WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
New Dream Network, LLC v. Yuanjin Wu
Case No. DCO2010-0013
1. The Parties
The Complainant is New Dream Network, LLC of Brea, California, United States of America, represented by Intellectual Property Law Offices of Joel Voelzke, United States of America.
The Respondent is Yuanjin Wu of Kunshan, Jiangsu, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <dreamhost.co> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2010. On August 31, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 on September 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on September 30, 2010. 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 owns a registered mark for DREAMHOST. Its mark is registered in the United States, the European Community and Canada. In the United States the Complainant’s mark is registered on the principal register of the USPTO, with a filing date in 1999, for the services of hosting web sites of others on a computer server that is part of a global computer network; and for the services of registration of domain names for identification of users on a global computer network.
The disputed domain name was registered on July 20, 2010.
Having submitted no Response, the business of the Respondent is not known, except to the extent outlined in the Complaint.
5. Parties’ Contentions
The following is taken from the Complaint.
The Complainant says that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates the Complainant’s trademark exactly. The Complainant says that the disputed domain name is confusingly similar to the Complainant’s DREAMHOST trademark because <dreamhost.co> is a common typographical error of <dreamhost.com>, which is the Complainant’s main website. The Respondent’s domain is only a single letter removed from the Complainant’s main website.
The Complainant says that it has been in the website hosting business since about 1997, and has built a large and successful website hosting and domain registration business under the service name Dreamhost, located on the Internet at <dreamhost.com>. The Respondent established a “rewards account” with the Complainant, by which the Respondent will be paid money for each new customer whom he refers to the Complainant via click-through, and established an account at the Complainant’s site. Rewarding existing customers for referring new customers is one of the methods by which the Complainant promotes its DREAMHOST website hosting service (‘Dreamhost’).
The Complainant says that the Respondent also registered the disputed domain and now redirects that URL to his “rewards account” URL page at Dreamhost. The result is that every time a user who is attempting to reach the Complainant at <dreamhost.com> mistakenly omits the last “m” and types “dreamhost.co”, that user will get redirected to <dreamhost.com>, and if that person signs up as a new customer of the Complainant, the Respondent will receive a reward referral fee from the Complainant. As evidence, the Complainant provides a copy of computer routing data showing that the disputed domain name redirects to the Respondent’s rewards account URL.
From this, the Complainant argues that the Respondent is using the disputed domain only for the purpose of intercepting users who are trying to find “dreamhost.com”, and monetizing that traffic for himself. The Complainant says that the Respondent is not offering any legitimate goods or services at the disputed domain that would give the Respondent any legitimate rights to the disputed domain name. The Respondent is not using the domain for education, criticism, parody, comparison, or any other fair use of the Complainant’s trademark.
In relation to bad faith, the Complainant refers to its arguments in relation to the Respondent’s alleged lack of rights or legitimate interests. The Complainant says that Respondent’s acts constitute intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the <dreamhost.com> domain name and the DREAMHOST trademark. As additional evidence of the Respondent’s bad faith the Complainant states that the Respondent has engaged in serial and systematic typosquatting with respect to other domains for financial gain, and refers to, for example, <googlle.com.mx>, <hotifle.com> and <tinysepck.com>.
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must first show that it has rights in a mark. The Complainant has demonstrated such rights by providing evidence of its registrations for DREAMHOST. The Complainant must also establish that the disputed domain name is identical or confusingly similar to its mark. The Panel finds that the disputed domain name is relevantly identical to the Complainant’s mark, as that mark is entirely incorporated in the disputed domain name. It is well-established in prior panel decisions under the Policy that the entire incorporation of a complainant’s mark in a domain name is sufficient for a finding in this respect. See e.g. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one, and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
The Complainant argues that the Respondent has engaged in a form of ‘typosquatting’, because the disputed domain name misspells the Complainant’s principal website at “www.dreamhost.com”. Because of the Panel’s finding that the disputed domain name is relevantly identical to the Complainant’s mark, it is strictly unnecessary for the Panel to consider arguments as to typosquatting. However, this argument is relevant to the issues of rights or legitimate interests (paragraph 4(a)(ii) of the Policy) and bad faith (paragraph 4(a)(iii) of the Policy), and as such the Panel has considered it.
Typosquatting is the practice of misspelling an element of a mark, and has consistently been regarded as creating domain names confusingly similar to the relevant mark: see e.g. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627. Panels have also found that the relevant misspelling does not need to be a misspelling of the mark itself – it is sufficient if the misspelling is of a word associated with the mark. See e.g. Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994, in which the Panel discusses typosquatting in a case where the misspelling related to a descriptive word linked to the trademark even though the mark was accurately reproduced. In this case, the Complainant’s argument is that the misspelling relates to the gTLD extension, rather than its mark per se, even though the Complainant’s mark is accurately reproduced.
While usually the domain name extension is disregarded for the purpose of comparison under paragraph 4(a)(i) of the Policy, that standard approach does not prevent a Panel finding, in relevant circumstances, that confusion might be created by a ‘misspelling’ of a gTLD. The difficulty is determining whether the circumstances indicate that there is, in fact, a deliberate misspelling, rather than a legitimate registration of a domain name in a particular ccTLD space. In this case, the Panel considers that the circumstances suggest a deliberate misspelling. There is no evidence of any connection between the Respondent and Colombia, to which the ccTLD relates. The Respondent filed no Response against the Complainant’s allegations against it. Based on the provided evidence in the Complaint, it seems that the Respondent established a ‘rewards account’ to benefit from the redirection of Internet traffic to the Complainant’s “www.dreamhost.com” website, via the disputed domain name. Assuming this to be so, in these circumstances, the Panel cannot conceive of any reason why the Respondent would register the disputed domain name if not to capitalize on misspellings of the gTLD relating to the Complainant’s mark. Following the reasoning in Ross-Simons, Inc. v. Domain.Contact, supra, the Panel considers this to be a form of misspelling which relates to the ccTLD linked to the trademark and, as such, a misspelling designed to create confusing similarity with the Complainant’s mark.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent provided no Response to the Complainant’s allegations against him and, as such, has not rebutted the Complainant’s argument that he has no rights or legitimate interests in the disputed domain name. There is no evidence in the case file that would suggest the Respondent has such rights. Rather, the evidence of typosquatting (discussed above and below) is suggestive of the Respondent’s lack of rights or legitimate interests in the disputed domain name. For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which, if found by the Panel, are taken to be evidence of bad faith. One of them (paragraph 4(b)(iv) of the Policy) is circumstances showing that the Respondent by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The evidence in this case is suggestive of such bad faith. In particular, the Complainant provides evidence to show that the Respondent established a “rewards account” with the Complainant, by which the Respondent would be paid money for each new customer whom he refers to the Complainant via click-through traffic. As such, the Respondent has every incentive to register the disputed domain name to profit from confusion between the disputed domain name and the Complainant’s own website.
As noted above, the disputed domain name is a form of typosquatting. As noted by the Panel in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568, “[t]yposquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with the complainant's mark as to the source’ of the web site”. For these reasons, the Panel also finds that the disputed domain name was registered and used in bad faith, in the way described in paragraph 4(b)(iv) of the Policy.
For all 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 <dreamhost.co> be transferred to the Complainant.
James A. Barker
Dated: October 25, 2010