World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hemnet Sverige AB v. PrivacyProtect.org / Tech Domain Services Private Limited

Case No. D2012-1881

1. The Parties

Complainant is Hemnet Sverige AB of Solna, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.

Respondent is PrivacyProtect.org of Queensland, Australia and Tech Domain Services Private Limited of Mumbai, India.

2. The Domain Name and Registrar

The disputed domain name <wwwhemnet.com> is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2012. On September 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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 Complainant on September 24, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 26, 2012.

The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on September 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 17, 2012.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on October 30, 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 has provided real estate listings and homes for sale since 1998, and is Sweden’s most popular real estate listings web site. It operates its main web page under <hemnet.se>, which was registered on January 19, 2001. It also owns 19 other domain names containing “hemnet.”

Complainant owns Swedish and Community Trade Mark (“CTM”) registrations containing HEMNET.

Respondent registered the disputed domain name on April 10, 2006. The homepage for the disputed domain name <wwwhemnet.com> contains numerous links to other real estate-related businesses, which compete with Complainant’s services.

Complainant sent Respondent a cease and desist letter on July 4, 2012, to which it did not receive a response.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the HEMNET trademark. It contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of Complainant’s HEMNET mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of “www”, which constitutes “typosquatting”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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 provided real estate listings and homes for sale since 1998. Complainant owns Swedish and CTM registrations containing HEMNET. It operates its main web page under the domain name <hemnet.se>, which was registered on January 19, 2001. It also owns 19 other domain names containing “hemnet.” This Panel finds that Complainant has proven that it has rights in the HEMNET mark.

The disputed domain name is confusingly similar to Complainant’s HEMNET mark. It contains Complainant’s HEMNET mark in its entirety. The only difference between Complainant’s mark and <wwwhemnet.com> is the addition of “www”, and the generic top level domain (gTLD) “.com”. Numerous previous UDRP panels have held that the addition of “www” does not distinguish a domain name from a complainant’s mark. Similarly, many panels have found that the addition of the gTLD “.com” does not distinguish a domain name from a complainant’s mark.

Accordingly, the Panel finds that Complainant has rights in the HEMNET mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As the consensus view is that it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.

Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the HEMNET mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.

The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.

Respondent is in default, and has not provided any evidence in its own favor.

The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that:

“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that respondent registered or respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent engaged in a pattern of such conduct; or

(iii) respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s web site or location or of a product or service on respondent’s web site or location.”

This Panel infers that Respondent most likely knew of Complainant’s HEMNET mark when Respondent registered the disputed domain name, since Complainant’s site is Sweden’s most popular site for real estate listings and homes for sale, and also provides other real estate tools and resources. Respondent’s site contains Swedish advertisements and links to broker sites and related real estate services. The Panel finds that Respondent therefore registered the disputed domain name in bad faith.

The Panel finds that Respondent also has used the domain name in bad faith under the paragraph 4(b)(iv) of the Policy. Respondent’s web site intentionally attracts Internet users for commercial gain by linking to other web sites through which Complainant’s competitors sell similar goods and services. It has long been held that this type of click through revenue violates the Policy. See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Further, “typosquatting” has consistently been found to constitute bad faith. See, eg, Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.

This Panel finds that Respondent has registered and is using the disputed domain name in bad faith and that Complainant meets the third criterion of paragraph 4(a) of the Policy.

7. Decision

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 <wwwhemnet.com> be transferred to Complainant.

Sandra A. Sellers
Sole Panelist
Dated: November 13, 2012

 

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