WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Strike Holdings LLC v. Domains by Proxy, LLC/Reap Sow/Daniel Paden
Case No. D2013-1772
1. The Parties
The Complainant is Strike Holdings LLC of New York, New York, United States of America, represented by Proskauer Rose, LLP, United States of America.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America; Reap Sow of Fremont, California, United States of America; Daniel Paden, self-represented.
2. The Domain Name and Registrar
The disputed domain name <bowlmore.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2013, 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 23, 2013 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 October 25, 2013.
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 the Respondent of the Complaint, and the proceedings commenced October 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response November 20, 2013. The Response was filed with the Center on November 20, 2013.
The Center appointed Maxim H. Waldbaum, Matthew S. Harris and Mark Partridge as panelists in this matter on December 20, 2013. The Panel finds that it was properly constituted. Each member of 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 Delaware limited liability company having been running bowling alleys, bars, restaurants and entertainment since 1938 when it opened its first location in New York City.
The Complainant has been trading under the name BOWLMOR at least since 2003. It is the proprietor of five registrations in the United States of trademarks consisting of or containing the word “Bowlmor”.
The domain name <bowlmore.net> was created on September 3, 2013. The disputed domain name has been used to re-direct users to a webpage operating from another domain name registered by the Respondent; i.e. <bowlmorsucks.net>. The title of this webpage is “Bowlmor AMF Sucks – The Truth About Bowlmor AMF”. The Respondent has not been licensed or otherwise been permitted to use any of the Complainant’s trademarks. The Respondent – being aware of the Complainant’s trademark as the web site concerned is dedicated to criticizing the Complainant – is not and has not been commonly known by the disputed domain name.
5. Parties’ Contentions
The Complainant pleads that the disputed domain name registered by the Respondent is “substantively identical to Complainant’s…trademark, BOWLMOR”.
Furthermore, it contends that its trademark is “well-known”. In addition, the Complainant contends that the Respondent cannot rely on “fair use” as a legitimate interest in respect of the disputed domain name due to the fact that the disputed domain name is “essentially identical” to its trademarks rendering the use neither fair nor legitimate.
Lastly, it contends that the registration of the disputed domain name amounts to a “common misspelling of Complainant’s trademark [making] this akin to a “typo-squatting’ case”, which makes it clear that the Respondent is misrepresenting itself as the Complainant.
The Respondent– while acknowledging that the disputed domain name is similar to the Complainant’s trademarks – contends that any “internet savvy business would anticipate the potential of such an obvious use or mistaken spelling of their trademark” and thus would obtain the domain name right from the start.
Additionally, the Respondent, citing paragraph 4(c)(iii) of the Policy, states that it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” If further states that it had no way of knowing the Complainant was opposed to its use of the disputed domain name since the Complainant had not shown any interest in the disputed domain name prior to the proceeding. The Respondent alleges that it exercised its right of free speech by “repor[ting] factual information, suggest[ing] alternative business practices, and relay[ing] reaction to current policies by employees to the Complainant”. Furthermore, it contends that the Complainant is trying to “squash dissent” with this procedure as well as by acquiring over 30 domain names that could be used for such a purpose.
Finally, it contends it did not “at [any] time attempt to gain financially from the use of the domain name” and – quoting again from the Policy – did not “intentionally attempt to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is <bowlmore.net>. The relevant part of this domain name is “bowlmor”. The Panel finds that this is clearly a “typosquatting” case where the disputed domain name is a slight misspelling of a trademark, registered with the purpose of diverting Internet traffic. In fact, the <bowlmore.net> domain name comprises the Complainant’s trademark BOWLMOR with a single misspelling of an element of the mark: a single vowel “e” at the end. Also, the disputed domain name is virtually identical to the Complainant’s domain name <bowlmor.com>. As a result, this is an example of confusing similarity and/or virtual identity brought about through typing errors that are easily made by an Internet user: rather than typing the word “bowlmor” to visit Complainant’s website, an Internet user could easily type the additional vowel ‘e’ and be diverted to a different website.
The practice of “typosquatting” has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627 (finding that “typosquatting”, the practice of misspelling an element of the mark, has consistently been regarded as creating domain names confusingly similar to the relevant mark); Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713 (finding the circumstances of “typosquatting” to constitute confusing similarity); Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994 (finding that disputed domain names are confusingly similar to the marks which they misspell).
In addition, a visual and phonetic comparison between the trademark BOWLMOR and the domain name <bowlmore.net> shows a clear likelihood of confusion. In sum, the case also passes the test for confusing similarity found by the consensus view in WIPO UDRP panel decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2).
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its name and marks, and the Respondent has not been commonly known by the disputed domain name.
The Respondent is relying on the “fair use” defense as it is criticizing the Complainant. Whether a criticism site constitutes “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue,” Policy, paragraph 4(c)(iii), continues to divide panels. WIPO Overview 2.0, paragraph 2.4. The “fair use” claimed in the Respondent’s Response might however be a claim that its site is criticism, which if established might be a legitimate interest. In the opinion of the Panel, the basic difficulty with using a domain name that is essentially identical to a trademark (especially when that domain name is phonetically identical to the mark) is that in most cases the domain name, because of its nature, will be perceived by the public as being in some manner authorized by the trademark owner. Essentially, by adopting that domain name the registrant is making a false representation to the world as to who it is. While, of course, the Respondent is free to exercise its freedom of speech, the Panel finds it very problematic that it does so while misrepresenting itself as the Complainant. See for example Aspis Liv Försäkrings AB v. Neon Network, LLC, WIPO Case No. D2008-0387. Consumers can land on the Respondent’s website quite easily through typing errors or simply because they thought that the Complainant’s name is spelled with an additional “e”.
