WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Twitter, Inc. v. Whois Privacy Services Pty Ltd / 21562719 Ont Ltd a/k/a Galt Networks Inc
Case No. D2011-1992
1. The Parties
The Complainant is Twitter, Inc. of San Francisco, California, United States of America (“United States”), represented by Melbourne IT DBS Inc., United States.
The Respondent is Whois Privacy Services Pty Ltd of Queensland, Australia / 21562719 Ont Ltd a/k/a Galt Networks Inc of Brampton, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <twittr.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2011. On November 14, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On November 15, 2011, the Registrar 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 November 22, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 26, 2011, the Complainant requested an extension of due date for the submission of amendment due to a holiday schedule, which was granted by the Center on November 28, 2011. The Complainant filed a letter and annexes with additional information on November 30, 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 December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2011.
The Center appointed David J.A. Cairns as the sole panelist in this matter on January 11, 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.
4. Factual Background
The Complainant offers a social networking and micro-blogging service, enabling its users to send and read messages called “tweets” through the Complainant’s website “www.twitter.com”, compatible external applications on smart phones, or through SMS.
The Complainant is the owner or applicant for various trademarks, and in particular is the owner of the United States Patent and Trademark Office registered trademark 3619911 for the word mark TWITTER for telecommunications, messaging and other services, registered on May 12, 2009 and based on a first use in commerce of August 31, 2006.
The Complainant is also the owner of the <twitter.com> domain name, first registered on January 21, 2000.
The disputed domain name was created on August 3, 2006. The original registrant was not the Respondent, and as at September 15, 2007 the disputed domain name was registered to another registrant with an adddress in Republic of Korea.
The Panel entered the disputed domain name in its web browser on January 16, 2012. The landing page contained a series of sponsored listings, relating primarily to links offering online chatting services and to meeting women from various countries.
5. Parties’ Contentions
The Complainant states that its Twitter service now has over 145 million users worldwide, in various languages. It states that the first Twitter message was broadcast on March 21, 2006 internally within the corporation that was developing the concept. The full version was rolled out publicly on July 15, 2006. Twitter has grown dramatically since that time. The “www.twitter.com” website is currently ranked as one of the ten most visited websites worldwide by Alexa’s web traffic analysis.
The Complainant says that the disputed domain name is a clear typographical error for the Complainant’s registered trademark TWITTER. It states that the disputed domain name is virtually identical to the Complainant’s trade name and confusingly similar to its registered trademark.
The Complainant also states that the Respondent has no rights or legitimate interests in the disputed domain name. It states that there is no evidence that the Respondent owns registrations for any trademarks containing the terms “twittr” or “twitter”; these terms do not serve 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. Further, the Respondent is neither a licensee nor an authorised representative of the Complainant, and is not authorised to register any domain names incorporating the Complainant’s trademarks.
The Complainant says that it sent a cease and desist letter to the Respondent inviting the Respondent to transfer the disputed trade name in good faith, but the Respondent never replied.
The Complainant also states that the Respondent is not using the website in connection with any bona fide offering of goods or services; instead the Respondent has intentionally chosen the disputed domain name based on a registered trademark in order to confuse users seeking the Complainant’s website. The Respondent is using the disputed domain name to host a pay-per-click website for the purposes of financial gain. The Complainant also refers to the fact that the pay-per-click websites associated with the disputed domain name has links to websites with adult content. In these circumstances, the Complainant states that the Respondent’s use of the disputed domain name is not bona fide within the meaning of paragraph 4(c)(i) of the Policy because the disputed domain name is confusingly similar to the Complainant’s TWITTER trademark; there is no apparent connection or relationship between the disputed domain name and the Respondent’s name and business; and the Respondent does not use the disputed domain name to advertise or sell its own products.
The Complainant also states that the disputed domain name was registered and is being used in bad faith. The Complainant states that the disputed domain name was acquired by its current registrant in October 2007 from the original registrant in 2006. The Complainant states that it was using its registered trademark in business, and had filed its registered trademark application prior to the acquisition of the disputed domain name by the current registrant. The Complainant also refers to its registration of the domain name <twitter.com> as early as 2000.
The Complainant refers to the fact that the Respondent is using the disputed domain name in connection with a pay-per-click website to demonstrate that the Respondent is acting in bad faith by trying to profit from the well-known TWITTER trademark through pay-per-click advertisements. The Complainant states that the Respondent has been involved in prior domain name proceedings involving other well-known trademarks, which supports a pattern of bad faith conduct on the part of the Respondent. The Complainant also refers to the fact that the Respondent has continued to use the website after being explicitly informed of the Complainant’s rights as demonstrating bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
On November 22, 2011 the Center advised the Complainant that the Registrar had identified the registrant of the disputed domain name (which until that time had only been identified as a privacy shield). The Center invited the Complainant to amend the Complaint, if it wished, to include the additional information provided by the Registrar. The Complainant indicated that it wished to submit an amendment, which was received in the form of a letter with annexes by the Center on November 30, 2011. However, rather than making a formal amendment, the Complainant’s letter indicated that it “would like to add” certain facts to the case, which included identifying the Respondent as “2156719 Ont Ltd a/k/a Galt Networks Inc.” but also included additional information and annexes regarding the owner of this corporation and his activities relating to domain names. The Center accepted the “amendment”, which was forwarded with its annexes to the Respondent, together with the Notification of Complaint and Commencement of Administrative Proceeding, and the Complaint and its annexes, on December 1, 2011.
