WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Populous Holdings, Inc. v. Matthew Casilla, Pupolous

Case No. D2014-0736

1. The Parties

The Complainant is Populous Holdings, Inc. of Kansas City, Missouri, United States of America (the “USA”), represented by Lathrop & Gage LLP, USA.

The Respondent is Matthew Casilla, Pupolous of Zurich, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <pupolous.com> is registered with Vautron Rechenzentrum AG (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2014. On May 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

According to information received from the Registrar, the language of the registration agreement for the disputed domain name is German. Therefore, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings. On May 16 2014, the Complainant submitted a request for English to be the language of the administrative proceedings, to which the Respondent did not reply.

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 the Respondent of the Complaint, and the proceedings commenced in English and German on May 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2014.

The Center appointed Alexander Duisberg as the sole panelist in this matter on June 23, 2014. 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 an architectural firm providing architectural and design services. The Complainant owns several US service marks POPULOUS (registered September 15, 2009, in classes 35, 37, 41, 42 and 45), the Community Trademark POPULOUS (registered December 23, 2012, in classes 35, 37, 39, 41, 42, 44) as well as the Swiss trademark POPULOUS (registered August 27, 2009, in classes 35, 37, 41, 42).

The Complainant also owns the domain name <populous.com> since 2001, where the Complainant provides inter alia information about its design services.

The Respondent registered the disputed domain name <pupolous.com> on October 6, 2012. The website does not offer any goods or services, but depicts only a graphic with English subtitles “Creative Design Studio”. The website prominently displays the designation “pupolous” in the same font and color as the mark POPULOUS on the website “www.populous.com”.

The Complainant has sent two letters dated October 24, 2013, and December 20, 2013, to the Respondent. Here the Complainant requested the Respondent to cease and desist using the designation “pupolous” and to delete the domain name <pupolous.com>.

The Respondent did not reply to these letters.

5. Parties’ Contentions

A. Complainant

The Complainant claims to be well known throughout the world for its various design services, including architectural, engineering, interior and graphic design services. By serious advertising and marketing expenses it has achieved a high reputation in this market worldwide.

The Complainant contends that the disputed domain name <pupolous.com> is confusingly similar to the Complainant’s trademark because the letter “o” first appearing in the Complainant’s trademark is transposed with the letter “u” first appearing in the Complainant’s trademark. Additional confusion results because the website associated with the disputed domain name gives the impression that it provides architectural services similar to the services provided by the Complainant. Lastly, the logo of “pupolous” on the disputed domain imitates design and font of the Complainant’s logo POPULOUS on its website “www.populous.com”.

The Complainant compares the case at hand to so-called “typosquatting” cases where the respondent purposefully includes typographical errors in the trademark portion of a disputed domain name to divert Internet users who make such typographical errors. The Complainant refers to previous UDRP decisions which state that “typosquatting” is a strong indication for a confusing similarity, the lack of rights or legitimate interests of the respondent and for bad faith registration and use.

According to the Complainant, the Respondent has never been known, commonly or otherwise, by the disputed domain name or by the trademark or by any name corresponding to it, prior to the registration of the disputed domain name. The Complainant argues that the Respondent is not making a noncommercial or a fair use of the disputed domain name since Internet users are likely to mistakenly associate the Respondent’s domain name with the Complainant’s services.

The Complainant requests that the Panel orders that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(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.

The Panel acknowledges the consensus view - as set forth in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) - that a respondent’s default to respond to the complaint does not automatically result in a decision in favor of the complainant. The complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding.

It is established case law, however, that it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production of evidence to the respondent (see inter alia, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094 (<championinnovation.com>); Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (<croatiaairlines.com>); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>)).

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <pupolous.com> is confusingly similar to the service marks POPULOUS of the Complainant, and thus establishes the requirement of paragraph 4(a)(i) of the Policy to be met.

