WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Twitter, Inc. v. Protected Domain Services, Customer ID: NCR-2997797 / Goldberg Client Services, Inc., Name Administrator
Case No. D2011-1973
1. The Parties
The Complainant is Twitter, Inc. of California, United States of America, represented by Melbourne IT DBS, Inc., United States of America (“the United States” or the “US”).
The Respondent is Protected Domain Services, Customer ID: NCR-2997797 of Colorado, United States of America / Goldberg Client Services, Inc., Name Administrator, of Panama City, Panama, self-represented.
2. The Domain Name and Registrar
The disputed domain name <twittter.com> (“the Domain Name”) is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. It named “Protected Domain Services – Customer ID: NCR-2997797” as the sole Respondent. On November 10, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Domain Name. On November 10, 2011, Name.com LLC 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. With the same email, Name.com LLC forwarded to the Center an “Informative Filing”, being a document submitted by the privacy service provider, Protected Domain Services, which generally disclaimed any ownership of or interest in the Domain Name and advised that the true registrant of the Domain Name was its client Goldberg Client Services Inc, Name Administrator, of Panama City, Panama (“Goldberg”). The Center sent an email communication to the Complainant on November 22, 2011 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 amendment to the Complaint on November 29, 2011. One of the amendments showed Goldberg’s “date registered” as June 10, 2010.
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 December 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2011. The Response was filed with the Center on December 21, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on January 16, 2012. 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.
By Procedural Order No. 1 made on January 19, 2012, the Panel requested certain further information from each of the parties. The Complainant was requested to provide a certificate of registration for Goldberg, and if that certificate showed that Goldberg was registered after the date on which the Domain Name was registered, the Respondent was invited to file a further statement advancing any reasons why the Panel should not conclude for the purposes of paragraph 4(a)(iii) of the Policy that the Domain Name must have been registered on some date on or after the date of Goldberg’s incorporation. The Respondent was also asked to advise the actual date on which Goldberg acquired the Domain Name, and to identify who filed the Response (and on what authority from Goldberg). The time for the Panel to give its decision in the case was extended to February 7, 2012.
The Complainant was not able to obtain a certificate of Goldberg’s incorporation from the Panama companies’ registration authority within the time allowed by the Panel, but it did submit extracts from that authority’s online database showing that Goldberg was incorporated on June 10, 2010. The Complainant advised that further time would be required if the Panel required a formal certificate of Goldberg’s incorporation.
On January 26, 2012 the Panel issued its Procedural Order No. 2, advising that it was prepared to accept the material submitted by the Complainant as sufficient interim compliance with its request made of the Complainant in Procedural Order No. 1. The Respondent was requested to respond to the requests which had been (conditionally) made of it in Procedural Order No. 1, and to state specifically whether or not it accepted that Goldberg was incorporated on June 10, 2010. If the Respondent did not accept that registration date, it was invited to provide documents establishing the actual date of Goldberg’s incorporation. The Respondent was requested to submit its reply by January 31, 2012.
The Respondent did not timely reply to the Panel’s requests.1
4. Factual Background
The Complainant offers a well-known social networking and micro-blogging service which enables its users to send and read other users’ messages (called “tweets”). According to the Complaint, Twitter originated from a brainstorming session at the podcasting company ODEO. The original project code name for the service was “twttr”, and the Complainant says that the first “twttr” message was broadcast on March 21, 2006. A prototype was rolled out internally for Odeo employees shortly thereafter, and it was sufficiently successful that a full version was rolled out publicly on July 15, 2006.
When Odeo was acquired by outside interests in April 2007, the Complainant was established as a stand-alone company. By any measure, it has since become very successful. According to the Complaint, there are now over 145 million users of Twitter worldwide, and the Complainant’s website at “www.twitter.com” (“the Complainant’s website”) has been ranked as one of the ten most visited websites in the world.
In the Complaint, the Complainant said that “Before its public launch in 2007, Twitter Inc. was granted the SXSW Web Award in the ‘Blog’ category”.
