WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Interoute Communications Limited v. Gioacchino Zerbo
Case No. D2010-1345
1. The Parties
The Complainant is Interoute Communications Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Bird & Bird., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Gioacchino Zerbo of Senna Comasco, Italy.
2. The Domain Name and Registrar
The disputed domain name <interroute.com> (the “Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2010. On August 10, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On August 11, 2010, Fabulous.com transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 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 amended Complaint on August 12, 2010.
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 Complaint, and the proceedings commenced on August 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on September 15, 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.
In the absence of any Response to the Complaint, the Panel has checked to ensure that the Complaint has been properly notified to the Respondent in accordance with paragraph 2 of the Rules. The Panel is satisfied that that has been done (although the hard copy of the amended Complaint could not be delivered to the Respondent, notice of the Complaint was successfully transmitted to the Respondent’s email address provided in the WhoIs particulars for the Domain Name).
4. Factual Background
The Complainant is a company incorporated in the United Kingdom. It is a provider of telecommunications network services in the European Union and elsewhere. Since 1999, it has invested heavily in advertising and marketing its services under its INTEROUTE trademark (referred to below).
The Complainant operates its principal website at “www.interoute.com”. The Complainant has marketed its services through that website since June 1999.
The Complainant is the proprietor of a Community Trademark registration of the word mark INTEROUTE, registered with effect from August 21, 1998 in respect of a variety of goods and services in international classes 9, 38, and 42. The Complainant says that “Interoute” is not a dictionary word, but one coined by it.
According to the Complaint, the Complainant is one of the world’s largest providers of telecommunication services, and the INTEROUTE mark is well known throughout the world. In 2003, the Italian Ministry of Defense chose the Complainant as its network infrastructure provider, and the Complainant says that it has been particularly active in Italy.
The Respondent and the Domain Name
The Domain Name was created on May 12, 2003. The Domain Name resolves to a website (“the Respondent’s website”) which operates as a search engine and contains numerous links to third party websites.
Until at least July 27, 2009, the registrant of the Domain Name was Michele Dinoia, of Pineto, Italy. At some time between that date and August 12, 2010 (the Complainant says that it was on August 11, 2010), the Domain Name was transferred from Michele Dinoia to the Respondent. The WhoIs particulars for the Domain Name as at August 12, 2010 do show that there was a modification of the record for the Domain Name on August 11, 2010.
The Complainant produced screenshots taken from the Respondent’s website, apparently at some time in 2010 (actual dates were not provided by the Complainant). One such screenshot showed the Respondent’s website prominently headed “Welcome to Interroute.com”. Below that, the text read: “For resources and information on Next Gen Data Center and Smarter It Infrastructure”. There were numerous click-on links grouped under a heading “Related Searches”. All of them seem to have been concerned in some way or another with information technology, computer networks, etc.
According to the Complainant, many of the third party websites accessible from the Respondent’s website are operated by direct competitors of the Complainant, such as Control Circle, Cisco, and Dell. The Complainant produced one legible screenshot from the Respondent’s website (date unclear) showing one such link, to Control Circle, under a click-on heading “Managed Services”.
In accordance with normal practice, the Panel has visited the Respondent’s website. That occurred on September 16, 2010 and September 21, 2010. The Respondent’s website appeared to be generally in the same form as that depicted in the screenshot produced by the Complainant at Annex F to the Complaint, although the click-on links in the screenshot of the “Smarter It Infrastructure “ subpage (which the Complainant had produced) appeared to have been removed. Following a link called “Infrastructure”, the Panel was taken to a page containing sponsored links to various third party websites, including at least one which was said to be concerned with “… installation networks, data, phone …”, among other things.