The Complainant has demonstrated that it had been the legitimate owner of the trademark POPULOUS in several countries for many years, before the disputed domain name <pupolous.com> was registered. The addition of the generic top-level domain (“gTLD”) “.com” is insufficient to distinguish the disputed domain name from the Complainant’s trademark. The disputed domain name <pupolous.com> merely differs from the well-known trademark POPULOUS in the transposition of the second and fourth letter “o” and “u”.

In the view of the Panel, the transposition of two letters does not influence the overall impression of similarity between the disputed domain name “pupolous” and the trademark POPULOUS, as these are clearly only minor visual and aural differences between the two. The confusing similarity between the disputed domain name and the trademark has not been challenged by the Respondent. The likelihood of confusion is given irrespective of a missing conceptual similarity, in light of the word “pupolous” actually having no meaning in the English language.

The last point in particular provides considerably strong evidence that, in the case at hand, the transposition of the two letters constitutes a practice of so called “typosquatting”. In this regard, reference is made to various UDRP panel decisions indicating that “typosquatting” domain names are characterized as providing “essential” or “virtual” identity respectively being confusingly similar to the trademarks that have been “squatted” (see, inter alia, Comerica Incorporated v. Kevin Wall and Domains By Proxy, LLC, WIPO Case No. D2013-1218; VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314; Edmunds.com, Inc v. Yingkun Guo,dba This domain name is 4 sale, WIPO Case No. D2006-0694; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol¸ WIPO Case No. D2001-0489).

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

The Panel notes that the Complainant provided in the Complaint prima facie evidence showing that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(c) of the Policy. In particular, the Respondent appears neither to have been commonly known by the disputed domain name (despite the information provided to the Registrar at the time of registration of the disputed domain name), nor to have acquired trademark or service mark rights which bear the designation “pupolous”.

There is no indication of a noncommercial or fair use of the disputed domain name. The Panel finds that the “typosquatting” at hand is indeed the opposite of a legitimate noncommercial or fair use of a domain name (see Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554). The disputed domain is rather intended to misleadingly divert consumers, since the Respondent’s designation “PUPOLOUS™” uses the same color scheme and logo font as the Complainant’s POPULOUS logo on its website “www.populous.com”. The diversion of consumers cannot be excluded by the mere fact that the website does not offer further content such as by displaying goods and services for purchase, click-through links to third party websites or advertisements of third parties.

Against this background, the Panel sees no indications for a bona fide offering of goods or services.

In line with the foregoing, the infringing use of the disputed domain name cannot constitute a bona fide use of the disputed domain name (see Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583). As a result, the engagement in “typosquatting” is to be deemed further evidence that the Respondent has no rights and legitimate interests in the disputed domain name <pupolous.com> (see, inter alia, Comerica Incorporated v. Kevin Wall and Domains By Proxy, LLC, supra).

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name has been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

The Panel notes that the disputed domain name <pupolous.com> is an obvious misspelling of the Complainant’s mark POPULOUS. The website at the disputed domain name contains information about services which are similar with the ones provided by the Complainant. Lastly, the design of the logo of “pupolous” is virtually identical with the design of the Complainant’s logo of POPULOUS on the website of “www.populous.com”.

By that, the Complainant has shown that the Respondent was more likely than not fully aware of the mark POPULOUS when registering the disputed domain name. The Respondent, however, did not deliberately choose the disputed domain to differentiate its services from those of the Complainant. The Respondent rather intended to create a likelihood of confusion with the Complainant’s trademark to divert Internet users who commit typographical errors. By that, the Respondent pretends to give the impression to have a commercial relationship or affiliation with, respectively the endorsement or authorization from the Complainant, which however has never existed as a matter of fact. Pursuant to paragraph 4(a)(iii) of the Policy, the Panel determines that such registration and use of the disputed domain has to be deemed in bad faith.

The Panel hence finds that the “typosquatting” at hand is to be regarded as per se evidence of the registration and use of the disputed domain name in bad faith. The Panel refers in this regard to very similar findings in various UDRP panel decisions (see Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302; Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816).

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 <pupolous.com> be transferred to the Complainant.

Alexander Duisberg
Sole Panelist
Date: July 7, 2014