WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Network Solutions, LLC v. KerryWeb Enterprise, Inc.
Case No. D2006-1560
1. The Parties
The Complainant is Network Solutions, LLC, Herndon, Virginia, United States of America, represented by the Office of the General Counsel of Network Solutions, LLC at the same address.
The Respondent is KerryWeb Enterprise, Inc., Santa Fe Springs, California, United States of America.
2. The Domain Names and Registrar
There are five disputed Domain Names:
Each of the Domain Names is registered with the same Registrar, OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2006. On December 12, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for each of the Domain Names and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 December 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 29, 2007. 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 a Virginia limited liability company that was the first registrar of Internet domain names. It continues to act as a leading domain name registrar, and it offers an array of related products and services such as electronic mail services, website development and hosting, web forwarding, online security and authentication solutions, and online sales and marketing applications.
The Complainant owns numerous registered trademarks in the United States and other countries for the marks NETWORK SOLUTIONS and NETWORKSOLUTIONS (collectively, the “NETWORK SOLUTIONS marks”) in connection with networked computer software and related services. United States trademark registration number 1330193 was issued in April 1985 to the Complainant’s predecessor, showing first use in commerce in November 1979. The Complainant operates a website at “www.networksolutions.com”, which was registered to the Complainant’s predecessor in April 1998 and has been continuously used since in the business of the Complainant and its predecessor.
The Complainant states without contradiction that it spends millions of dollars each year to advertise and promote the NETWORK SOLUTIONS marks. In addition, as the Complainant is one of the oldest and largest providers of domain name registration and related services, its marks are indisputably familiar to millions of customers in the United States and worldwide.
The Respondent KerryWeb Enterprise, Inc. did not reply to the Complaint. The Domain Name registrations currently name this company as the registrant, at a California address. However, according to the online database operated by the California Secretary of State, no corporation by that name is registered to do business in the State of California.
According to the Registrar’s WHOIS database, three of the Domain Names were originally registered to Steve Kerry / North West Enterprise, Inc. in May 2001. The Domain Name <wwwnetworksolutions.net> was also registered to Steve Kerry / North West Enterprise, Inc., in April 2004. The remaining Domain Name, <networksolutionis.net>, was originally registered to North West Enterprise, Inc. in February 2006. The Respondent KerryWeb Enterprise, Inc. was shown as the “Registration Service Provider” for each of the Domain Names, with contact information at a postal address on Telegraph Road, Santa Fe Springs, California – the same postal address given for Steve Kerry as the registrant. By November 2006, shortly after the Complainant sent a cease-and-desist letter, the name of the registrant had been changed for each of the five Domain Names to KerryWeb Enterprise, Inc., which is therefore shown as the Respondent in this proceeding. The postal address of the registrant is unchanged, as are the administrative, billing, and technical contacts for each of the Domain Names.
Given these facts, and absent any contrary explanation from the Respondent, the Panel concludes that the Respondent is more likely than not simply a business name or alter ego for Steve Kerry.
North West Enterprise, Inc. was previously shown as the registrant of one of the Domain Names, and it was named along with Kerry as registrant of the others. Its postal address, as displayed on the WHOIS database, was the same as that given for the current Respondent. Like the Respondent, North West Enterprise, Inc. does not appear to be a company currently registered to do business in California. (The state corporations database shows that a corporation by that name was formerly registered in California but has since been dissolved.)
Steve Kerry of Telegraph Road, Santa Fe Springs, California has been named as a respondent, or as the principal or real party in interest behind the respondent, in several Policy proceedings. It appears from these decisions that Steve Kerry has variously employed “North West Enterprise, Inc.”, “North West Enterprise”, “South East Enterprise, Inc.”, and “WWW Enterprise, Inc.” as trade names in a business of registering numerous domain names and then offering them for sale or using them for parking websites featuring sponsored advertising links.
