WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Matvil Corporation v. Private Registration / PrivacyProtect.org
Case No. D2011-0841
1. The Parties
The Complainant is Matvil Corporation of Ontario, Canada represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is PrivacyProtect.org and Private Registration of Nobby Beach, Australia and Panama, Panama, respectively.
2. The Domain Name and Registrar
The disputed domain name <wwwetvnet.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2011. On May 16, 2011, 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 18, 2011, 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 18, 2011 providing the registrant and contact information disclosed by Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 25, 2011.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on May 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on June 20, 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 disputed domain name was registered in December 2008.
The Complainant is a Canadian company which offers online TV program services in the Russian language via its website at “www.etvnet.com” which is accessible globally. The Complainant has produced evidence to show that it has operated its website at the domain name since 2004 and that it currently has almost 1 million registered users with a monthly average viewing of over 25 million pages and over 2 million visitors, with high ratings from “www.alexa.com” in Canada, the United States of America and countries of Northern Europe. Its subscriber base has grown from over 25,000 in 2008 to the current figure of almost 1 million. The Complainant claims to have expended hundreds of thousands of dollars promoting its Etvnet brand worldwide.
The Complainant is the owner of registrations of the trademark ETVNET in respect of entertainment services including the production and distribution of television programming in Canada dating from August 2008 and in the European Community dating from April 2010, claiming use in Canada since November 2004.
Nothing is known of the Respondents save that the First Respondent appears to be the operator of a privacy protection shield and the Panel notes that it has been a respondent in well over 100 UDRP proceedings. In at least 5 of those cases, it was a respondent with the Second Respondent.
The disputed domain name resolves to a portal site offering links to a number of sites which appear to offer services competitive with the services of the Complainant.
5. Parties’ Contentions
The Complainant’s submissions may be summarized as follows:
- It has well-established registered and common law rights in the trademark ETVNET. The disputed domain name is identical or confusingly similar thereto. In this respect the Complainant submits that for the purpose of comparison, the letters “www” do not serve to dispel confusion and constitute a form of typosquatting, citing Humana Inc. v HYRO FZ-LLC, WIPO Case No. D2008-1695.
- The Complainant has not authorized the Respondent to use or register the disputed domain name.
- The use of the disputed domain name which contains, and is confusing with, the Complainant’s trademark cannot to be said to constitute a bona fide offering of goods or services and cannot be relied upon by the Respondents to claim a right or legitimate interest in the disputed domain name.
- The purpose of the registration of the disputed domain name was to trade off the goodwill associated with the Complainant’s trademark and was done intentionally to disrupt the Complainant’s business and to attract Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s mark.
- Given the notoriety of the Complainant’s ETVNET trademark, the nature of the Respondents’ website and the typosquatting, the only plausible conclusion is that the Respondents had actual knowledge of the mark at the time of registration of the disputed domain name.
- The Respondents failure to respond to the Complainant’s request for transfer of the disputed domain name is a further indicator of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has proven registration rights in the trademark ETVNET in both Canada and the European Community and has given evidence of substantial and extensive use of the trademark such as to give rise to the high probability that it has established a substantial reputation leading to common law rights. The disputed domain name comprises the trademark prefixed by the letters “www” and followed by the letters “.com”. The Panel accepts, as have countless panels previously accepted, that the addition of the domain name denominator “.com” does not serve to distinguish the disputed domain name from the trademark. As to the prefixed letters “www” the Panel accepts the Complainant’s submission that they do not serve in any way to diminish the likelihood of confusion between the disputed domain name and the Complainant’s trademark. Indeed, it may be said that they are more likely to add to the confusion since in a great majority of cases those letters, followed by a dot, stand for “world wide web” and are entered in the address line before the substantive part of a domain name. Thus, if by inadvertence the dot is omitted from the Complainant’s address at “www.etvnet.com”, the address will resolve to the Respondents’ webpage rather than to the Complainant’s webpage.
The Panel therefore finds that the Complainant has rights in the trademark ETVNET and that the disputed domain name is confusingly similar to it.
B. Rights or Legitimate Interests
The Complainant has asserted that it has not authorized the Respondent (whoever that might actually be) to register or use the disputed domain name. There is no evidence from the Respondents nor from any other source to indicate that the Respondents might be entitled to claim the benefit of either paragraphs 4(c)(ii) or (iii) of the Policy in order to demonstrate a right or legitimate interest in the disputed domain name. As to paragraph 4(c)(i) the Respondents have used the disputed domain name to point to a website which offers links to third parties offering goods or services, but that offering is not a bona fide offering. The evidence provided by the Complainant and all of the surrounding circumstances clearly point to the opposite conclusion. The fact that the disputed domain name comprises the Complainant’s trademark prefixed by the letters “www” evidences a clear and cunning strategy on the part of the Respondents to take advantage of the fact that Internet users will normally type in those letters at the commencement of an Internet address and might sometimes inadvertently omit to insert the dot between the letters and the substantive part of the domain name. The fact that the Respondents have registered the disputed domain name in this form some years after the Complainant commenced to use its domain name leads the Panel inevitably to the conclusion that they did so with knowledge of the Complainant’s reputation in its domain name and with the intention of profiting from confusion with it.
The Respondents had an opportunity to rebut the Complainant’s case but have failed to do so and there is no otherwise-apparent basis for rebuttal.
The Panel therefore finds that the Respondents have no right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The circumstances discussed above are in themselves sufficient to support a finding that the registration and subsequent use of the disputed domain name have been in bad faith. Further circumstances tending to reinforce that conclusion include the Respondents’ failure to respond to the Complainant’s objection, the continued misuse of the disputed domain name following the objection, and the fact that the Respondents, jointly, appear to have a history of cybersquatting. Further, it is noted that the name of the registrant behind the proxy registrant, PrivacyProtect.org, is, itself named Private Registration, a name which suggests that it too may be a proxy name and that the name of the true registrant may be still further embedded in a veil of secrecy. The image of a Russian doll comes to mind and the conclusion of bad faith registration and use is further enforced. Finally, the Panel notes from the case file that although the Center has taken all reasonable steps to effect service on both Respondents in accordance with paragraph 2(a) of the Rules, attempts at service on the Second Respondent at email@example.com and by courier at its notified Panamanian address were unsuccessful, indicating that that Respondent has provided incomplete or inaccurate contact details, a yet further indicator of bad faith – see Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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 <wwwetvnet.com> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: June 23, 2011