WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HemnetSverige AB v. Domain Admin, Private Registrations Aktien / PrivacyProtect.org
Case No. D2012-1787
The Complainant is Hemnet Sverige AB, Solna, Sweden, represented by Domain and Intellectual Property Consultants, Dipcon AB, Sweden.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft, Kingstown, Saint Vincent and the Grenadines / PrivacyProtect.org, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <hemnett.com> is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 5, 2012. On September 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2012, 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 September 11, 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 September 13, 2012.
The Center verified that 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 September 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2012.
The Center appointed Isabelle Leroux as the sole panelist in this matter on October 19, 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 operates a well-known website that provides real estate listings and homes for sale in Sweden.
The Complainant owns trademark rights on the word mark HEMNET, notably a CTM registered in 2011 for the following classes: 16, 35, 36, 38.
The Complainant also owns domain names containing the word mark HEMNET.
The disputed domain name was created on July 1, 2006 but acquired by the Respondent on February 5, 2012.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the HEMNET mark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that the Respondent was not granted any right to use its mark HEMNET. The Respondent is not commonly known by the disputed domain name.
The disputed domain name is used for links with advertisements in Swedish.
The Complainant also submits that the Respondent registered the disputed domain name in bad faith. The fact that the disputed pages are shown in Swedish showing links within the same business as the Complainant means that the Respondent was aware of the Complainant’s rights.
Finally, the Respondent did not respond to the cease and desist letter sent by the Complainant but changed the links which were available on his website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants must prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark to which it 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.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The Complainant demonstrates that it has rights in HEMNET trademarks and domain names.
As to whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, the relevant comparison to be made here is with the second-level part of the disputed domain name “hemnett”, as it is well-established that the gTLD suffix (i.e., “.com”) may be disregarded for this purpose.
The disputed domain name comprises the HEMNET trademarks, and only differs from the Complainant’s trademarks by the addition of the final letter “t”.
The Panel finds that this does not eliminate the confusing similarity between the Complainant’s registered trademarks and the disputed domain name.
Previous UDRP panels have consistently held that a mere addition or a minor misspelling of complainant’s trademark does not create a new or different mark in which respondent has legitimate rights. Such insignificant modification is commonly referred to as “typosquatting”. “Domain names which constitute typosquatting are confusingly similar by definition” (See Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317, Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161, Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302).
Therefore, the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where a respondent may show rights or legitimate interests, the overall burden of establishing on lack of such rights falls on the complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant alleges that the Respondent has no rights in the trademark HEMNET and the Complainant had never given the Respondent any license or permission to use the trademark HEMNET.
In the present case, the Panel considers that in the absence of any license or permission from the Complainant to use the Complainant’s trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the Respondent.
In addition, there is no evidence presented to the Panel that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services at present. Indeed, the evidence provided by the Complainant shows that the disputed domain name is used to attract Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues.
Finally, the Respondent did not even answer to the Complainant’s letter trying to solve amicably this matter.
The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b)(iv) of the Policy, bad faith is established if it is evidenced that the disputed domain name is used to intentionally attempt to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or a product or service on the registrant’s website or location.
In the present case, Respondent’s mere act of typosquatting presents ample evidence of bad faith (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, Supra).
Furthermore, the disputed domain name is used to generate traffic to website with sponsored links to websites in Swedish for real estate, i.e. for services offered by Complainant’s competitors. This use of the disputed domain name is made to attract Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues. This use of confusingly similar domain name and the resulting confusion will inevitably give rise to diversion of Internet traffic from the Complainants’ site to the Respondent’s website. The Panel infers that the Respondent takes advantage of the Complainants’ popularity by redirecting traffic from Internet users looking for the Complainant and benefits from this confusion and diversion.
Moreover, the Respondent could have attempted to present evidence or make an argument that its use of the disputed domain name was not in bad faith, but failed to do so. On the contrary, after receiving the first cease and desist letter, he continued to use the disputed domain name but changed the sponsored links available on its website.
Lastly, the Respondent uses privacy service to hide his identity. The use of privacy does not in itself constitute bad faith, however the Panel finds that in the present case, privacy shield is merely used to obstruct UDRP proceedings and not to protect identity for legitimate reasons.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith and that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hemnett.com> be transferred to the Complainant.
Dated: October 30, 2012