WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Twitter, Inc. v. Domain Admin, Whois Protection / Accueil des Solutions, Inc
Case No. D2014-0645
1. The Parties
The Complainant is Twitter, Inc. of San Francisco, California, United States of America ("US"), represented by Leason Ellis, US.
The Respondent is Domain Admin, Whois Protection of Prague, Czech Republic / Accueil des Solutions, Inc of Vancouver, Canada, represented by The Reisch Law Firm, LLC, US.
2. The Domain Name and Registrar
The disputed domain name <twtter.com> (the "Disputed Domain Name") 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 April 16, 2014. On April 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 22, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2014 providing the registrant and contact information disclosed by the Registrar, and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 6, 2014.
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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Response was filed with the Center on May 27, 2014.
The Center appointed John Swinson as the sole panelist in this matter on June 6, 2014. 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 Twitter, Inc., a US company founded in 2006. The Complainant provides a "real-time information network" that enables users to send and view 140-character messages (referred to as "tweets"). The Complainant's users send approximately 500 million "tweets" a day. Over 300 billion "tweets" have been sent since 2006. The Complainant employs over 2700 people globally, supports more than 35 languages and has over 241 million monthly active users.
The Complainant is the owner of US Trade Mark Registration Nos. 3619911 (registered May 12, 2009), 4422235 (registered for October 22, 2013) and 4362656 (registered July 9, 2013) for "TWITTER", and US Trade Mark Registration No. 4179739 for "twitter" (registered July 24, 2012). The Complainant also owns trade mark registrations for "TWITTER" in other countries, including the European Union, Canada and Mexico. All of these registrations will be collectively referred to as the "Trade Mark".
The Respondent is the privacy service Domain Admin, Whois Protection of Czech Republic and Accueil des Solutions, Inc of Canada (collectively, the "Respondent").
According to the Registrar, the Respondent registered the Disputed Domain Name on December 15, 2011. The Disputed Domain Name currently redirects to a website which invites users to complete a survey. When the Panel entered in the Disputed Domain Name into his browser, it was redirected to "www.allvideos.sweepstray.eu", stating that the Panelist was "today's lucky winner", and offered chance to win a AUD1,000 voucher to grocery stores (Coles, Woolworths and IGA) located in the Panelist's neighbourhood for the completion of a survey. In the past, it has redirected to a website which allowed users to "Update Windows 7 Drivers" (providing users with "Save" and "Install" options).
5. Parties' Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The only difference is the omission of the letter "i" in the Disputed Domain Name. This amounts to "typosquatting". The Respondent has previously targeted the Complainant (see Twitter, Inc. v. Moniker Privacy Services/Accuceil des Solutions Inc., WIPO Case No. D2013-0062).
The Trade Mark is "an extremely well-known trademark, and indeed a famous mark, around the world". An example of this fame was the wide dissemination of Oscars host Ellen DeGeneres' "tweet" of a "selfie" featuring herself and other famous Hollywood actors. The "tweet" has been "retweeted" over 3.4 million times. Additionally, prior panel decisions have held that the Trade Mark and its related services are well-known throughout the world (see, e.g. Twitter, Inc. v. High Tech Investments Ltd., WIPO Case No. DCH2011-0030; Twitter, Inc. v. Protected Domain Services, Customer ID:NCR-2997797/Goldberg Client Services, Inc., Name Administrator, WIPO Case No. D2011-1973 and Twitter, Inc. v. Moniker Privacy Services/accueil des solutions inc., WIPO Case No. D2013-0062).
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Respondent is not and has never been a representative or licensee of the Complainant;
- the Complainant has not authorized the Respondent to use the Trade Mark; and
- the Respondent is not and has not been commonly known as doing business under the Trade Mark.
Further, the Respondent's website does not include or appear to offer services under the Trade Mark. It redirects to a third party-website "www.greatworld-savings.awardsflesh.eu" that offers malware. This is not a bona fide offering of goods or services.
Registered and Used in Bad Faith
The Disputed Domain Name has no significance other than as a typo of the Trade Mark. The Respondent registered the Disputed Domain Name shortly after the Complainant's "eruption as a wildly famous Internet service". As such, its sole purpose could only have been to target the Complainant. "Typosquatting" has been found to evidence bad faith, particularly when the relevant mark is famous (see, e.g. Societe Nationale des Chemins v. Casajuana, WIPO Case No. D2008-1593).
The content at the Respondent's website does not relate to the Complainant or the Trade Mark. It prompts users to upgrade computer software. The Complainant submits that in doing so, users may download some sort of malware or virus to their computers. This is sufficient to hold that a domain name has been registered and used in bad faith (see, e.g. Spoke Media Holdings, Inc., v. Audrey Volkov, WIPO Case No. D2010-1303 and 24/7 Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043). The website also prompts users to disclose personal information.
The Respondent's registration and use of the Disputed Domain Name may injure the Complainant's goodwill and reputation (for example, if users seeking the Complainant's service end up downloading malware) (see, e.g. Twitter, Inc. v. Moniker Privacy Services/Accuceil des Solutions Inc., WIPO Case No. D2013-0062).