The Complainant produced a screenshot from a website which appeared to show that this award was made on March 11, 2007. The web page referred to the award to “Twitter”, and went on to report that “everyone immediately Twittered that Twitter won, causing massive waves of SMS notifications throughout the ballroom. …”
Since those early days, the Complainant’s service has grown significantly. The Complainant reported in March 2011 that the billionth “tweet” was sent in May 2009, and that by March 2010 an average of 50 billion tweets was being sent each day. The Complainant says that it passed the 4 billion tweets mark in the first quarter of 2010.
More generally, the Complainant asserts that its service has had a dramatic impact on media and communications. It referred in particular to a highly publicized challenge in 2009 between the actor Ashton Kutcher and the news reporting agency, CNN, which apparently involved the Complainant’s service.
The Complainant’s Trademarks
The Complainant is the registered proprietor of the word mark TWITTER in the United States of America, in relation to telecommunication services, including providing online and telecommunication facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices, and various other services (international classes 38, 41 and 45). The application to register this mark was made on April 26, 2007, and it proceeded to registration on May 12, 2009. An extract from the United States Patent & Trademark Office (“USPTO”) produced by the Respondent shows that the application referred to a “first use in commerce” date of August 31, 2006.
The Complainant’s TWITTER mark is also registered as a Community Trademark.
The Complainant applied to register its TWITTER mark in international classes 9 and 35, on August 26, 2010. The application in Class 9 relates to “software and software applications to enable transmission, access, organization, and management of text messaging, instant messaging, online blog journals …”. This application, made under section 1B of the Lanham Act (intent to use), does not appear to have proceeded to registration.
The Respondent and the Domain Name
The Domain Name was created on February 11, 2007. The evidence does not show when it was acquired/registered by Goldberg, but clearly that could not have occurred before June 10, 2010 when Goldberg was incorporated.
The Domain Name (and a number of other domain names apparently owned or controlled by the Respondent, or interests associated with the Respondent) resolves to a website (“the Respondent’s website”), through which the Respondent appears to conduct a marketing and advertising business. The Respondent says that one of its business tools is the use of online surveys to gather data through a serious of questionnaires, including “trend questionnaires”, and the Respondent’s website is used for this purpose. “Trend studies” are said to focus on a particular population, which is sampled and scrutinized repeatedly. (As an example, the Respondent referred to a yearly survey of librarians asking about the percentage of reference questions they answered using the Internet). In this case, the “trend study” was said to pertain to Internet users “as Complainant has identified”.
The Complainant produced some screenshots of the Respondent’s website taken shortly before the Complaint was filed. The landing page notified the visitor that he or she had been “selected to participate in our monthly survey”. Before completing the survey, the site visitor was offered a choice of three exclusive prizes. The site visitor was then asked to answer three questions, and (according to the Complaint) eventually arrived at a pay-per-click website.
The Complainant produced screenshots from the Complainant’s website for comparison purposes. The background “wallpaper” on the parties’ respective websites appeared to be almost identical – what appeared to be cloud formations in three different shades of blue, ranging from a darker blue at the top to almost white cloud at the bottom. However, none of the pages on the Respondent’s website appeared to make reference to Twitter.
The Respondent says that it had no knowledge of the Complainant’s TWITTER mark when it registered the Domain Name.
The Respondent is neither a licensee nor an authorized representative or partner of the Complainant, and as such is not authorized to register or sell any domain names incorporating the Complainant’s marks.
The Amendment to the Complaint
The amendment to the Complaint asserts that the Respondent owns several other domain names that are clear typos of well-known brands – <sprimt.com>, <htmail.com>, and <gmaill.com>. The Complainant provided WhoIs particulars for each of these domain names showing that Goldberg is the registrant.
As noted above, the Complainant provided with its amendment details of the date of incorporation of Goldberg. It also provided details of the directors of Goldberg, and Goldberg’s subscribers. The same individuals were also said to be directors of, or subscribers in, a corporation called “Geigo Inc”. In an administrative panel decision given under the Policy on November 2, 2011, the Complainant recovered the domain name <twiter.com> from Geigo Inc (Twitter, Inc. v. Geigo, Inc, WIPO Case No. D2011-1210).
With the amendment, the Complainant produced some further screenshots, taken from the Respondent’s website on November 29, 2011. These appeared to show that the domain names <promorewardzone.com>, <testbegintraffic.com>, <quizsecond.com>, and <socialupdatecentral.com>, all resolved to what appeared to be the Respondent’s website, or one very similar to it.
