Complainant is Speechly Bircham LLP of London, United Kingdom of Great Britain and Northern Ireland.
Respondents are Whois Privacy Services (First Respondent), and Reddot, Ltd. (Second Respondent), both of St. Petersburg, Russian Federation.
The disputed domain name <speechleys.com> (the “Domain Name”) is registered with NICCO, Russian Federation (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2008. On December 22, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2008, 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 January 7, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. . Complainant filed an amendment to the Complaint on January 12, 2009 nominating Second Respondent as an additional respondent in the case, and requested that the proceedings be held in the English language. 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 Respondent of the Complaint, and the proceedings commenced on January 16, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 5, 2009. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on February 5, 2009.
The Center appointed Assen Alexiev as the sole panelist in this matter on February 16, 2009. 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.
In relation to the constitution of two Respondents in this administrative proceeding, the Panel noted the following:
The person named as Respondent in the initial Complaint was First Respondent. The Registrar confirmed that the current registrant of the Domain Name is Second Respondent. Both Respondents are located in St. Petersburg, Russian Federation.
Complainant has requested that both of these entities be respondents in this proceeding, and neither of them has objected, or, indeed, filed any Response.
Therefore, and in the lack of any evidence to the contrary, the Panel has decided that First Respondent and Second Respondent are to be regarded as a single Respondent for the purposes of the present proceeding.
In relation to the language of the administrative proceeding, the Panel has noted the following circumstances:
The language of the Registration agreement for the Domain Name is Russian.
The Complaint was submitted in English. Complainant's submission to the Center dated January 12, 2009, contains an email message from Second Respondent to Complainant, dated February 12, 2007, written in English. The analysis of this message shows that Second Respondent has a good command of English.
On January 12, 2009, Complainant requested that the administrative proceeding continue in English. Respondents filed no objections to this request within the time limit fixed for this purpose by the Center, a notification for which was sent to Respondents in both Russian and English languages.
Therefore, on the grounds of Rules, Paragraph 11(a), and Rules, Paragraph 10(a), (b) and (c), the Panel decided that English language be the language of this proceeding, being well understood by both Parties and not putting any of them at a disadvantage.
Complainant is a law firm organized as a limited liability partnership with a principal place of business in London. It was formed in 1974 by the merger of Speechly Munford and Soames with Bircham & Co. Since the merger the name SPEECHLYS has been in common usage to identify the firm both within the legal community and beyond.
Complainant is the owner of the following trademarks registered for the territory of the United Kingdom of Great Britain and Northern Ireland:
- SPEECHLYS, registered on May 25, 2007 with reg. No.2439323, filed on November 23, 2006, for goods and services in International classes 16, 35, 36, 41, and 42; and
- SPEECHLY BIRCHAM, registered on May 25, 2007 with reg. No.2439325, filed on November 23, 2006, for goods and services in International classes 16, 35, 36, 41, and 42.
Complainant has also registered the domain names <speechlys.co.uk>, <speechlys.com>, and <speechlies.com>.
Respondent registered the Domain Name on March 30, 2007.
Complainant submits that the Domain Name is identical or confusingly similar to the registered mark SPEECHLYS in which Complainant has rights.
The trade mark SPEECHLYS has no ordinary meaning in the English language, and is thus inherently distinctive to Complainant.
The Domain Name differs from this mark merely by the addition of the letter “e”. This additional vowel does not significantly affect the appearance of the Domain Name, and has no impact on its pronunciation or conceptual meaning.
Respondent's inclusion of the “e” exploits the likelihood of an Internet user misspelling Complainant's trade mark the so-called “typosquatting”. If the Domain Name is not found to be identical with Complainant's trademark, then the typosquatting employed by Respondent is sufficient to establish confusing similarity between them.
Respondent has no rights or legitimate interests in respect of the Domain Name.
According to Complainant, the webpage returned by the Domain Name contains two distinct features. The first is a banner strip, advertising that the Domain Name is for sale, and the second is a ‘search engine' style display showing what are described as “related searches”. Respondent has not made any legitimate non-commercial or fair use of the Domain Name. Originally, upon arriving at it, the Internet user was redirected to the pornographic website at “www.nattz.com”. Since Complainant wrote to Respondent on November 19, 2008, the redirect to “www.nattz.com” has been disabled. This is evidence that the Domain Name was used to misleadingly divert consumers with intent for commercial gain, and to tarnish the trademark at issue.
Respondent is using the Domain Name to host what appears to be a search engine composed of sponsored links. One of these links uses the SPEECHLYS trade mark to link directly to several legal service providers, none of whom are connected or affiliated with Complainant. This use of the SPEECHLYS trade mark is another example of Respondent's intent to use the Domain Name for commercial gain by misleadingly diverting customers to the sponsored links.
As asserted by Complainant, Respondent has no connection or affiliation with the Complainant. Complainant has not licensed, authorized or otherwise permitted Respondent to use Complainant's trademark in a domain name or in any other manner. Respondent has not been commonly known by the Domain Name.
The Domain Name is not used in connection with a bona fide offering of goods or services. As stated in Fox News Network, LLC v. Warren Reid, WIPO Case No.D2002-1085: “using the Domain Name to mislead users by diverting them to a search engine does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”.
