WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions inc
Case No. D2013-0062
1. The Parties
The Complainant is Twitter, Inc. of San Francisco, California, United States of America, represented by Melbourne IT Digital Brand Services, United States of America.
The Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America / accueil des solutions inc of Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <twitter.org> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2013, 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 the Complainant on January 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Upon request of an extension of seven (7) business days, the Complainant filed an amended Complaint on February 6, 2013.
The Center verified that the Complaint together with 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 February 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2013.
The Center appointed Richard Tan as the sole panelist in this matter on March 18, 2013. 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 was founded in 2006 and offers a social networking and micro blogging service, enabling its users to send and read other users’ messages called “tweets”. Users can “tweet” through the Complainant’s <twitter.com> website, compatible external applications on smart phones including Twitpic, Tweetie, Twitterrific, Uber Twitter or through SMS (Short Message Service). “Tweets” are text based posts of up to 140 characters displayed on the user’s profile. Users may subscribe to other users.
The Complainant is the owner of the trademark TWITTER at the United States Patent and Trademark Office, with the registration number 3619911 since May 12, 2009 with its first use in commerce on August 31, 2006, among all other trademarks used in connection with the TWITTER brand in relation to telecommunication and other goods and online services. The Complainant is also the owner of the Community Trademark of the mark TWITTER”, at the Office for Harmonization in the Internal Market, “OHIM”, with the registration number 006392997 since January 7, 2009, under the Nice Classifications 38, 42 and 45.
The disputed domain name was registered in June 2011.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is virtually identical to Complainant’s trade name and confusingly similar to its registered trademark TWITTER in which it has rights.
The Complainant contends that since its inception, its service has now over 500 million users worldwide, comes in various languages and almost 300,000 registered apps. It contends that it had its origins in a brainstorming session at the podcasting company, Odeo. One of its founders, John Dorsey, introduced the idea on an SMS service that allows one to communicate with a small group of people. The original project code name for the service was “twttr”. The first “twttr” message was broadcast on March 21, 2006. The first prototype was rolled out internally only for Odeo employees, however, due to its success, the full version was rolled out publicly on July 15, 2006. Finally in April 2007, with the acquisition of Odeo, the Complainant spun off into its own company with an estimated USD 35 million raised from venture capitalist growth funding. To date unpublished reports claim that an estimated USD 75 million has been raised so far.
From 400,000 tweets per quarter in 2007, the Complainant contends that its service grew to 100 million tweets per quarter in 2008. 2 million tweets were posted per quarter by the end of 2009. This has grown dramatically to 50 million tweets a day in February 2010 where Twitter reached 4 billion tweets by the end of the first quarter in that year. Usage spikes reached record highs during the FIFA World Cup (2,940 tweets per second); 2010 NBA Finals (3.085 tweets per second); Osama Bin Laden death (100,000 per hour). The Complainant contends that this is a clear indication that its service has become popular worldwide.
As further evidence of its fame and reputation, the Complainant states that its website is currently ranked as one of the 10 most visited websites worldwide by Alexa’s web traffic analysis. Currently, the traffic on its website is ranked 9th in the US and 93.9% of visitors start on the landing page of its home site. It also claims to have had a dramatic impact on media and communications over the years. Even before its public launch in 2007, it was granted the SXSW Web Award in the “Blog” category.
The Complainant argues that the disputed domain name is a clear typo of the Complainant’s registered trademark TWITTER.
The Complainant further contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name. There is no evidence that the Respondent owns registrations for any trademarks containing the term TWITTER or uses that name or mark as its trade name or business identity; neither is there evidence that the Respondent provides goods or services that are identified or described by that term or any similar term.
Further, the Respondent is neither a licensee nor an authorized representative or partner of the Complainant or authorized to register or sell any goods or services of any kind incorporating the Complainant’s mark.
The Complainant argues that the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy, paragraph 4(c)(i) because the disputed domain name is confusingly similar to the Complainant’s TWITTER trademark; there is no apparent connection or relationship between the disputed domain name and the Respondent; the Respondent does not use the disputed domain name to advertise or sell its own wares and services and the current content of the site is clearly marked as malware putting at risk those users of the Complainant’s services who end up in the site thinking that the Complainant owns it.
The Complainant also contends that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant contends that the Respondent must have been aware of the Complainant’s mark at the time of the registration of the disputed domain name because of the worldwide fame of the TWITTER mark which could not have escaped the attention of the Respondent. The disputed domain name was registered in June 2011 well after the Complainant started its business and used its trademark. At the time of the disputed domain name registration, the Complainant’s website had more than 27 million visitors a month and was one of the most visited websites in the world.
Further, the Complainant contends that the Respondent’s website associated with the disputed domain name is just a malware website. It creates great confusion among the users of the Complainant’s services and puts those who visit the Respondent’s website thinking it belongs to the Complainant at risk.
The Complainant contends that the above facts clearly establish the Respondent’s bad faith in the registration and the use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the TWITTER mark. The mark has been registered in many countries and the evidence adduced by the Complainant clearly and amply demonstrates that the Complainant’s mark is well-known throughout the world and that the Complainant has acquired rights in the TWITTER mark.
The Panel further accepts that the disputed domain name is confusingly similar to the Complainant’s mark.
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain names, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. The disputed domain name reproduces the TWITTER mark in its entirety.
The addition of a generic top-level domain (gTLD) “.org” is insufficient to avoid a finding of confusing similarity as that is a requirement of registration.
In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant contends that the Respondent registered the disputed domain name well after the Complainant established its rights in the well-known TWITTER mark. The widespread use of the well-known services provided by the Complainant, with over 500 million users worldwide, and at the time of the registration of the disputed domain name, with more than 27 million visitors a month to the Complainant’s website making it one of the most visited websites in the world, makes it difficult if not impossible to believe that the Respondent was unaware of the Complainant’s mark at the time of the registration of the disputed domain name.
The Panel also finds that there is no evidence that the Respondent has been known by the disputed domain name. There is no evidence that the Respondent has been granted any license or other rights to use the Complainant’s marks for any purposes or evidence that the Complainant is associated or affiliated with the Respondent. Indeed, all the evidence points the other way.
The Complainant further contends that the website associated with the disputed domain name is just a malware website. It creates great confusion among the users of the Complainant’s services and those who visit the Respondent’s website thinking it belongs to the Complainant and puts them at risk.
This Panel accepts the Complainant’s contention that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. It further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith.
The disputed domain name was registered well after the Complainant’s mark was in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain name.
The Panel finds that the incorporation of the mark in question in its entirety as part of the disputed domain name is an indication of bad faith under the circumstances.
The Panel further notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product may suggest opportunistic bad faith: See for example Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmid v. PrivacyProtect.org, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.
The Panel also infers that that the Respondent’s registration and use of the disputed domain name was intended to disrupt the Complainant’s business, in particular by damaging the Complainant’s reputation, as a result of members of the public visiting the Respondent’s website thinking that it was related to the Complainant or its business, but running the risk of being infected by malware instead as asserted by the Complainant without rebuttal from the Respondent. The distribution of malware through a deceptive domain name is in this Panel’s view to be regarded as deceptive and malicious conduct sufficient to show that a domain name has been registered and is being used in bad faith: Spoke Media Hodlings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303; 24/7 Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043; DivX, LLC v. Domain Admin / CSRUS Enterprises, WIPO Case No. D2011-0600.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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 <twitter.org> be transferred to the Complainant.
Date: April 1, 2013