In its Response, the Respondent did not dispute any of the material produced by the Complainant with the amendment to the Complaint.
Alleged Cease and Desist Letter
The Complainant says that on August 22, 2011 it sent a cease and desist letter to the Respondent, alleging infringement by the Respondent. It says that it did not receive any reply. The Respondent denies ever receiving the letter. The Complainant did not produce a copy of the letter that it says it sent.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s TWITTER mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following matters:
(i) There is no evidence that the Respondent owns registrations for any trademarks containing the terms “twittter” or “twitter”. Neither of those expressions serves as the Respondent’s trade name or business identity, and the Respondent does not provide goods or services that are identified or described by these or similar terms.
(ii) A trademark search conducted on the trademark databases in the United States and globally shows that the sole owner of the TWITTER trademark is the Complainant.
(iii) The Respondent has no authority from the Complainant to register or sell any domain names incorporating the Complainant’s marks.
(iv) The Respondent failed to reply to the Complainant’s cease and desist letter.
(v) The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Respondent uses the same content for all of the domain names it owns, namely fake survey sites that lead to pay-per-click sites from which the Respondent makes a profit by misleading the users into believing that the sites and the advertisements on them are being promoted by the trademark owners.
(vi) The Respondent has intentionally chosen a domain name (the Domain Name) based on a registered trademark in order to confuse the users of the Complainant’s website.
(vii) There is no apparent connection or relationship between the Domain Name and the Respondent’s name or business, and the Respondent does not use the Domain Name to advertise or sell its own wares and services.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) The Respondent was aware of the Complainant and its business, and the Complainant’s TWITTER mark, when it became the owner of the Domain Name. The Complainant started using its trademark in business in 2006, and the Domain Name was not registered by the current owner until February 2007.
(ii) The Respondent’s website is currently using a “look and feel” similar to the Complainant’s website, and is actively creating confusion among the users of the Complainant’s website. Furthermore, when a user tries to leave the Respondent’s website it becomes a mousetrap that makes it difficult for the user to leave the website without having to go through “endless and confusing links”.
(iii) The Respondent is making commercial gain out of the high web traffic it receives by using the typo of the Complainant’s very well-known site, thereby disrupting and confusing Internet users looking for the Complainant’s website.
The Respondent contends:
(i) The Complainant’s rights in its TWITTER mark pertain only to telecommunication services. The categories of goods and services covered by the Complainant’s mark do not overlap with the Respondent’s business of marketing and advertising research through surveys.
(ii) Having rights in a mark by itself does not preclude another from establishing rights in that mark at the same time, and does not show that the Respondent has no rights or legitimate interests in the Domain Name. A number of other businesses use a TWITTER mark in connection with various other goods and services.
(iii) The term “twitter” is generic, describing a particular style of communication (talking in a chattering way). The Domain Name is just a mis-spelling of that generic term. The Complainant cannot establish rights in a generic term without showing that the term has acquired a secondary meaning as an identifier of the Complainant’s services.
(iv) Any secondary meaning the Complainant’s mark may have did not begin to accrue until April 2007, when the Complainant purchased the services corresponding to the mark from Odeo. The Complainant’s allegations that its trademark was used in commerce as early as 2006 is false – internal use by Odeo employees could not have been “use in commerce” for the purpose of establishing trademark rights.
(v) Generic and descriptive words will not normally be transferred to a complainant even where the complainant has registered the word as a trademark. In this case, the word “twitter” is merely descriptive of the Complainant’s online service, which allows users to talk in a chattering fashion.
(vi) Under the Policy, the first person to register a generic term has a legitimate interest in it. Where no other rights (especially any rights grounded in priority) exist, the result should be no different for a domain name incorporating a mis-spelling of a generic term. The Complainant has not established a secondary meaning sufficient to bolster a generic term superseding the rights of the Respondent.