Previous WIPO and NAF Panel Decisions in which Michele Dinoia was the Respondent
The Complainant listed four decisions under the Policy in which Michele Dinoia had been an unsuccessful respondent. Those cases were Phillip Morris USA, Inc v. Michele Dinoia SZK.com, WIPO Case No. D2005-0171, Bank of America Corporation v. Michele Dinoia, NAF Claim No. 390945, AmeriServ Financial Inc v. Mickhele Dinoia d/b/a SZK.com, NAF Claim No. 661368, and Lastar Inc v. Michele Dinoia c/o SZK.com, NAF Claim No. 430793. In the Bank of America decision, Mr. Dinoia was held to have engaged in the practice of typosquatting by registering and using in bad faith the domain name <BamkofAmerica.com>.
Complainant’s Cease and Desist Letter
The Complainant’s representative sent a cease and desist letter to Mr. Dinoia on June 12, 2009, requesting that the ownership of the Domain Name be transferred to the Complainant. A deadline of 14 days was set for Mr. Dinoia to respond, but no reply was received from Mr. Dinoia or from the Respondent.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s INTEROUTE mark.
2. The Respondent has no rights or legitimate interest in respect of the Domain Name, having regard to the following matters:
(i) The Respondent is not commonly known by the Domain Name.
(ii) The Complainant has not authorized the use of its name and/or the INTEROUTE mark in the Domain Name.
(iii) The Respondent’s use of the Domain Name to provide links to providers of telecommunications services infringes the Complainant’s INTEROUTE mark.
(iv) The Complainant is not connected with, and does not endorse, the Respondent’s website. Notwithstanding that, the prominent positioning of the expression “Interroute” at the top of the home page on the Respondent’s website reinforces the misrepresentation that the Respondent’s website is connected with, authorized, or endorsed by the Complainant.
(v) The Respondent’s use of the word “Interroute” in the Domain Name is intended to misleadingly divert the Complainant’s potential customers to the Respondent’s website. The Respondent benefits commercially from hits by receiving pay-per-click fees from third party advertisers when users follow the links on the Respondent’s website. As such, the Respondent is making opportunistic use of the Complainant’s Interroute mark in order to capitalize on the associated goodwill.
(vi) It cannot be considered fair use for the purpose of paragraph 4(c)(iii) of the Policy for a website to provide links to websites of a complainant’s competitors, using a domain name that is confusingly similar to (and phonetically identical to) a complainant’s own name.
(vii) “Interoute” is an invented word devised by the Complainant, and, as such, is not one that a trader would legitimately choose unless seeking to deliberately ensnare users seeking the Complainant’s official website.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) The Respondent must have been aware of the Complainant’s reputation by dint of the publicity generated by the Complainant’s activities in Europe from and after the date of the creation of the Domain Name in 2003 (particularly in Italy).
(ii) The Respondent could not have chosen or subsequently used the word “Interroute”, itself a made up word, for any reason other than to trade on the Complainant’s name by confusing Internet users and thereby attracting them to the Respondent’s website. That is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. The Respondent’s use of the Domain Name to misleadingly attract Internet users to the Respondent’s website for the Respondent’s own financial gain (in the form of pay-per-click advertising revenue) is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
(iii) The sponsored links to third party websites operated by the Complainant’s competitors constitute a disruption of the Complainant’s business under paragraph 4(b)(iii) of the Policy.
(iv) Mr. Dinoia has been in the practice of registering numerous domain names which incorporate famous trademarks owned by third parties. In a number of such cases, the disputed domain names have been ordered to be transferred to the respective complainants, following findings of bad faith registration and use on the part of Mr. Dinoia. The Bank of America Corporation case in particular involved a clear case of typosquatting.
(v) The Domain Name was transferred to the Respondent on August 11, 2010 by Mr. Dinoia, two days after Mr. Dinoia had received a copy of the Complaint naming him as the Respondent. In light of the timing of that transfer, the Complainant believes that the Respondent and Mr. Dinoia were colluding in the matter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint. It is the registered proprietor of the Community Trademark INTEROUTE, and the Domain Name differs from that mark only to the extent that an additional “r” has been added in the Domain Name (the “.com” suffix in the Domain Name is not taken into account in the comparison). That difference is insignificant – phonetically and visually, the Domain Name is either identical or near-identical to the Complainant’s mark, and is therefore confusingly similar to that mark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is almost identical to the Complainant’s INTEROUTE mark, and the Complainant has not authorized either Mr. Dinoia or the Respondent to use its mark (or any expression confusingly similar thereto) in a domain name. There is no business or other connection between the Complainant and either Mr. Dinoia or the Respondent.
