WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John L. Scott, Inc. v. PrivacyProtect.org / ICS INC.
Case No. D2012-0649
1. The Parties
The Complainant is John L. Scott, Inc. of Issaquah, Washington, United States of America, represented by Graham & Dunn, PC, United States of America.
The Respondent is PrivacyProtect.org / ICS INC of Nobby Beach, Queensland, Australia and Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, respectively.
2. The Domain Name and Registrar
The disputed domain name <johnloscott.com> (the "Domain Name") is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 2012, the Registrar 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. The Center sent an email communication to the Complainant on April 2, 2012, 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 amended Complaint on April 4, 2012.
The Center verified that 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 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2012.
The Center appointed Ian Lowe as the sole panelist in this matter on May 4, 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 is a real estate brokerage company that provides real estate brokerage services to sellers and buyers in Washington and Oregon, United States of America ("USA"). An affiliate company John L. Scott Real Estate Affiliates, Inc, is a franchiser of real estate brokerage offices in Washington, Oregon and Idaho, USA. Since 1931, the Complainant has expended millions of dollars developing, marketing and advertising the JOHN L. SCOTT trademark in its various forms and as a result has generated substantial goodwill in the trademark.
The Complainant is the owner of a number of USA trademark registrations in respect of JOHN L. SCOTT including United States Trademark No. 2,756,356 registered on August 26, 2003, and first used in commerce on January 1, 1948. Since 1996, the Complainant has operated a website at “www.johnlscott.com” which offers real estate listing information and access to third party real estate services such as mortgage, relocation, home warranty, escrow and title insurance.
The Domain Name was registered on December 28, 2011. At the date of the Complaint the Domain Name resolved to a parked website offering links to related searches for terms including real estate, insurance and home mortgages
5. Parties’ Contentions
A summary of the contentions on the part of the Complainant is as follows.
The Complainant claims rights in the trademark JOHN L. SCOTT by virtue of a number of USA registrations in respect of the mark including United States Trademark No. 2,756,356 and United States Trademark No. 1,741,684 for the stylized word mark JOHN L. SCOTT registered on December 22, 1992. It also claims unregistered rights in the name as a result of use over very many years.
The Domain Name is confusingly similar to the mark JOHN L. SCOTT because it differs only by the inclusion of the additional letter "O" between "L" and "Scott". The misspelling does not avoid a likelihood of confusion.
The Complainant asserts that there is no evidence that the Respondent has any rights or legitimate interests in respect of the Domain Name or the name "johnloscott" or the name "johnlscott". There is no indication that the Respondent is using the Domain Name in connection with a bona fide offering of goods and services – rather the Domain Name directs traffic to a parking page with sponsored links to websites associated with the services offered by the Complainant. The strong inference is that the Respondent registered the Domain Name with a view to profiting from Internet traffic comprising people looking for information concerning the Complainant but mistyping the address of the Complainant's website.
The Respondent failed to respond to the Complainant's letter dated January 24, 2012, notifying the Respondent that its use of the Domain Name was a violation of the Complainant's rights.
The Complainant submits that the Respondent registered the Domain Name in bad faith because at the time of registration the Respondent must have had actual knowledge of the Complainant's services sold under the JOHN L. SCOTT trademark since there could be no other reason for the Respondent to select and register the Domain Name. The Respondent presumably did so with a view to profiting from Internet users misspelling the Complainant's website address which is typical of typosquatting. "Lo" has no significance in commerce so that the Domain Name could only have been registered for that purpose.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in achieving its requested remedy in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has well-established, uncontroverted rights in the trademark JOHN L. SCOTT in the USA. Ignoring the suffix “.com”, the Domain Name differs from the Complainant’s mark only by the addition of the letter "O" between "L" and "Scott". In the Panel's view, that is not sufficient to distinguish the Domain Name from the Complainant’s mark or to avoid confusing similarity. The Panel accordingly finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
As paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states, the consensus view is that once a complainant makes out a prima facie case on this element, then the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent had some justification for registering the Domain Name the Panel finds that it would have been expected to come forward with an explanation. The Respondent has chosen not to answer the Complainant’s case or to respond to the allegations made in the Complaint.
The Respondent has not therefore displaced the assertion on the part of the Complainant, found credible by the Panel, that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Panel can think of no reason why the Respondent registered the Domain Name other than to take advantage of the Complainant's rights in the JOHN L. SCOTT name and the accidental misspelling of the Complainant's website address. In that regard, the Panel notes that on a standard QWERTY keyboard the letter "O" is just above the letter "L" making the accidental typing of the letter "O" with the letter "L" more likely.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In the Panel's view it is highly likely that the Respondent had the Complainant's mark in mind when it registered the Domain Name. The obvious conclusion is that the Respondent registered and has used the Domain Name to operate a website with the intention that Internet users misspelling the Complainant's website address would be directed to the Respondent's website at the Domain Name. The Panel considers that the Respondent's exploitation of the Complainant's mark in this way with a view to commercial gain through sponsored links is paradigm typosquatting and bad faith use for the purposes of the Policy.
In the circumstances the Panel finds that the 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 <johnloscott.com> be transferred to the Complainant.
Dated: May 16, 2012