(vii) The Complainant has not provided evidence that the Respondent is in the business of using the Domain Name to generate pay-per-click (“PPC”) revenues. But even if such evidence had been provided, UDRP panels have accepted that registration of a domain name with a view to parking it for resale, or to generate PPC revenues (even as a holding position before sale), is not illegitimate per se (citing Surcouf v. Shen Kaixin, WIPO Case No. D2009-0407 – whether there is a right or legitimate interest falls to be decided in context, so that (for example) there would usually be no grounds for a complainant if a respondent registered a wholly descriptive term and used it solely in connection with what it describes). Any PPC revenues generated from the Domain Name are not illegitimate per se.
(viii) The Complainant’s recent (August 27, 2010) application to register the mark TWITTER in respect of “advertising and marketing”, on an “intent to use” basis, shows that the Complainant did not previously hold any rights in the mark TWITTER for those services (which overlap with the Respondent’s business). Ultimately, the Respondent has parallel rights in the Domain Name, and the Respondent is making a legitimate use of the Domain Name.
(ix) The TWITTER mark has been available for use with other goods and services which are not those of the Complainant, and the existence of these other marks supports a categorical distinction from the Complainant’s mark and corresponding rights. The Complainant has no legitimate interests in a category of goods and services relating to marketing and advertising, such as those of the Respondent.
(x) The Complainant has failed to meet its burden of proof under paragraph 4(a)(iii) of the Policy. Mere assertions of bad faith are insufficient.
(xi) Where a trademark does not exist at the time a disputed domain name is registered, the trademark cannot serve as a basis for a claim under the Policy, since it is impossible for that domain name to have been registered in bad faith (citing John Ode d/b/a ODE and ODE – Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074). In this case, the Complainant did not own its TWITTER mark prior to 2007.
(xii) There are no circumstances indicating that the Respondent registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring the 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 Domain Name. Prior to the commencement of this proceeding, the Respondent received no notice of the Complainant’s rights, nor any cease and desist letter, or offer to purchase the Domain Name.
(xiii) Nowhere on the Respondent’s website does the Respondent identify itself with the Complainant or the TWITTER mark – none of the web pages identified in the Complaint make reference to TWITTER, and no telecommunications services are offered in connection with the Domain Name. The Respondent’s website does not create any likelihood of confusion with the Complainant’s mark.
(xiv) No evidence has been presented by the Complainant to suggest that the Respondent would know or have reason to know of the Complainant’s mark. In fact, the Respondent had no knowledge of the Complainant’s mark. In those circumstances, constructive notice is not sufficient to establish bad faith registration (citing Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc., WIPO Case No. D2001-0782, and Lydian Capital Advisors, LLC v. Aldo Aquino/Lydian Capital Advisors SA, WIPO Case No. D2005-0260).
(xv) All of the Complainant’s allegations of bad faith are untrue and are red herrings. For example, the Respondent did not ignore any cease and desist letter from the Complainant – no communications were made to the Respondent before the filing of this Complaint. “Furthermore, no affirmative obligation to respond to such letters exist”. Equally baseless and unsupported by evidence is the Complainant’s suggestion that bad faith exists because the Respondent is engaged in “speculation in domain names”. Speculation in domain names may in any event be a legitimate use (Ville de Paris v. Paris, TV LLC, WIPO Case No. DTV2009-0010).
(xvi) The Respondent has not acted in competition against, or with intent to disrupt, the Complainant’s services.
(xvii) The Respondent did not know of the Complainant’s mark “at the time of the domain name registration in 2004” because the Complainant did not even acquire its product until April 2007, when it first obtained the Odeo business. Moreover, the mark had not yet acquired the requisite distinctiveness or fame sufficient to suggest bad faith on the part of the Respondent.
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”.
B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It is the registered proprietor of the word mark TWITTER in the United States, and that mark differs by only one letter from the Domain Name (the “.com” suffix is not taken into account in the comparison). The addition of an extra “t” in the Domain Name is barely noticeable, and does almost nothing to distinguish the Domain Name from the Complainant’s mark. The two are therefore confusingly similar.
Whether others may also enjoy rights in a TWITTER mark in respect of different goods or services, or in some other jurisdictions, is irrelevant to the enquiry under paragraph 4(a)(i) of the Policy. So is the fact (if it be a fact) that the Respondent’s use of the Domain Name is a use not covered by the Complainant’s trademark registration. Such questions may be relevant to the issues which arise under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, but they are not relevant under paragraph 4(a)(i). All that matters under paragraph 4(a)(i) of the Policy is that the Complainant holds a right in a trademark or service mark, somewhere in the world and in respect of some particular goods or services, which is confusingly similar to the disputed domain name. That is obviously the position here, as the Complainant is the proprietor of a registered TWITTER mark in the United States.