In contrast to the Respondent’s point of view, it can still continue criticizing the Complainant through other domain names that are just as good for its purposes. (Indeed, it already appears to be doing so using the <bowlmorsucks.net> domain name, which is not the subject of these proceedings). However, so far as the <bowlmore.net> domain name is concerned, the Respondent has intentionally registered a domain name that is essentially identical to the mark in which the Complainant has rights and as a consequence, use of that domain name, even in connection with a genuine criticism site, does not provide the Respondent with a right or legitimate interest for the purposes of the Policy.
C. Registered and Used in Bad Faith
There is no suggestion in this proceeding that the disputed domain name was registered for any purpose other than to function as a genuine criticism site. In the circumstances, it is somewhat difficult to characterize the activities of the Respondent within any of the categories of circumstances evidencing bad faith set out at paragraph 4(b) of the Policy. However, in the opinion of the Panel even though the Respondent’s activities cannot be said to fall within any of the specific categories identified in paragraph 4(b), its registration and use of the disputed domain name are still in bad faith.
A similar conclusion was reached by the panel in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776. After noting that the list of circumstances set out in paragraph 4(b) was not exclusive, it went on to quote with approval the following passage from the decision in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376:
“In assessing ‘bad faith’ for the purpose of the Policy, the motivation of the [Respondent] is all-important. In this case, the motivation is clear. As the Complainant claims in one part of the Complaint and as the Respondent expressly admits in the Response, the Domain Name “was registered for the purpose of criticizing the Complainant, its business and activities.” The Panel accepts that that was the Respondent’s intention. In so saying, it is also clearly the case that, as the Respondent stated in its letter of February 12, 2001, an important aim of the campaign in which the Domain Name was to be used was to stop nuclear processing. Necessarily, if successful, that would cause serious disruption and damage to the Complainant’s business.
In short, what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trademark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website.
Had the Respondent been a competitor, there can be no doubt that its behaviour would have come within the terms of paragraph 4(b)(iii) of the Policy. Had the Respondent been acting “for commercial gain”, there can be no doubt that its behaviour would have come within the terms of paragraph 4(b)(iv) of the Policy.
In this Case, the Respondent is neither a “competitor” of the Complainant nor is it acting for “commercial gain” in the ordinary sense of those words. However, while the Panel recognizes the Respondent’s right to campaign and to conduct its campaigns by way of the Internet, the Domain Name is not necessary for that purpose. Moreover, registration of a domain name comprising the name and trademark of another and specifically with a view to causing damage and disruption to that other cannot be right, still less where the use of the Domain Name will trick Internet users intending to visit the trademark owner’s site into visiting the registrant’s site. The Panel therefore finds that the Domain Name was registered in bad faith”.
Similarly, in Banque Cantonale de Genève v. Primatex Group S.A., WIPO Case No. D2001-0477, the panel stated in explaining its finding of bad faith registration and use:
“Although not specifically mentioned as an indication of bad faith, it is the Panel’s belief that the misleading domain name as well as the other elements mentioned above are indications of bad faith in the registration and use of the Domain Name… By deliberately using Complainant’s trademark as a designation for its protest site without, at the same time, adding a component identifying the true nature of the website, Respondent created a likelihood of confusion with Complainant. In addition, by not designating its protest site as a ‘…sucks’ site, or similarly reflecting the character of protest in the chosen domain name, a definite risk was created that Respondent’s website is attracting Internet users, in particular bank clients and other persons interested in [the] bank’s services, who may not wish to be targeted by a protest site. These people would not knowingly follow a ‘…sucks’ link on the Internet or any ‘…sucks’ hits found through search engines.”
In Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372, another protest site case, the majority of the panel simply stated that given its finding that the respondent had deliberately registered the domain names to suggest to Internet users a link to the complainant that it was “compelled to find that the Domain Names were registered and are being used in bad faith”.
Additionally, to let the Respondent rely on his free-speech argument here would be contrary to the Policy’s intent since the Respondent intentionally tries to divert the Complainant’s customers to its own site. The Respondent misleads and confuses the public and customers of BOWLMOR for its own advantage and to the harm of the Complainant.
Furthermore, it has come to the knowledge of the Panel that the disputed domain name <bowlmore.net> is no longer being used by the Respondent (or anybody else) falsely allowing the Complainant’s customers to believe that the BOWLMOR brand might be in financial trouble or might have even ceased to exist.
For these reasons, the Panel finds that there was bad faith registration and use in this case and the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
The specific circumstances of this case were central in allowing the Panel to reach a unanimous finding. In essence this is not merely a website that provides legitimate criticism about another’s business. Here, the Respondent has gone beyond legitimate fair use to use a typo-squatting domain name that is deliberately confusing with the Complainant’s trademark, which is used by Complainant as the domain name for its website. This conduct is calculated to divert Internet traffic, disrupt the Complainant’s business, and cause economic harm to the Complainant in a manner that goes beyond mere legitimate criticism.
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 <bowlmore.net> be transferred to the Complainant.
Maxim H. Waldbaum
Matthew S. Harris
Date: January 13, 2014