Complainant contends that the Domain Name was registered and is being used in bad faith. It has been acquired primarily for the purpose of selling, renting, or otherwise transferring its registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name. As evidenced by the banner at the top of the associated website, the Domain Name was acquired by Respondent with the primary purpose of selling it. Respondent has clearly stated that it will not entertain purchase offers for less than USD 800 a sum that far exceeds any reasonable out-of-pocket costs related to the Domain Name.
The Domain Name has been registered for sale on “www.sedo.com”, the self styled “global marketplace for buying and selling domain names”, with a minimum acceptable offer set at EUR 500. Offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.
Complainant notes that Respondent's website redirects to a website containing pornographic material. The redirection of traffic to a pornographic site from a domain name incorporating a well-known mark has been held to be evidence of bad faith. See Ferrero S.p.A. v. Jacquez Stade, WIPO Case No. DBZ2003-0002; CCA Industries, Inc. v. Bobly R. Dailey, WIPO Case No. D2000-0148; Ty, Inc., v. O.Z. Names, Respondent, WIPO Case No. D2000-0370.
As an additional element evidencing use in bad faith, the Domain Name is currently hosting what appears to be a search engine where internet users can find a number of sponsored links to various web sites. Thus, Respondent may earn commission whenever an Internet user visits the website and clicks any of the sponsored links. See Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Gianfranco Ferre' S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; et al.
In an email message to Complainant dated January 12, 2009, Respondent offered to transfer the Domain Name to Complainant in exchange of the amount of USD 400.
Respondent did not file a Response.
Pursuant to Policy, Paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondent has registered and is using the Domain Name in bad faith.
By Rules, Paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for Respondent (domain name holder) to retain registration and use of the disputed domain name”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, Paragraph 2(a), and Respondent was given a fair opportunity to present its case.
In the event of a default, under Rules, Paragraph (14)(b): “the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent's default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
Complainant has provided evidence and has thus established its rights in the word trademarks SPEECHLY and SPEECHLY BIRCHAM, registered in the United Kingdom.
It is a common practice under the Policy to disregard gTLDs such as the “.com” section of domain names for the purposes of the comparison under Policy, Paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “speechley” element, which is visually and phonetically very similar to Complainant's SPEECHLY trademark, and to a lesser extent to Complainant's SPEECHLY BIRCHAM trademark.
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights.
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard - that Respondent is not permitted to use Complainant's trademark or to register a domain name incorporating it; that Respondent has not been commonly known by the Domain Name; and that the redirecting of Internet users from Respondent's website to a pornographic website or to competitors of Complainant is not giving rise to rights or legitimate interests of Respondent in it.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
It is well established that once a complainant makes out a prima facie case under Policy, Paragraph 4(a)(ii), the burden shifts to respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.
Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under the Rules, Paragraph 5(b)(i) and 5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules, Paragraph 14). If Respondent had any justification for the registering or using the Domain Name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) - or any other circumstance - is present in its favor.
In fact, the only information available about Respondent is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name.
The WhoIs information contains no evidence of rights or legitimate interests of Respondent in the Domain Name, apart from its rights as registrant of the latter.
As contended by Complainant, the website associated to the Domain Name initially redirected Internet users to a pornographic website, and then was organized as a search engine containing sponsored links to third parties, including some competitors of Complainant. Complainant's SPEECHLY trademark is clearly distinctive and has no ordinary meaning in the English and Russian languages. This being so and Respondent having provided no reasons for its choice of the Domain Name, the Panel is of the opinion that it is likely that Respondent had information about Complainant and its trademark at the time of the registration of the Domain Name, and registered it with Complainant in mind. In this context, the use of the Domain Name for redirecting Internet users to a pornographic website, or to competitors of Complainant, cannot give rise to rights and legitimate interests of Respondent in the Domain Name. This finding is further strengthened by Respondent's message to Complainant of January 12, 2009 (after the notification of the Complaint), whereby Respondent offers to transfer the Domain name to Complainant for a price of USD 400, without claiming any rights in the Domain Name or rejecting any of Complainant's allegations in this proceeding.
Therefore, as the evidence supports the contentions of Complainant, and it is not challenged by Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
For the purposes of Paragraph 4(a) (iii) of the Policy, 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 the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder's website or location.
In the present case, the Domain Name is confusingly similar to Complainant's distinctive trademark SPEECHLY, and Respondent has registered it without having any rights or legitimate interests in it, while very likely having been aware of the goodwill of the trademark and its commercial value. Then, Respondent used the Domain Name to redirect Internet users to a pornographic website, or to advertise competitors of Complainant. Had there been a plausible explanation of Respondent's actions, it should have come from Respondent. However, other than offering to transfer the Domain Name to Complainant in exchange of USD 400, Respondent chose to remain silent in this administrative proceeding.
Therefore, the Panel is prepared to accept that Respondent has used the Domain Name to attract Internet users to a website where services of competitors to Complainant are offered, or to redirect them to a pornographic website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website and the products on this website. This constitutes bad faith registration and use of the Domain Name under Policy, Paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408.
In addition, there is evidence before the Panel that Respondent has offered to transfer the Domain Name to Complainant against the payment of USD 400. It is obvious that this amount is significantly in excess of the reasonable out-of-pocket costs of Respondent associated to the Domain Name, which is evidence of Respondent's bad faith under Policy, Paragraph 4(b)(i).
Therefore, and in the absence of any contentions or evidence to the contrary, the Panel concludes that Complainant has established the third element of the test under Policy, Paragraph 4(a).
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 name <speechleys.com> be transferred to Complainant.
Dated: February 28, 2009