WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
REPAIRCLINIC.COM, INC. v. Spoofy, Inc.
Case No. D2011-0167
1. The Parties
Complainant is RepairClinic.com, Inc. of Canton, Michigan, United States of America, represented by Bodman LLP, United States of America.
Respondent is Spoofy, Inc., of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <repairclinc.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2011. On January 31, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 31, 2011, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2011.
The Center appointed Jeffrey H. Kaufman as the sole panelist in this matter on March 16, 2011. 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
According to the WhoIs record, the domain name registration record was created on February 5, 2003.
Complainant is the owner of the following United States (“U.S.”) federal trademark registrations on the Principal Register: REPAIRCLINIC.COM, Reg. No. 2,696,046, filed on March 17, 1999, registered on March 11, 2003, with a claimed first use in commerce date of March 31, 1999, for providing information and advice in the field of home appliance maintenance and repair via a global computer network; and REPAIRCLINIC.COM, Reg. No. 2,678,622, filed on March 17, 1999, registered on January 21, 2003, and with a claimed first use in commerce date of March 31, 1999, for on-line distributorships in the field of home appliance replacement parts.
On November 11, 2010, Complainant’s counsel sent a letter to Respondent by email to the email address in the WhoIs record, explaining its rights and seeking voluntary transfer of the domain name to Complainant.
5. Parties’ Contentions
Complainant contends that:
(a) The disputed domain name is nearly identical to Complainant’s mark, REPAIRCLINIC.COM, which is the subject of two U.S. federal trademark registrations, distinctive of Complainant’s services.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name because:
“there is no indication that the Respondent has done business under a trade name that includes the word ‘repairclinc,’ and the Respondent has not acquired any trademark or service mark rights to REPAIRCLINC.COM”; and
there “is also no indication that the Respondent’s use of the domain name <repairclinc.com> was or is in connection with a bona fide offering of goods or services: in fact, the domain name <repairclinc.com> accesses a website that lists sponsored links to appliance repair businesses that compete with the Complainant.”
(c) The disputed domain name was registered and is being used in bad faith because:
The domain name <repairclinc.com>“accesses a website that lists sponsored links to the Complainant’s competitors,
“indicating that “Respondent’s intent with respect to the domain name <repairclinc.com> is to redirect the Complainant’s potential customers (who mistakenly omit the last ‘i’ when typing the Complainant’s domain name of ‘repairclinic.com’ into a web browser) to the Respondent’s website ... (a practice commonly known as typosquatting)… The practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”; and
“The Respondent’s registration and use of the contested domain name also creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website with the Complainant’s mark.”
Respondent failed to respond to Complainant’s counsel’s emailed letter, or the subsequent email.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In this case,, Respondent failed to file any reply to the Complaint. When a respondent defaults, “the Panel shall draw such inferences therefrom as it considers appropriate.” Rules paragraph 14(b); see, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to Respondent of the Complaint, including email notification to the email address identified in the WhoIs record. The Panel finds that Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint pursuant to Rules paragraph 14(a). However, in order to prevail, Complainant must prove each of the three elements required by Policy paragraph 4(a).
A. Identical or Confusingly Similar
In order to prevail on this element, Complainant must show that it has trademark rights that predate the registration of the domain name, and that the domain name is confusingly similar to Complainant’s mark.
Complainant asserts trademark rights to REPAIRCLINIC.COM and submitted copies of two U.S. federal registrations, both filed in 1999 and issued in 2003. The record contains no evidence showing that that maintenance documents had been timely filed for the two trademark registrations. However, in light of the public availability of trademark status information on the U.S. Patent and Trademark Office’s website, the Panel exercised its discretion and independently confirmed that required documents were timely filed and accepted by the U.S. Patent and Trademark Office at “www.uspto.gov”.
Complainant also did not provide evidence showing current use of its mark in commerce. However, noting that Complainant’s URL corresponds to its mark as stated within the Complaint, the Panel independently visited the website at http://www.repairclinic.com .
Furthermore, pursuant to 15 U.S.C. § 1115, a U.S. federal trademark registration on the Principal Register constitutes prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration.
In view of the above, and Respondent’s default, the Panel finds that Complainant has established trademark rights to REPAIRCLINIC.COM (and notes that Complainant’s trademark rights date back to 1999, a date earlier than the domain name registration date of 2003). Further, the Panel finds that the deletion of one letter in the trademark as a domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
UDRP, paragraph 4(c) provides three circumstances, among others, that may constitute evidence of legitimate interests in a domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As the Complainant has met its burden of presenting a prima facie case that Respondent lacks rights and legitimate interests and in the absence of a Response, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. See, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
C. Registered and Used in Bad Faith
UDRP paragraph 4(b)(iv) provides that the following constitutes evidence of registration and use in bad faith:
“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.”
In this case, the domain name is <repairclinc.com>, is a misspelling of Complainant’s mark, REPAIRCLINIC.COM. “Repairclinc” or “repair clinc” has no independent dictionary meaning and has apparently been used to host a pay-per-click site with links to the Complainant’s competitors. Thus, the Panel finds that the disputed domain name was registered and used in bad faith pursuant to UDRP paragraph 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 <repairclinc.com> be transferred to Complainant.
Jeffrey H. Kaufman
Dated: March 29, 2011