The Complainant is Intersections Inc. of Virginia, United States of America, represented by Venable, LLP, United States of America.
The Respondent is Privacy Ltd. Disclosed Agent for YOLAPT, Domain Admin of the Isle of Man, United Kingdom of Great Britain and Northern Ireland, Whois Privacy Services Pty Ltd. of Brisbane, Australia.
The disputed domain name <identitygaurd.com> is registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2010. On March 18, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On March 19, 2010, Fabulous.com 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 March 24, 2010 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 March 26, 2010. The Center verified that 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 on March 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 23, 2010.
The Center appointed James Bridgeman as the sole panelist in this matter on May 3, 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.
The Complainant provides services relating to identity theft insurance, credit management, credit monitoring, identity theft protection, credit educations, fraud resolution assistance, credit card registration services, credit card cancellation, personal data and password storage and protection services, computer software and downloadable computer software for identity theft and fraud protection and has been established in business using the IDENTITY GUARD mark since 1999.
The Complainant is the owner of a number of USPTO registrations for the IDENTITY CARD mark with and without design, the oldest of which is United States Federal Trademark IDENTITY GUARD, registration number 2,689,654 registered on February 25, 2003 in international class 035 in respect of : “credit card registration services” claiming a first use in commerce in the year 1999 and international class 036 in respect of “credit card cancellation services for lost of stolen cards; credit card monitoring services for lost or stolen cards” also claiming a first use in commerce in the year 1999.
There is no information available about the Respondent except that provided in the Complaint and the registration information available on the WhoIs. The disputed domain name was registered on March 12, 2004 and is being used as the address of a portal site which on the balance of probabilities has been established to generate click-through income. A print-out of a page from the Respondent's website provides hyper-linked search categories for third party sites including “Identity Theft Protection”, “Identity Guard”, “Free Credit Score Check Credit Report”, “Online Credit Report Tickets” as well as “Air Travel Discount Cheap Hotel” and “Cheap Car Rental Auto Insurance” some of which are on the face of it categories in direct competition with the Complainant.
The Complainant submits that it is a leading provider of identity theft protection services and credit bureau information services and has been actively engaged in this business since 1999.
IDENTITY GUARD is the brand name for the Complainant's identity theft protection and credit bureau information services, which are directed both to individual consumers and to business clients that wish to market those services to consumers.
The Complainant submits that it first used the IDENTITY GUARD service mark in 1999 and has used it continuously since then. The service mark has been used in connection with identity theft insurance, credit risk management, credit monitoring, identity theft protection, credit educations, fraud resolution assistance, credit card registration services, credit card cancellation, personal data and password storage and protection services, computer software and downloadable computer software for identity theft and fraud protection.
The Complainant claims to have been the owner of the Internet domain name <identityguard.com> since 1999 and operates a website at the “www.identityguard.com” address providing consumers with information about the various services offered.
The Complainant additionally submits that its services are advertised through a variety of media available through the Complainant's business clients, including in store collateral advertising displays, newsletters, direct mail, brochures, and handouts.
The Complainant claims to have built up substantial consumer goodwill for its many services and programs directed to credit management and identity theft protection services during the past several years, including its IDENTITY GUARD service and as a result of the Complainant's extensive advertising and promotion of its IDENTITY GUARD service, the public has come to associate the IDENTITY GUARD mark with the Complainant.
The Complainant submits that it has taken measures to protect its rights and good reputation in its IDENTITY GUARD mark by applying for and maintaining the above listed United States Federal Trademark registrations. Furthermore the Complainant claims to have filed civil complaints in Federal Court and to have filed opposition proceedings in the United States Patent & Trademark Office against confusingly similar marks.
The Complainant submits that the disputed domain name is identical or confusingly similar to the IDENTITY GUARD service mark in which the Complainant has rights as described above.
The Complainant submits that the domain name at issue, <identitygaurd.com>, is a typographical error of the Complainant's trademark, with the letters “u” and “a” in the “guard” element switched to read “gaurd.” The Complainant further submits that a typographical error of a mark does not remove the likelihood of confusion. In this regard the Complainant cites the decision of the panel in Amazon. com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 (<amazoh.com>, <qmqzon.com> and <smszon.com> confusingly similar to AMAZON), citing Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150 (<qachovia.com>, <wachpvia.com> and <wscpovia.com> confusingly similar to WACHOVIA due to common mistyping on standard “qwerty” keyboard). As WIPO UDRP panels have explained, a “Respondent's registration of domain names that constitute common mistypings of the Complainant's mark appears to be deliberate — a practice known as ‘typosquatting'.”
The Complainant submits that the practice known as “typosquatting” has been explained by the panel in Amazon. com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 in the following terms: “‘[t]yposquatting' involves the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark”. “In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by internet users seeking the complainant's commercial website and divert them to the respondent's website.” Id., citing Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames — For Sale, WIPO Case No. D2001-0094; Telstra Corporation Ltd v. Warren Bolton Consulting Pty. Ltd, WIPO Case No. D2000-1293.