The Respondent submits that the Complainant’s mark is generic, but panels in administrative proceedings such as this do not normally second guess the registration decisions of national trademark registration authorities, and the Panel sees no reason to do so in this case.
The Complainant has clearly made out its case under paragraph 4(a)(i) of the Policy, and the real issues in the case fall to be decided under paragraphs 4(a)(ii) and (iii), where the principal focus is on the Respondent’s relevant rights and legitimate interests (if any), and the Respondent’s conduct.
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 trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of WIPO UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case the Domain Name is confusingly similar to the Complainant’s TWITTER mark, and the Complainant has not authorized the Respondent to register such a domain name. 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, and therefore there can be no basis for any claim to a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. The Respondent’s website has been designed either to provide pay-per-click revenue from links to third party websites (as the Complainant submits), or to support the Respondent’s online advertising and survey business (the Respondent’s contention). Either way the Respondent’s website is commercial in nature. That rules out any possibility of a right or legitimate interest based on a “legitimate noncommercial [...] use [of the Domain Name], without intent for commercial gain”, under paragraph 4(c)(iii) of the Policy.
The foregoing is sufficient to establish a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondent.
The Respondent has failed to discharge that burden. For the reasons set out in section 6D of this decision, the Panel is satisfied that the Respondent’s use of the Domain Name has been neither bona fide (Policy, paragraph 4(c)(i)) nor “fair” or “legitimate” (Policy paragraph 4(c)(iii)), and the Respondent has not suggested any other basis on which it could be said to have a right or legitimate interest in respect of the Domain Name.
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 include:
(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 made out its case in this part of its Complaint. The Panel has come to that view for the following reasons:
1. The Registrar has provided an “Informative Filing” which leaves no doubt that Goldberg is the true registrant of the Domain Name. In the absence of any Response to the Panel’s request for information on who actually filed the Response (and their connection with Goldberg), the Panel will assume that the Response was properly filed on behalf of Goldberg, as Protected Domain Services’ Customer No. NCR-2997797 (the alternative would be to reject the Response and deal with the Complaint on an undefended basis).
2. Although the Domain Name was created on February 11, 2007, and the Complainant initially proceeded on the basis that it must have been the Respondent who registered the Domain Name on that date, the true Respondent turned out to be a corporation which the evidence shows did not even come into existence until June 10, 2010. Normally a UDRP panel will address the issue of bad faith registration under paragraph 4(a)(iii) of the Policy as at the date the respondent acquired (registered) the disputed domain name. In this case, that would mean that the bad faith registration issue would be considered as at the (unknown) date on or after June 10, 2010 when Goldberg acquired the Domain Name. The Panel invited the Respondent to advance any reasons it might wish to advance to the effect that the bad faith registration issue should be assessed at some earlier date, but the Respondent did not take up that invitation. In the absence of any evidence or submissions to the contrary, then, the Panel determines that the Respondent registered the Domain Name on some date on or after June 10, 2010, and that the issue of bad faith registration is to be determined as at that (unknown) date.
3. By June 2010, the Complainant’s unchallenged evidence makes it clear that the TWITTER mark and service was well-known around the world. TWITTER users were exchanging 50 million tweets a day by March 2010, and the Respondent has not denied the statement in the Complaint that the Complainant had reached the 4 billion tweets mark by the end of the first quarter in 2010. Nor has the Respondent denied the Complainant’s assertion that Twitter has had a dramatic impact on media and communications, or its reference to a highly publicized challenge between the actor Ashton Kutcher and the news reporting agency CNN, involving Twitter, in 2009.
The Respondent appears to be a savvy Internet user. It says that it operates an online marketing business, and it owns a number of domain names which point to the same or a similar website. Although Goldberg may be registered in Panama, the Respondent’s website is clearly directed at English speakers, few of whom would have been unaware of the Complainant and its “Twitter” service by June of 2010. Furthermore, an operator of an online business such as the Respondent would hardly have acquired a domain name which it admits is a mis-spelling of the word “twitter”, without bothering to ascertain who owned the domain name (in the same gTLD) which corresponded to that word as it is correctly spelt. Any contention that the Respondent was unaware of the Complainant and its TWITTER service from and after June 10, 2010 is simply not plausible.