In Alberto-Culver Company v. North West Enterprise, Inc, WIPO Case No. D2006-0495, the uncontested Complaint alleged that over 35,000 domain names, many of them containing “typographical errors of famous marks”, had been registered in the name of North West Enterprise, Inc. The panel in that case noted that “Steve Kerry d/b/a North West Enterprise, Inc. of Santa Fe Springs, California, United States of America, has been named a respondent in over 15 administrative proceedings under the Policy, all of which resulted in transfer of the disputed domain names”, citing cases mentioned in Save the Children Federation, Inc. v. Steve Kerry dba North West Enterprise, Inc., WIPO Case No. D2006-0388. More recent Policy decisions involving Steve Kerry and one or more of his several alter egos include Columbia Pictures Industries, Inc. v. North West Enterprise, WIPO Case No. D2006-0951; Choice Hotels International, Inc. v. WWW Enterprise, Inc., Nat. Arb. Forum Claim No. FA0609000797520; Choice Hotels International, Inc. v. Steve Kerry d/b/a North West Enterprise, Inc., Nat. Arb. Forum Claim No. FA0609000796347.
Each of the Domain Names at issue here resolves to a parking website headed only with the Domain Name and with no copyright notice or other information about the operator of the website. Each website displays third-party advertising links under various “Popular Categories” (such as “Travel” and “Finance”), as well as “Popular Links” in the left frame. The first links in both sections are to the Complainant’s website. The Complainant asserts, without contradiction, that Internet users selecting these “sponsored links” (including those to the Complainant’s own website) automatically generate click-through advertising revenues paid to the Respondent as the operator of the originating website.
Counsel for the Complainant sent a cease-and-desist letter to Steve Kerry and North West Enterprise, Inc. on October 3, 2006. There was no response, except that the name of the registrant was changed for all five Domain Names in the following month. The Respondent has also not replied to notices in this proceeding from both the Complainant and the Center.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are confusingly similar to its registered NETWORK SOLUTIONS marks. It argues that the Respondent has no rights or legitimate interests in those marks and that the Respondent registered and used the Domain Names in bad faith, in a classic case of “typosquatting”. The Complainant contends that such typosquatting fits the Policy examples of bad faith by depriving the Complainant of domain names corresponding to its marks, disrupting its business, and diverting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under Paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
As in other cases where a respondent fails to reply, the Panel must still satisfy itself that the Complainant in this proceeding has met its overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts must provide a sufficient prima facie basis for finding identity or confusing similarity with the Complainant’s mark and then for inferring that, more probably than not, the Respondent has no right or legitimate interest in the Domain Names and has registered and used them in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
A. Identical or Confusingly Similar
The Complainant indisputably owns registered NETWORK SOLUTIONS and NETWORKSOLUTIONS trademarks and has not authorized the Respondent (or Steve Kerry) to use those marks.
For Policy purposes, spaces between words and the addition of a top-level domain name (e.g., “.com” or “.net”) in the Internet address are both immaterial in assessing identity or confusing similarity. They are not distinctive features of the name in the context of the domain name system, where spaces are not permitted and a top-level domain name must always be included in the address. Ignoring those features, then, the Panel finds as follows:
The Domain Name <networksoluotions.com> is identical to the Complainant’s marks except for the addition of an additional letter “o”.
The Domain Name <networksolutionis.com> is identical to the Complainant’s marks except for the addition of an additional letter “i”.
The Domain Name <networksolutionis.net> is also identical to the Complainant’s marks except for the addition of an additional letter “i”.
The Domain Name <networksolutionse.com> is identical to the Complainant’s marks except for the addition of an additional letter “e”.
The Domain Name <wwwnetworksolutions.net> is identical to the Complainant’s marks except for the addition of the letters “www”.
The similarity of each of the Domain Names to the Complainant’s marks is confusing. Each of the Domain Names is nearly identical to the Complainant’s marks (which are also used in the Complainant’s own domain name) and mimics the result of a simple typographical error in entering an address in a web browser or a query in a search engine. Four of the Domain Names consist of the addition of a single letter, and none of these additions produces a meaningful word or phrase. The fifth Domain Name is also meaningless but corresponds to the reportedly common typographical error of neglecting to place a period between “www” and the desired domain name in the address line of a browser.
The Panel concludes that the Complainant has established the first element of the Policy Complaint.
B. Rights or Legitimate Interests
The Complainant asserts without contradiction that it has not authorized the Respondent to use the NETWORK SOLUTIONS or NETWORKSOLUTIONS marks.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The record does not suggest that any of the circumstances listed above are present here. The Domain Names resolve to parking websites with presumably paid advertising links. Nothing on these websites indicates that the Respondent has ever been known by a name corresponding to any of the Domain Names, or has ever used them in connection with a legitimate business offering or noncommercial use.