The Complainant submits that in casu, the Respondent has done exactly that: it has registered and is using the disputed domain name to take advantage of a typical typographical error made by Internet users who are seeking the Complainant's website by diverting them to the Respondent's website.
The Complainant complains that the Respondent is using the disputed domain name to resolve to its website which is a “link farm” that provides click-through links to competitors of the Complainant, with links for identity theft protection services, online credit monitoring services and other similar competitive services. In this regard the Complainant refers to printouts from the Respondent's website from January 21, 2010 that have been submitted as an annex to the Complaint.
The Complainant argues that the Internet is a significant vehicle for the Complainant's services, and its websites are a vital part of its corporate online identity and brand. The Complainant operates a website at its <identityguard.com> domain name address that provides consumers with information about the IDENTITY GUARD services offered by the Complainant and provides a link through which consumers can enroll in the services.
The Complainant submits that because of the confusing similarity between the disputed domain name and the Complainant's service mark consumers are likely to believe that the Respondent's website is affiliated with the Complainant, particularly since the Respondent's click-through site features links to similar services as those offered by the Complainant. This is likely to give a consumer the incorrect belief that the sites listed on the Respondent's website are sanctioned by the Complainant, lending a false sense of credibility to those sites, when in reality such an endorsement does not exist.
The Complainant submits that its rights in its IDENTITY GUARD service mark are expansive and predate the Respondent's registration of the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. To the best of the Complainant's knowledge, the Respondent has no rights to any trademark consisting of the term “identity guard” or the misspelling “identity guard” in any country. The Respondent is not known by the trademark IDENTITY GUARD or the misspelling IDENTITY GAURD. The Respondent is not a provider of the Complainant's services. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark, instead, in the Complainant's submission, the Respondent is using the disputed domain name with the intent to mislead and divert the Complainant's consumers to competitors of the Complainant, as well as to disrupt the Complainant's business for its own commercial gain.
The Complainant submits that the disputed domain name resolves to a web portal offering links to websites featuring various sponsored links and links to websites related to, among other things, information related to identity theft protection and credit reporting services. In this regard the Complainant refers to the print-outs of the Respondent's website submitted as an annex to the Complaint. The Complainant argues that such a “click-through site” does not create a legitimate interest in the domain name. In support of this assertion the Complainant cites the decisions of the panels in Charlotte Russe Holding, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0371; Centura Health Corporation v. Jasper Developments c/o domain manager, NAF, Claim Number: FA 0751616 (“Respondent's use of a domain name identical to Complainant's ... mark to redirect Internet users interested in Complainant's services to a website that offers links to services in competition with those of Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii).”).
The Complainant submits that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that on information and belief, the Respondent registered the disputed domain name with knowledge that the Complainant held rights in and to its IDENTITY GUARD mark. According to the information available on a WhoIs search, the Respondent registered the disputed domain name on March 12, 2004, long after the Complainant had acquired exclusive rights in its IDENTITY GUARD trademark.
The Complainant submits that when the Respondent registered the disputed domain name, the Respondent had constructive notice of the Complainant's trademark rights by virtue of the Complainant's United States Trademark Registration Number 2,689,654, registered February 25, 2003 with a first use date of 1999. In support of this argument the Complainant cites the decision of the panel in Wyndham IP Corporation v. Wyndham IP Corporation c/a J Eric Steen, NAF, Claim Number FA 0497808 (Aug. 5, 2005).
Furthermore, the Complainant submits that the Respondent is using the <identitygaurd.com> domain name to link to United States-based identity theft protection and credit monitoring services, which indicates that Respondent was aware of Complainant's rights despite the Respondent providing an Australian WhoIs address.
The Complainant submits that the typosquatting which the Complainant submits the Respondent is engaged is itself evidence that the Respondent has used the disputed domain name in bad faith. The Complainant cites the following statements from the decisions of panels in support of this proposition: “It is well settled under the Policy that the practice of typosquatting, in and of itself, constitutes bad faith registration.” Amazon. com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, citing ESPN, Inc. v. XC2, WIPO Case No. D2005-0444, “Respondent's use of the disputed domain names in an attempt to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement or the Respondent's website” demonstrates that bad faith.
The Complainant submits that use of the click-through site is additional evidence that the Respondent is acting in bad faith. The Complainant submits that the Respondent acquired the confusingly similar domain name for the purpose of monetary gain by providing links to other companies' products and services through a “click-through” scheme, through which the Respondent is presumably profiting. The Complainant submits that such use of a confusingly similar mark for a “click-through” site is itself evidence of bad faith. The Complainant cites the following decisions of panels in support of its argument: Charlotte Russe Holding, Inc., v. Whois ID Theft Protection, WIPO Case No. D2007-0371 (“Prior panel decisions have consistently recognized that the registration of domain names which are confusingly similar to complainant's trademarks, and which are then used to operate “click-through” sites, will be considered to be evidence of bad faith.”) (citing WeddingChannel. corn, Inc. v. Helois Lab, WIPO Case No. D2006-0021; Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658); and Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430 (linking a domain name to a link portal does not constitute a bona fide offering of services).
