World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Touraine, Inc. d/ba Naughty America v. Texas International Property Associates

Case No. D2010-1502

1. The Parties

Complainant is La Touraine, Inc.d/ba Naughty America of San Diego, California, United States of America, represented by Point Loma Law, United States of America.

Respondent is Texas International Property Associates of Dallas, Texas, United States of America.

2. The Domain Names and Registrar

The Disputed Domain Names <naughtlyamerica.com>, <naughtvamerica.com>, <naughtyamericia.com>, <naughtyamorica.com> are registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010. On September 8, 2010, the Center transmitted by email a request for registrar verification in connection with the Disputed Domain Names. On September 10, 2010 Compana LLC. transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on October 22, 2010.

The Center appointed Kevin C. Trock as the sole panelist in this matter on October 29, 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.

4. Factual Background

On September 12, 2003, Complainant registered the domain name <naughtyamerica.com>.

Complainant owns the following trademark registrations on the Principal Register at the United States Patent and Trademark Office (“USPTO”):

- NAUGHTY AMERICA (Reg. No. 2,958,444, registered May 31, 2005), transferred to Complainant on November 11, 2005, for services in Class 41;

- NAUGHTY AMERICA (Reg. No. 3,116,202, registered July 18, 2006), for services in Class 41;

- NAUGHTY AMERICA (Reg. No. 3,119,341, registered July 25, 2006), for goods in Class 9;

- NAUGHTY AMERICA (Reg. No. 3,144,310, registered September 19, 2006), for goods in Class 25;

- NAUGHTY AMERICA (Reg. No. 3,755,195, registered March 2, 2010), for services in Class 35.

The Disputed Domain Names were registered on the following dates: <naughtyamorica.com> on December 27, 2004, <naughtyamericia.com> on December 27, 2005, <naughtvamerica.com> on July 6, 2005, and <naughtlyamerica.com> on May 2, 2005.

The NAUGHTY AMERICA mark was first registered with the USPTO on May 31, 2005 by Complainant’s predecessor-in-interest. Two (2) of the Disputed Domain Names, <naughtlyamerica.com> and <naughtyamorica.com>, were registered before the NAUGHTY AMERICA mark was first registered with the USPTO. Two (2) of the Disputed Domain Names, <naughtyamericia.com> and < naughtvamerica.com>, were registered after the NAUGHTY AMERICA mark was first registered with the USPTO.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Names are confusingly similar to the trademarks in which Complainant has rights; that Respondent has no rights or legitimate interests in the Disputed Domain Names; and that Respondent registered and is using the Disputed Domain Names in bad faith.

Complainant further contends that the Disputed Domain Names are virtually identical and confusingly similar to the Complainant’s registered trademarks; that Respondent does not provide a bona fide offering of goods or services under the Disputed Domain Names; that Respondent has never been known by any of the Disputed Domain Names; that Respondent has no connection or affiliation with Complainant; that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain; that Respondent registered the Disputed Domain Names in bad faith because it has engaged in typosquatting; that Respondent is a notorious typosquatter that has engaged in a pattern of domain name abuse; that Respondent’s use of the Disputed Domain Names constitutes disruption; and that Respondent had prior knowledge and notice of Complainant’s trademarks.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Each of the Disputed Domain Names was registered by Respondent after the Complainant registered the domain name <naughtyamerica.com>. The Disputed Domain Name <naughtyamorica.com > is misspelled by substituting the letter “e” in the word “America” with the letter “o,” resulting in the misspelled word “Amorica.” The Disputed Domain Name <naughtyamericia.com> is misspelled by adding the letter “i” into the word “America,” resulting in the misspelled word “Americia.” The Disputed Domain Name <naughtvamerica.com> is misspelled by substituting the letter “y” in the word “Naughty” with the letter “v,” resulting in the misspelled word “Naughtv.” And finally, the Disputed Domain Name <naughtlyamerica.com> is misspelled by adding the letter “l” in the word “Naughty,” resulting in the misspelled word “Naughtly.”

These minor differences in spelling are insignificant and do not preclude a finding of confusing similarity with Complainant’s registered NAUGHTY AMERICA mark. Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 “…adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of [c]omplainant”. Altering a mark by only one letter is not enough to escape a finding of similarity. Microsoft Corp. v. Domain Registration Philippines, NAF Claim No. 877979 “Such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”

The Panel concludes that the Disputed Domain Names registered by Respondent are confusingly similar to Complainant’s registered NAUGHTY AMERICA mark.

B. Rights or Legitimate Interests

The evidence before the Panel indicates that Respondent is not commonly known by any of the Disputed Domain Names and, therefore, cannot claim a right to or legitimate interest under paragraph 4(c)(ii) of the Policy.

Based on the evidence before the Panel, Respondent has no connection or affiliation with the Complainant, as Complainant has not licensed, authorized or otherwise permitted Respondent to use Complainant’s mark in a domain name or in any other manner.

Respondent has used the Disputed Domain Names on websites that provide pay-per-click landing pages, including links to third-party websites that are in direct competition with Complainant.

Respondent is capitalizing on Complainant’s goodwill in the NAUGHTY AMERICA mark by misdirecting consumers seeking Complainant’s website to competitor websites or search engines unrelated to Complainant. Use of a domain name as a portal to a competitor’s website does not constitute a bona fide offering of goods or services. See Humana, Inc. v. Henry Tsung, WIPO Case No. D2005-0221 (finding that the use of a website as a portal linking to competitors’ websites is not a bona fide offering of goods or services); Humana, Inc. v. Domain Deluxe, WIPO Case No. D2005-0231. Respondent stands to profit as a result of this misdirection.

Accordingly, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain.

The Panel concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

The Panel finds that Respondent is intentionally attempting to attract users to its website by creating a likelihood of confusion with Complainant’s registered mark. The Disputed Domain Names misdirect Internet users who misspell and/or mistype Complainant’s NAUGHTY AMERICA mark to websites accessed by the Disputed Domain Names. Respondent has engaged in typosquatting which creates a confusingly similar domain name to Complainant’s registered NAUGHTY AMERICA mark. See, La Touraine, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, WIPO Case No. D2010-1118 “Typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who make those typographical errors.”; see, also, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 “This conduct, commonly referred to as ‘typo squatting,’ creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy.”.

By providing links to third-party websites, Respondent has registered and is using the Disputed Domain Names in bad faith by attempting to attract users to its website by creating a likelihood of confusion with Complainant’s mark. See Eastman Chemical Company v. Manila Industries, Inc., NAF Claim No. 450806; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Claim No. 444468. See also, AltaVista Co. v. Saeid Yomtobian, WIPO Case No. D2000-0937 “The use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark.”.

In the present case, the Panel is satisfied that Respondent was aware of Complainant and Complainant’s activities when it registered the Disputed Domain Names. The fact that two of the Disputed Domain Names were registered before the NAUGHTY AMERICA mark does not preclude a finding of bad faith against Respondent in this case since Complainant had already registered the domain name <naughtyamerica.com> at the time the Disputed Domain Names were registered by Respondent.

The Panel concludes that the Respondent has registered and is using the Disputed Domain Names in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <naughtlyamerica.com>, <naughtvamerica.com>, <naughtyamericia.com>, <naughtyamorica.com> be transferred to the Complainant.

Kevin C. Trock
Sole Panelist
Dated: November 16, 2010

 

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