There is nothing in the evidence to suggest that the Respondent (or any business or organization operated by the Respondent) is commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy therefore does not apply.
The Complainant is a major player in the telecommunications/Information technology field. It holds a Community Trademark which has been in force since 1998, and it has had a significant presence in Italy (where both Mr. Dinoia and the Respondent appear to reside) since at least 2003. The pages from the Respondent’s website which the Complainant produced included links to websites of the Respondent’s competitors.
The foregoing combination of circumstances leaves little room for doubt that Mr. Dinoia was aware of the Complainant and its commercial activities when the relevant links were provided on the Respondent’s website in 2010. And in the absence of any Response, the Panel considers it appropriate to infer that the Respondent would have viewed the content of the Respondent’s website before he acquired the Domain Name from Mr. Dinoia, and that the Respondent also would have been aware of the Complainant and the confusing similarity between the Domain Name and the Complainant’s INTEROUTE mark.
On the face of it, this looks to be a typical case of “typosquatting”, in which the Respondent has registered the Domain Name with a view to attracting to the Respondent’s website Internet users looking for the Complainant’s website, who have mis-spelt the Complainant’s mark. The sponsored links on the Respondent’s website suggest that the intention was probably to derive increased pay-per-click revenue from the additional traffic to the Respondent’s website. That could never be a fair or legitimate use of the Domain Name, and nor could it be a use of the Domain Name in connection with any bona fide offering of goods or services. The Complainant has clearly established a prima facie case of “no right or legitimate interest”.
The Respondent has failed to answer that prima facie case, so the Complainant has sufficiently proved this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the Complainant has also proved this part of its Complaint. The Panel has come to that view for the following reasons:
1. The Complainant’s INTEROUTE mark is comprised of a made-up word. It has been registered in the European Union with effect from 1998, and it is almost indistinguishable from the Domain Name. On any view of it, the registration of the Domain Name was bound to create some confusion with the Complainant’s mark, and attract to the Respondent’s website Internet users who were looking for the Complainant’s website. The sponsored links to websites operated by some of the Complainant’s competitors make it clear that Mr. Dinoia was aware of the Complainant, and in the absence of any Response the Panel concludes that, by using the Domain Name, Mr. Dinoia intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s INTEROUTE mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such use of Domain Name is evidence of the registration and use of the Domain Name in bad faith, under paragraph 4(b)(iv) of the Policy.
2. The Respondent acquired the Domain Name from Mr. Dinoia at some time shortly before the present proceeding was filed, and the Respondent’s website, as it stood on September 16 and September 21, 2010, appeared to be almost identical to the Respondent’s website when the Domain Name had been registered to Mr. Dinoia (the text on the home page of the Respondent’s website appears not to have changed, and the home page prominently features the same picture of a man operating a small hand held computing or telephone device as was featured on the Respondent’s website when it was operated by Mr. Dinoia).
3. The Complaint clearly alleged that the Respondent and Mr. Dinoia were colluding in order to defeat the Complaint, and the Respondent has elected not to answer that allegation, or to respond to any of the other allegations in the Complaint. Having regard to the near-identity between the Domain Name and the Complainant’s mark, the continued operation of the Respondent’s website by the Respondent in substantially the same way as it had been operated by Mr. Dinoia, and the Respondent’s failure to respond to the Complaint, the Panel infers that the Respondent has either been colluding with Mr. Dinoia as alleged, or has acquired the Domain Name with the intention of using it for the same bad faith purpose (that described at paragraph 4(b)(iv) of the Policy) as appears to have motivated Mr. Dinoia. In either event, the Panel is satisfied that the Domain Name has been registered and is being used in bad faith by the Respondent.
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, <interroute.com>, be transferred to the Complainant.
Dated: October 1, 2010