WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spenco Medical Corporation v. “spencoarchsupports.net” / Private Whois Service
Case No. D2011-0595
1. The Parties
The Complainant is Spenco Medical Corporation of Waco, Texas, United States of America represented by Sidley & Austin, United States of America.
The Respondents are “spencoarchsupports.net” and Private Whois Service of Spokane, Washington, United States of America and Nassau, Bahamas, respectively.
2. The Domain Name and Registrar
The disputed domain name <spencoarchsupports.net> is registered with Internet.bs Corp.
3. Procedural History
The Complaint listing Private Whois Service as the Respondent was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2011. On April 4, 2011, the Center transmitted by email to Internet.bs Corp a request for registrar verification in connection with the disputed domain name. On April 7, 2011, Internet.bs Corp. 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 April 7, 2011 providing the registrant “spencoarchsupports.net” and contact information disclosed by Internet.bs Corp., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 12, 2011 adding “spencoarchsupports.net” as a Respondent.
The Center verified that the Complaint together with 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 April 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2011. On April 17, 2011 the Complainant received a communication by email, stated to be from J […] C. Lueck, expressing a desire to transfer the disputed domain name to the Complainant and asking the Complainant to request the transfer. On April 18, 2011, the Complainant requested a suspension of the proceedings to allow for settlement discussions. The proceedings were suspended on April 20, 2011 until May 20, 2011. On May 13, 2011, the Complainant, not having heard from the party referred to by the Complainant as the purported owner of the disputed domain name, despite numerous attempts to make contact, requested that the proceedings be reinstituted. The proceedings were reinstituted on May 16, 2011, and the new Response Due Date was May 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2011.
The Center appointed Joan Clark as the sole panelist in this matter on June 7, 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
The Complainant asserts ownership of the trademark SPENCO which it claims to have first used in the United States in 1967 on insoles, foot care and first aid products. The trademark SPENCO is the subject of numerous registrations including in Canada in 1983, in the United States in 1988, in Australia in 1979, and elsewhere for medical apparatus and various foot care products including shoe inserts, insoles and arch supports.
The disputed domain name <spencoarchsupports.net> was registered on March 26, 2010 and is scheduled to expire on March 26, 2012.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights, namely SPENCO and numerous marks containing the mark SPENCO. The Complainant states that its SPENCO trademark was first used in the United States in 1967 on insoles, foot care and first aid products and has been in continuous use since that time, adding that over 170 trademarks containing the word SPENCO are registered by the Complainant in 39 countries around the world. The Complainant has produced copies of samples of some of the certificates for registration of its trademark which include certificates of registration of the trademark as of May 24, 1979 in Australia, as of June 30, 1983 in Canada and as of December 27, 1988 in the United States, among others.
The Complainant declares that the contested domain name fully incorporates the Complainant’s SPENCO trademark and also its domain names, except for the mere addition of the generic/descriptive term “archsupports” and the top level domain designation “.net”, which is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant further declares that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent’s website is being used as a pay-per-click site and contains links to some of the Complainant’s competitors. The Complainant asserts this does not constitute a bona fide offering of goods or services. The Complainant maintains that the Respondent has no connection or affiliation with the Complainant and that the latter has not licensed, contracted with, or otherwise authorized the Respondent to use or apply for any domain name incorporating the Complainant’s trademark. The Complainant argues that the Respondent’s intention for commercial gain and to mislead and divert consumers with its use of the disputed domain name is evident.
The Complainant notes that the disputed domain name was registered on March 26, 2010, approximately 43 years after the Complainant started using its trademark SPENCO. The Complainant declares that it first became aware of the disputed domain name in late October 2010 and on November 9, 2010 sent a demand letter to the Respondent requesting transfer of the disputed domain name to the Complainant but that the Complainant did not receive a reply to its letter.
The Complainant maintains that it was founded in 1967 and is one of the largest manufacturers and wholesalers of high quality and innovative insole and foot care products and provider of advanced sports medicine and first aid products in the United States. Given the Complainant’s many years in the foot care industry, its numerous trademark registrations incorporating its SPENCO trademark and its continuous and uninterrupted use of its trademark for over 40 years, the Complainant maintains that it is not plausible that the Respondent was unaware of the SPENCO mark at the time of the registration of the disputed domain name on March 26, 2010. In fact, the Complainant asserts that the commentary appearing on the Respondent’s website makes obvious and undeniable the Respondent’s knowledge of the Complainant and the Complainant’s mark. The Complainant argues that the Respondent is attempting to attract Internet usage for commercial purposes to its site, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website or location or services on the subject site. The Complainant concludes that the disputed domain name was registered and is being used in bad faith, and requests that the administrative Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not provide a formal response to the Complainant’s contentions. It is noted, however, that an email was sent by J […] C. Lueck to the Complainant, in an earlier stage of the proceedings, stating that the Respondent wished to transfer the disputed domain name to the Complainant, and asking the Complainant to request this transfer.