The Panel finds that the Complainant has amended the Complaint to identify the Respondent as 2156719 Ont Ltd a/k/a Galt Networks Inc. The Center communicated the Complaint, the Complainant’s amendment letter, and their respective annexes both to the email address advised by the Registrar for the Respondent, as well as to the email address of the original privacy shield. For the avoidance of doubt, the Panel finds that the Respondent is the registrant of the disputed domain name and has been correctly identified and notified for the purposes of these proceedings.
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the TWITTER trademark registration in the United States. The Panel also accepts that the success of the Twitter service and that the “www.twitter.com” website is one of the most visited websites in the world. Accordingly, the TWITTER trademark is known worldwide, and particularly to Internet users.
The disputed domain name is not identical with the TWITTER registered trademark, so the Panel turns to consider confusing similarity.
The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
The disputed domain name differs from the TWITTER trademark only in the omission of the letter “e”. This difference is of no significance for the purposes of the first element of the Policy because: (i) the omission of the letter “e” does not create any new word, or give the disputed domain name a distinctive meaning; (ii) the omission of this single letter is of little visual and no phonetic significance; (iii) the overall appearance of the disputed domain name immediately suggests the word “twitter”, and therefore the Complainant’s business and trademark.
For these reasons the panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and the first element of the Policy is accordingly satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registration of a TWITTR trademark; (ii) the Respondent is not authorised or licensed by the Complainant to use the TWITTER trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; and (iv) the Respondent is using the disputed domain name to generate revenue through sponsored links.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondent’s use of the disputed domain name is for commercial gain through sponsored listings, and also that the use of the disputed domain name to attract Internet traffic to a website by deception (that is, by suggesting the website relates in some manner to the TWITTER trademark) is not a use in connection with a bona fide offering of goods or services.
The Panel has considered the significance to the question of the Respondent’s possible rights or legitimate interests of the fact that the disputed domain name was first registered on August 3, 2006. This registration was not only prior to the Complainant’s registration of the TWITTER trademark in the United States (May 12, 2009), but also prior to the first use in commerce recorded in this trademark registration (August 31, 2006). There is no evidence of any use of the disputed domain name by the original registrant. The Complainant alleges that the Twitter service was presented publicly for the first time on July 16, 2006, which is prior to the date of the original registration.
However, the important date for the consideration of the rights or legitimate interests of the Respondent is not the date of the original registration of the disputed domain name, but the date of the Respondent’s acquisition of the disputed domain name, which the Panel is satisfied took place after September 15, 2007. The Respondent acquired the disputed domain name well after the Complainant’s first commercial use of the TWITTER trademark, and when its service was well established. There is therefore no basis to conclude that the disputed domain name was acquired by the Respondent in ignorance of the Complainant’s business or TWITTER trademark, nor in the circumstances could the Respondent have acquired any rights or legitimate interests from the original registrant (see Twenty Ones Incorporated NY Corp. v. MP3 Zone, WIPO Case No. D2006-1553: “The fact that a previous registrant appears to have had a legitimate interest based on registration before the Complainant’s trademark rights arose is not relevant here. [...] The Panel has noted the Respondent’s contention with regard to the original purpose of the website developed by a previous registrant. However, the Respondent in the present case cannot ‘inherit’ a legitimate interest from a previous registrant who has allowed the domain to expire, at least where (as here) he does not maintain the character of the original website”).
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. The requirement of “registration” in bad faith refers to the date of acquisition by the current registrant, and not to the date of the original registration (see Twenty Ones Incorporated NY Corp., supra and HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062: “[T]he transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name”). In this case the evidence demonstrates that the date of registration by the Respondent was no earlier than September 15, 2007, and by this date the Complainant’s business and use of the TWITTER trademark were well established.
Paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website, it should be taken as evidence of the registration and use of the disputed domain name in bad faith.
The Panel finds that the evidence supports a finding of bad faith under paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the sponsored links on its website. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the TWITTER trademark and the Complainant’s domain name.
The Panel is satisfied that the Respondent deliberately chose the disputed domain name to take advantage of the Complainant’s goodwill. This is a clear case of typosquatting in that the disputed domain name differs from one of the Complainant’s trademark and domain name only in the omission of a single letter. The Panel finds that the Respondent knew of the Complainant’s business and trademark at the time of acquisition of the disputed domain name, and acquired the disputed domain name with the intention of attracting Internet traffic (and “click-through” revenue) based on a typing error. Typosquatting, in itself, constitutes registration and use in bad faith (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011; “Typosquatting is […] the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”).
Further, the Complainant’s “www.twitter.com” website is one of the most visited websites in the world and therefore there is not only no doubt that the Respondent sought to profit from the inevitable typing errors of Internet users, but also it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not amount to bad faith use within the meaning of the Policy because it would involve the intentional deception of Internet users (see Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
Thus, the Panel is satisfied that the disputed domain name was 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 <twittr.com> be transferred to the Complainant.
David J.A. Cairns
Dated January 18, 2012