Employing domain names to display pages filled with sponsored advertising links, or registering and reselling domain names, could both in some circumstances represent the bona fide offering of goods or services. That is not the case here, however, where the Domain Names are comprised neither of dictionary words nor the Respondent’s own name or marks but instead closely imitate the Complainant’s famous and distinctive marks.
Links on the Respondent’s websites to the Complainant’s website also do not establish legitimate use of the Complainant’s marks by the Respondent as a reseller. The Respondent does not itself resell the Complainant’s products or accurately disclose its relationship to the Complainant, and the Respondent uses the Complainant’s marks in Domain Names that advertise the goods and services of many other parties. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Despite a cease-and-desist letter from the Complainant and notice of the Complaint in this proceeding, the Respondent has not come forward with any asserted rights or legitimate interests in the Domain Names. In the absence of contradictory evidence, the Panel is entitled to draw a negative inference from that default (Rules, paragraph 14(b)). The Panel concludes, therefore, that the second element of the Policy Complaint is satisfied.
C. Registered and Used in Bad Faith
The Complainant charges that the Respondent registered and used the Domain Names in bad faith as described in three of the examples listed in the Policy, paragraph 4(b):
“(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel is not persuaded that paragraph 4(b)(ii) and (iii) strictly apply to these circumstances. It is probable that the Respondent is a fictitious name or alter ego for Steve Kerry, who has indeed engaged in a pattern of registering domain names that are slight variations of famous marks. However, the Complainant has not been prevented from using a domain name that exactly corresponds to its NETWORK SOLUTIONS marks. Nor is there evidence that the intent was primarily to disrupt the Complainant’s business for competitive purposes.
Paragraph 4(b)(iv) is very pertinent, however, to the circumstances of this case. It is difficult to imagine any legitimate explanation for selecting the five otherwise nonsensical Domain Names, each corresponding to a simple typing error in entering an address or search query seeking the Complainant. The fame of the Complainant’s marks and business, and the multiple misspelled versions of its marks in the Domain Names at issue, suggest that the Respondent (or Steve Kerry) was very much aware of the Complainant’s marks and meant to exploit them by diverting Internet users seeking the Complainant’s websites who happened to read or type carelessly. Commercial gain seems to be the object of the diversion, since the Domain Names take Internet users to websites with paid advertising links. As described above, several Policy panels have similarly concluded that Kerry engaged in such “typosquatting”, a classic technique for creating a likelihood of confusion with famous marks by registering domain names with deliberate typographical errors and thereby diverting Internet users for commercial gain. That appears to have been the intention here, surrounding a famous mark with several Domain Names representing slight variations on its spelling.
The list of examples of bad faith in Policy, paragraph 4(b) is non-exhaustive, and there are other circumstances in this case that indicate bad faith. The fact that Policy panels have repeatedly (and recently) found that Steve Kerry engaged in a pattern of typosquatting permits an inference – which he has done nothing to rebut – concerning his intentions in this instance. His failure to respond either to the cease-and-desist letter or to this Complaint also suggests that there was no good-faith reason to select and use these particular Domain Names. See Encyclopedia Britannica v. Zucarini, WIPO Case No. D2000-0330 (inferring bad faith from a failure to respond in any way to allegations of trademark infringement); Advance Magazine Publishers, Inc. v. ChinaVogue.com, WIPO Case No. D2005-0615. Changing the name of the registrant shortly after the cease-and-desist letter was delivered (and to a name that does not appear to correspond to a legal entity) may also represent an attempt at “cyberflying”, registration changes designed to hinder the prosecution of a judicial or Policy complaint. See, e.g., GoDaddy.com, Inc v. Earl Jones, WIPO Case No. D2006-1067. All of these events are suggestive of bad faith.
The Panel concludes that the inference of bad faith in the registration and use of each of the Domain Names is warranted on this record.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <networksoluotions.com>, <networksolutionis.com>, <networksolutionis.net>, <networksolutionse.com>, and <wwwnetworksolutions.net> be transferred to the Complainant.
W. Scott Blackmer
Dated: February 12, 2007