In the foregoing circumstances, it was not enough for the Respondent to deny, as it did, knowledge of the Complainant’s TWITTER mark. The Respondent must have been aware of the well-known service the Complainant was providing by reference to the expression “twitter”, and that the Complainant was using that expression as an identifier of its services (i.e. as a service mark).
4. The Respondent has offered no explanation for its choice of the Domain Name, which has no apparent connection with the content of the Respondent’s website. There may be a generic English word “twitter”, meaning to talk in a chattering fashion, or to “utter successive chirping noises” (the Merriam-Webster Dictionary definitions) as the Respondent submitted, but those meanings have no obvious connection with an online advertising and marketing survey business, and none was suggested by the Respondent.
5. The Respondent failed to explain how its claimed business of running online “trend surveys” operates. The statement in the Response: “In this case, the trend study pertains to Internet users, as Complainant has identified”, left the Panel none the wiser – what does the Respondent do with the claimed “trend surveys”? Who are its customers, and how does it make its money? The Response was vague to the point of almost complete opacity in this area.
6. The Respondent does not deny that the Domain Name is a deliberate mis-spelling of the word “twitter”, and in the absence of any sensible explanation for the Respondent’s decision to acquire the Domain Name and point it to the Respondent’s website, the Panel can only reasonably infer that the Respondent intended to attract to the Respondent’s website Internet users looking for the Complainant’s website who had mistakenly keyed into their browsers “twittter” instead of the correct spelling “twitter”. That use of the Domain Name is clearly caught by paragraph 4(b)(iv) of the Policy, at least if the Respondent’s use was for commercial gain.
7. It is not in contention that the Respondent has been using the Domain Name and the Respondent’s website for commercial gain. The Complainant argues that the Respondent’s real target has been to derive PPC revenues from sponsored links to third party websites; the Respondent says that its use of the Domain Name has been in connection with its online advertising and marketing business. Either way, the ultimate goal is to make money, and the intention is commercial gain.
8. Further pointers to a finding of bad faith registration and use are the Respondent’s use of “wallpaper” on the Respondent’s website similar to that adopted by the Complainant, the Respondent’s use of a privacy shield in registering the Domain Name, and the Respondent’s election not to answer the Panel’s questions put to it in Procedural Orders Nos 1 and 2.
Having regard to all of the foregoing considerations, the Panel’s conclusion is that this is a case of blatant typosquatting, where the Respondent has registered a slightly mis-spelt version of the Complainant’s mark in a bad faith attempt to attract Internet users to the Respondent’s website. (The fact that the Respondent has been associated with the registration of other domain names which are clear mis-spellings of well known marks (e.g. <gmaill.com> and <htmail.com), serves only to reinforce that conclusion). The circumstances fall squarely within paragraph 4(b)(iv) of the Policy.
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 <twittter.com> be transferred to the Complainant.
Dated: February 3, 2012
1 Postscript: On February 15, 2012, long after the Panel had submitted its draft decision to the Center, the Respondent sent an email to the Center purporting to challenge the Goldberg incorporation date and contending that Goldberg had been “organised” in 1978. No explanation was provided for the failure to comply with the Panel’s timetable direction, and no substantiation of the 1978 “organisation” date was provided (although any such supporting documentation, if it existed, would clearly have been available to the Respondent). No explanation was offered as to why the Panama corporations online database showed the Goldberg registration date as June 10, 2010, or why the Respondent had elected not to challenge that date earlier (it had been clearly stated in the amendments to the Complaint). None of the Panel’s other questions were answered, and the Respondent’s real concern appears to have been to put the Complainant (described by the Respondent as “a large American Corporation” which “thinks they can just bypass the rules and not provide official government documentation”) to the additional cost of obtaining a certificate from the Panama corporations registry (even though the Respondent presumably had all relevant information itself, and could readily have provided it). In the circumstances just described, the Panel saw no reason to grant any further time extension or to make any other procedural orders as a prelude to issuing its decision under the Policy.