Identity of the Respondent
In accordance with information obtained from the Whois Service of Internet.bs.Corp, the Respondent originally named in the Complaint was Private Whois Service. Upon receiving the usual request from the Centre for verification of the registrant, the Registrar, Internet.bs Corp., advised that the registrant, or holder of the domain name, was “spencoarchsupports.net”. According to paragraph 1 of the Rules, “Respondent means the holder of a domain name registration against which a complaint is initiated”. Accordingly, “spencoarchsupports.net” is properly named as the Respondent.
We are therefore faced with the anomalous situation wherein the party which is the registrant or holder of the disputed domain name appears to be the disputed domain name itself. Although “spencoarchsupports.net” is properly named as the Respondent, it would appear to be used as a masking or privacy service for the real or beneficial owner.
The terminology of the Policy suggests that a domain name is created and/or owned by an entity other than the domain name itself, and that in a domain name dispute it falls to be determined whether that entity has or does not have rights or legitimate interests in the domain name, and whether that entity did or did not register or use the domain name in bad faith. In order to apply the Policy in a domain name dispute, where the real or beneficial owner of the disputed domain name is not named as a respondent, the Panel should attempt to discover who the beneficial owner of the disputed domain name is. See The iFranchise Group v. Jay Bean/MDNH, Inc./Moniker Privacy Services , WIPO Case No. D2007-1438.
In this case the identity of the beneficial owner of the disputed domain name may be presumed from the communication to the Complainant from a person identified as J[…] C. Lueck, who wrote an email to the Complainant as if he were the owner of the disputed domain name. In this email the purported owner stated he wanted to transfer the disputed domain name to the Complainant, and in fact asked the Complainant to request the transfer. From this the Panel concludes, in the absence of any contrary evidence, that the said J[…] C. Lueck is the beneficial owner of the disputed domain name and his email correspondence is treated by the Panel as emanating from the Respondent for the purposes of paragraph 4 of the Policy. See Building Trade 1868 Kft. v. RegisterFly.com, WIPO Case No. D2006-0396; Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969.
The Panel considers that both Private Whois Service and “spencoarchsupports.net” should be named as the Respondents. In the remainder of this decision they will be described in the singular, as the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(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 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark SPENCO. As correctly pointed out by the Complainant, the addition of the descriptive words “arch supports“ and the gTLD suffix “.net” does not detract from the confusing similarity, as has been held in numerous UDRP decisions.
The Panel also finds, based on the evidence, that the Complainant has rights in the trademark SPENCO.
Accordingly, the first element required to be established for the Complaint to succeed has been satisfied.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. No formal response has been filed by the Respondent and therefore there has been no rebuttal of the Complainant’s assertions. In fact, by his communication to the Complainant, the purported owner of the disputed domain name made no attempt to rebut the Complainant’s assertions and instead acquiesced in a proposed transfer of the disputed domain name to the Complainant. Certainly, there is no evidence that the Respondent had been commonly known by the disputed domain name, or that it had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Use of the Respondent’s site having a domain name which is confusingly similar to the Complainant’s trademark and for a similar business and containing links to some of the Complainant’s competitors does not constitute a bona fide offering of goods or services. See America Online, Inc. v. Xianfeng Fu., WIPO Case No. D2000-1374.
Other decisions have held that the mere referral by links to other sites where goods and services are offered does not constitute a bona fide offering of such goods or services on the referring site. See La Quinta Worldwide L.L.C. v. PrivacyProtect.org/Purple Bucquet, WIPO Case. No. D2010-2088.
The second element required for the Complaint to succeed has been established.
C. Registered and Used in Bad Faith
The initial and prominent part of the disputed domain name comprises the rather unusual word SPENCO, which according to the evidence was widely used by the Complainant and the subject of many trademark registrations for over 40 years prior to the registration of the disputed domain name. As there has been no explanation for the choice of SPENCO as part of the Respondent’s disputed domain name, it is reasonable to conclude that the choice was made based upon a familiarity with the Complainant’s mark and corporate name. Knowledge of SPENCO products clearly appears from the Respondent’s website which vaunts the famous SPENCO “arch supports” and also directs visitors to the websites of the Complainant’s competitors, as well as to the Complainant’s own web site. It is reasonable to assume that this was for a financial gain, based on the usual well-known pay-per-click system. This attempt to direct Internet users to the web sites of the Complainant’s competitors would create confusion and be an indication of bad faith. In the Panel’s view, that the presumed beneficial owner of the disputed domain name has requested that it be transferred to the Complainant is an indication he, and therefore the Respondent, recognized that transfer was warranted.
The Panel finds that the disputed domain name was registered in bad faith and has been used in bad faith with the purpose of attracting Internet users and then directing at least some of them to the Complainant’s competitors’ websites.
The third element required for the Complaint to succeed has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <spencoarchsupports.net> be transferred to the Complainant.
Dated June 17, 2011