trade mark in respect of which an action may be brought under the Policy. A complainant will be able to assert rights in an unregistered trade mark if the complainant can show that the name has become a distinctive identifier associated with the complainant or its goods and services. Factors to be taken into account in assessing this include: length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. As a result of the uncontested evidence submitted by the Complainant, primarily the Complaint's own website and online reviews of his work, the Panel accepts the Complainant's assertions as to its rights in the trade mark DIGLLOYD. Accordingly, the Panel finds that the Complainant has unregistered rights in the trade mark.
The Domain Name consists of the whole of the Complainant's trade mark with only one minor misspelling, the addition of an “i”. The “i” is relatively indistinctive in the context of the whole mark and therefore the Domain Name and the Complainant's mark appear visually similar. However, the addition of the “i” in the Domain Name adds an additional syllable. It would also appear that a lay person would pronounce the first syllable of the Complainant's mark as “Dig”, rather than “Dige”, whereas the addition of the “i” in the Domain Name means the first syllable in that is more likely to be pronounced “Dige”. As a result, the oral / aural similarity between the Domain Name and the Complainant's mark is not as strong. However, because the Complainant's mark is directly associated with digital cameras and digital media for the professional user, the first syllable of the Complainant's mark may be pronounced “Dige” in this context and therefore an element of conceptual similarity between the two marks. The Respondent has not submitted evidence to the contrary. As a result, the Panel accepts the Complainant's contentions that the Domain Name is similar to the Complainant's trade mark and constitutes typosquatting. On the basis of the uncontested evidence and UDRP cases cited by the Complainant, the Panel finds that the Domain Name is confusingly similar to the trade mark.
The burden of showing that the Respondents have no rights or legitimate interests in the Domain Name lies with the Complainant. However, it is established that this could result in the impossible task of proving a negative, requiring information that is within the knowledge of the Respondents. The Complainant is therefore required only to establish a prima facie case that the Respondents have no rights or legitimate interests in the Domain Name. If the Respondents do not submit a response, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, among others, Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.
The Panel accepts the Complainant's uncontested assertion that it has not granted the Respondents any right to use its DIGLLOYD trade mark. The Complainant submits that the DIGLLOYD trade mark and its associated brand are reasonably well-known in the relevant field, particularly to professional photographers, and provides evidence of the same. The Panel have no reason to doubt this uncontested evidence. There is no apparent purpose for the Respondent to have registered the Domain Name other than to divert potential customers of the Complainant who may misspell or mistype the Complainant's trade mark. This appears particularly so in light of the sponsored links on the website to which the Domain Name resolves, which are mainly for online retailers of products and services competing with the Complainant's products and services. The Panel therefore finds that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the Domain Name.
The Respondents have had the opportunity to attempt to refute the Complainant's prima facie case and to demonstrate such right or interest. They have not done so. The Panel infers from this that the Respondents have no such right or interest.
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any of which, if proved by a respondent to exist, will demonstrate a respondent's right or legitimate interest in a disputed domain name. These may be summarised as: (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) that the respondent has been commonly known by the domain name; and (iii) that the respondent is making legitimate non-commercial or fair use of the domain name.
The Panel has not seen any evidence that any of these circumstances exist in the instant case. As at July 5, 2010, the website to which the Domain Name resolves features sponsored links to products that compete with the Complainant's products. The Panel therefore finds that the Domain Name has not been and is not being used by the Respondent in connection with a bona fide offering of goods or services. There is no evidence to suggest that the Respondent is commonly known by the Domain Name. It is to be assumed that, as is the usual practice, the Respondent receives a fee whenever an Internet user clicks on one of the sponsored links on the “www.digilloyd.com” website. From this the Panel has inferred that the registration by the Respondent of the Domain Name can only have been done with the intention of misleadingly diverting consumers who have mistakenly misspelt the Complainant's domain name when trying to access the Complainant's website, for the Respondent's own commercial gain. Such gain would be made, even if Internet users subsequently realise their mistake.
Accordingly, the Panel is satisfied that the Respondent would be unable to demonstrate rights or legitimate interests in the Domain Name under the circumstances set out at paragraph 4(c) of the Policy.
Under paragraph 4(b) of the Policy, the Complainant must show that the Respondent has registered the Domain Name in bad faith. In the past, several panels have held that evidence of typosquatting produces a presumption of bad faith conduct. The Panel notes the Complainant's citation of Longs Drugs Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (“It is well-settled that the practice of typosquatting, of itself, is evidence of a bad faith registration of a domain name.”). Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, any of which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. These include, at paragraph 4(b)(iv), that by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark.
Given the high degree of similarity between the Domain Name and the Complainant's DIGLLOYD trade mark, the fact that “digilloyd” is an easy misspelling of DIGLLOYD, the fact that the Domain Name resolves to a website showing sponsored links to retailers offering products and services that compete with the Complainant's products and services, and that, as previous UDRP panels have consistently held, typosquatting is to be generally regarded as being in bad faith, the Panel finds that the Domain Name was registered and has been used in bad faith. The Respondent appears to be attempting to pass the Domain Name off as having a connection with the Complainant, by misrepresenting that the goods and services offered on the website hosted on the Domain Name are connected with the Complainant, in an attempt to take advantage of the Complainant's goodwill and reputation.
The Respondents made no Response to the Complaint, from which the Panel infers that they are unable to refer to any legitimate, non-bad-faith current use of the Domain Name. In the circumstances, the Panel considers that it is impossible to conceive a good faith use of the Domain Name. The Panel therefore finds that the Domain Name is being used in bad faith.
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, <digilloyd.com> be transferred to the Complainant.
Dated: July 7, 2010