The Complainant further submits that it appears that the Respondent is in the business of making money by acquiring Internet domain names that generate traffic in order to derive revenue. The reckless registration and profiting from such domain names with the express intent of collecting cash unless and until the brand owner goes to the trouble of filing a complaint is clearly a bad-faith exploitation of the Complainant's rights and a clear violation of the Policy. Such use by companies such as the Respondent or other large Internet domain name warehousers and cyber-pirates has always been found to be bad faith use under the Policy. In this regard the Complainant cites the decisions in Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087 (“when a domain name is so obviously connected with a Complainant and its products, it's very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith.” Under the circumstances of this case, the Panel concludes that the Respondent registered the domain names primarily for the purpose of capitalizing on the trademark or service mark value inherent in the names”), citing Match.com, LP v. Bill Zag and IVWLAWS.ORG, WIPO Case No. D2004-0230; Manchester Airport PLC v. Club Club Limited, WIPO Case No. D2000-0638.
The Complainant further points out that when it discovered that the Respondent had registered the disputed <identitygaurd.com> domain name, the Complainant attempted to contact the Respondent to resolve the issue. The Complainant has submitted copies of correspondence from Complainant's counsel from January 7, 2010 to the Respondent to which the Respondent has not replied.
The Complainant concludes that the above circumstances clearly indicate, therefore, that the disputed domain name was acquired in bad faith, for the purpose of disrupting the Complainant's business, preventing the Complainant, as the trademark owner, from reflecting its mark in the disputed domain name, and attempting to sell the domain name to the Complainant or a competitor of the Complainant for an excessive consideration.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Complainant has established that it has rights in the IDENTITY GUARD service mark through both its extensive use of the service mark since 1999 and through its United States Trademark registrations listed above.
The disputed domain name <identitygaurd.com> is almost identical to the Complainant's IDENTITY GUARD mark, with the only difference being the switched position of the letters “u” and “a” in the “guard” element to read “gaurd.”
While the word “guard” has an obvious English language meaning, the word “gaurd” has no such meaning and so there is nothing in the choice of the word “guard” that distinguishes the domain name from the Complainant's trademark.
Furthermore in the circumstances of this case it would appear that the name “identitygaurd” was chosen specifically because of its similarity with the Complainant's service mark and this in itself indicates that it is confusingly similar.
This Panel is satisfied therefore that the disputed domain name registered by the Respondent is confusingly similar to the IDENTITY GUARD service mark in which the Complainant has rights. The Complainant has therefore satisfied the first element in the test in paragraph 4(a) of the Policy.
It is well established under the Policy that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interest in a domain name, the onus of proof under the second element of the test in paragraph 4(a) of the Policy shifts to the respondent.
In the view of this Panel, the Complainant has succeeded in making out a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has any rights to any trademark consisting of the term “identity guard” or “identity guard” in any country. There is no evidence that the Respondent is known by the trademark IDENTITY GUARD or IDENTITY GAURD. The Respondent has not been authorised to provide the Complainant's services or been licensed or otherwise permitted to use the Complainant's trademark.
This Panel accepts the Complainant's submissions that in the circumstances of this particular case the use of the disputed domain name, that is confusingly similar to the Complainant's registered trademark, as the address of a portal website to generate click-through income does not create a legitimate interest in the domain name for the purposes of the Policy. The accrual of a legitimate interest is prevented by the lack of bona fides on the part of the Respondent by its predatory use of a domain name that is confusingly similar to the Complainant's registered trademark to generate income.
The Complainant is therefore entitled to succeed in the second element of the test in paragraph 4(a) of the Policy.
This Panel is satisfied that on the balance of probabilities the disputed domain name was registered and is being used in bad faith.
The word “identitygaurd” which is almost identical to the Complainant's IDENTITY GUARD mark, with the only difference being the switched position of the letters “u” and “a” in the “guard” element to read “gaurd” was clearly chosen so as to confuse and attract Internet users to the Respondent's website by taking predatory advantage of the reputation and goodwill of the Complainant in the IDENTITY GUARD mark. The choice of a nonsense element “gaurd” in combination with the descriptive “identity” element indicates that the Respondent had actual knowledge of the Complainant's rights and reputation when the disputed domain name was chosen and registered.
Furthermore it is improbable that the registrant of the disputed domain name was not alerted to the Complainant's prior registration of the almost identical, and more logical and meaningful domain name <identityguard.com> when the disputed domain name was being registered.
This Panel is satisfied, on the balance of probabilities and in the absence of any explanation or Response from the Respondent, that the disputed domain name was chosen and registered in order to take predatory advantage of typographical errors made by Internet users seeking the Complainant's commercial website and to divert them to the Respondent's website for commercial gain, probably as a source of click-through revenue.
It follows that the Respondent's registration and use of the disputed domain name is an intentional attempt in bad faith to attract, for commercial gain, Internet users to the Respondent's 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 Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a) of the Policy and is entitled to succeed in its application.
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 <identitygaurd.com> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: May 17, 2010