WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FatWaIlet, Inc. v. Fundacion Private Whois
Case No. D2012-1066
1. The Parties
Complainant is FatWaIlet, Inc. of Beloit, Wisconsin, United States of America, represented by Reinhart Boerner Van Deuren s.c., United States of America.
Respondent is Fundacion Private Whois, of Panama.
2. The Domain Name and Registrar
The disputed domain name <fatwalleet.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2012. On May 22, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On May 24, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2012.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 5, 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
Complainant owns the following United States (“US”) Trademark Registration: FATWALLET, Reg. No. 2,609,874, filed on October 31, 2000, and registered on August 20, 2002, covering “promoting goods and services of others through the distribution of discount offers” of International Class 35. The record of the filing contains a statement of first use and first use in commerce as of December 5, 1999.
On its website “www.fatwallet.com” Complainant's offers Internet users, after signing in and becoming members, coupons, cash back when they shop, “best deals of the web”, and a forum community.
The disputed domain name was registered on September 8, 2005.
5. Parties’ Contentions
In its Complaint, Complainant contends as follows:
Complainant owns trademark rights in and to the FATWALLET trade name. Through continuous and exclusive use since 1991, Complainant's FATWALLET trademark is distinctive of Complainant's goods and services and Complainant has established significant goodwill in and to the FATWALLET trademark. The disputed domain name is nearly identical to Complainant's FATWALLET mark. In fact the disputed domain name is an intentional misspelling of Complainant's trademark.
Respondent is not using the disputed domain name in a legitimate manner. Respondent’s use of the disputed domain name is a clear act of typosquatting, and appears to be used for domain monetization to direct visitors to a page of links or a parked page offering the domain name for sale to third parties. Respondent is not licensed by Complainant and has not obtained permission, either express or implied, from Complainant to use and/or register any domain names incorporating Complainant's FATWALLET mark, nor has Respondent ever conducted business under this mark. Accordingly, Respondent’s use of the disputed domain name is not legitimate.
Complainant’s use of the FATWALLET mark since 1991, and the “www.fatwallet.com” website prior to Respondent's registration and use of the disputed domain name indicates that Respondent either knew or should have known of Complainant's trademark rights. Respondent therefore has legal, if not actual, notice of Complainant's mark and domain name prior to registering the disputed domain name.
Respondent registered the disputed domain name primarily for the purpose of preventing Complainant from owning this domain name and causing injury to Complainant's reputation. By refusing to sell the disputed domain name for Respondent’s documented out-of-pocket expenses, or otherwise respect Complainant's well-established trademark right, it is clear that Respondent registered the disputed domain name in order to prevent Complainant from using the domain name and otherwise attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location, or of a product or service on its website or location. Accordingly, Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has evidenced that it has trademark rights in the FATWALLET trademark. See section 4, “Factual Background”, above.
The only two differences between Complainant's FATWALLET trademark and the disputed domain name. are the addition of an “e” and the gTLD “.com”, which the Panel finds negligible when comparing the two identifiers. Moreover, this trademark and the second level domain name are phonetically almost identical. See McKesson Corp. v. Texas International Property Associates- NA NA, WIPO Case No. D2009-0341 (“The disputed domain name differs from the Trademark McKesson by the simple addition of the letter ‘e’ in ‘MecKesson’ and these two terms are phonetically identical. The further addition of the term ‘.com’, top level domain, does not in any way diminish the likelihood of confusion. Contrary to the Respondent stating that the two are ‘entirely distinct and dissimilar’, the Panel is of the view that ‘MecKesson’ is as close as a word can be with MCKESSON without being identical and there is no need to adduce further evidence of confusion.”)
The Panel concludes that the disputed domain name is confusingly similar to Complainant's FATWALLET mark.
B. Rights or Legitimate Interests
Complainant contends that Respondent’s use of the disputed domain name is typosquatting, with a purpose of domain name monetization to direct visitors to a page of links or a parked page offering the disputed domain name for sale to third parties. Complainant adds that Respondent is not licensed by Complainant, and that it has not obtained permission from Complainant, to use and/or register any domain names incorporating the FATWALLET mark, nor has Respondent ever conducted business under this mark.
Taken together, these contentions and supporting evidence are apt, in the Panel’s view, to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Moreover, the Panel finds that the creation of the disputed domain name was made in an obvious exercise of typosquatting, where Respondent imitates Complainant's FATWALLET mark, while Respondent's “www.fatwalleet.com” website shows contents and nature similar to Complainant's website “www.fatwallet.com”. This use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name, because it is aimed at obtaining profit from diverting Internet users presumably looking for Complainant's website.
It is the consensus view of UDRP panels that once a complainant makes a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“ WIPO Overview 2.0”).
In light of the above reasons, and since Respondent has not submitted any comments or evidence whatsoever in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Typosquatting of the sort used to create the disputed domain name implies that Respondent must have been aware of Complainant's mark at the time of registration. In fact, the disputed domain name is phonetically similar to Complainant’s registered trademark. Moreover, the nature and contents of Respondent's “www.fatwalleet.com “ website closely imitates Complainant's website “www.fatwallet.com”. In other words, the registration of the disputed domain name was made with Complainant's mark in mind, i.e. in bad faith.
As evidenced by Complainant, with a printout of the “www.fatwalleet.com“ website, and as confirmed on July 15, 2012, by the Panel during a visit to this website, Internet users trying to connect to Complainant's “www.fatwallet.com” website, and inadvertently typing a second “e”, are redirected to a website offering showing, under the “fatwalleet.com” title, a list of “related searches” such as “dining deals in Las Vegas”, “Las Vegas dining coupons”, “laptops deal”, “deal bargains”, “print coupons”, “coupons deals”, “Disney deals”, “vacations deals”, and “coupons printable” , together with “sponsored listings” and “popular categories”. It is obvious that Respondent is offering services in competition with Complainant's services offered at Complainant's “www.fatwallet.com” website.
The Panel concludes that, by using the disputed domain name in such a manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant's FATWALLET mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on this website. According to Policy paragraph 4(b)(iv), this is a circumstance of bad faith registration and use of the disputed domain name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the <fatwalleet.com> domain name be transferred to Complainant
Dated: July 17, 2012