The Respondent has "typosquatted" on other well-known trade marks, for example, the email service "gmail". Further, the fact that the Respondent has used a privacy service to hide its identifying information is evidence of bad faith.
Due to the fame of the Complainant and the Trade Mark, the Respondent can make no good faith use of the Disputed Domain Name, and "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law" (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Respondent is not a serial cyber stalker who has previously targeted the Complainant. The current owner of the Complainant had no interest in the company when the previous case filed by the Complainant was resolved by default.
The removal of the "i" is significant and means that the Disputed Domain Name is not confusingly similar to the Trade Mark. The Complainant has not presented any evidence of confusion. The Respondent submits that: "In fact, for one to not immediately realize that they were not at Twitter.com would have to be completely out of touch with reality given the fact that TWITTER is mentioned almost daily in life."
Additionally, as "twitter" is a common and generic word it should not be protected.
Rights or Legitimate Interests
The website at the Disputed Domain Name is not offering services under the Trade Mark. It offers users the opportunity to participate in a survey, which is a bona fide offering of goods and services.
Additionally, the Respondent is making fair use of the Disputed Domain Name without misleading users or tarnishing the Trade Mark. Registering a generic domain name and then redirecting users to a different site that advertises the Respondent's business for "developing, marketing, and selling these domain names" constitutes a bona fide use.
Registered and Used in Bad Faith
It is common to take generic spellings of words and remove a vowel. The Disputed Domain Name could also be an acronym. The fact that the Disputed Domain Name was registered shortly after the Complainant began providing its service is not sufficient to support a finding of bad faith.
The claim that the website that the Disputed Domain name redirects to may contain malware or viruses is unsubstantiated, false and libelous.
The Disputed Domain Name was not registered for the purpose of selling, renting or otherwise transferring the domain to the Complainant. It was not registered to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name. The Respondent and the Complainant are not competitors and the Disputed Domain Name was not registered to disrupt the Complainant's business. Finally, the Disputed Domain Name was not registered to attract users to the Respondent's website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of a product or service on the Respondent's website.
Reverse Domain Name Hijacking
The Complainant is attempting to engage in RDNH by "bullying a small company with a few domain names to strong arm an innocent domain name registrant into giving up a domain name that the complainant is not entitled to".
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel has verified that the Complainant has rights in the Trade Mark.
The Trade Mark is very well-known in countries throughout the world where the Internet is able to be used freely.
The Disputed Domain Name is confusingly similar to the Trade Mark, both visually and aurally. The only difference is the omission of the letter "i" in the Disputed Domain Name. The Panel finds that this insignificant change fails to distinguish the Disputed Domain Name from the Trade Mark (see, e.g. FIL Limited v. Elliott Evans, WIPO Case No. D2014-0259).
In light of the above, the Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name; and
- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark.
The Respondent has not provided sufficient evidence to rebut the Complainant's prima facie case. The Respondent submits that the Disputed Domain Name currently redirects to a website that offers users the opportunity to participate in a survey, and in the past has redirected to a website that advertised the Respondent's business. However, the Respondent provided no evidence of the purpose of the survey, or the nature of its business.
The Respondent submitted that "twitter" is a generic word and as such is not entitled to protection. The Panel disagrees. The term "twitter" has acquired a significant secondary meaning through extensive use in relation to the Complainant's services. Further, even if the term was generic, the Respondent has not been using the term in its generic sense to describe its goods and services.
The Respondent uses the Disputed Domain Name to redirect traffic to another website that does not use "twtter" or "twitter" at all.
In light of the above, and given the substantial reputation of the Complainant and the Trade Mark, the Panel is of the view that the Respondent is using the Disputed Domain name to create confusion among the users of the Complainant's services and to divert traffic to the Respondent's survey website. The Panel finds 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 acknowledges that the nature of the download previously available from the website at the Disputed Domain Name is contested, however, in light of its finding above, it does not need to resolve this issue for the purposes of this decision.
The Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) includes circumstances where the Respondent, by using the Disputed Domain Name, has 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.
According to the Registrar, the Respondent became the registrant of the Disputed Domain Name on December 15, 2011. The Complainant and the Trade Mark were extremely well-known by this date. It is highly unlikely that the Respondent was unaware of the Complainant and the Trade Mark when it registered the Disputed Domain Name.
The Panel finds that this is a case of "typosquatting" (for a description of the various types of "typosquatting" see Tumblr, Inc. v. Chris Dutton / The trustee for Bean Media Group Trust, WIPO Case No. DAU2013-0017). The Respondent has registered a common misspelling of "twitter" to divert traffic from the Complainant's website at <twitter.com> to the Respondent's website. The Panel finds that this constitutes bad faith registration and use. (It appears that the Respondent has also engaged in this practice in relation to other well-known trade marks, for example "gmail".)
The Panel finds that, taking into account the significant reputation associated with the Trade Mark, there is no conceivable legitimate use of the Disputed Domain Name by the Respondent. Any use by the Respondent is likely to constitute passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's trade mark rights (see, e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Additionally, the Respondent registered the Disputed Domain Name using a privacy service. While this is not, of itself, indicative of bad faith, the use of a privacy service to shield the Respondent's identity can further support an inference of bad faith where there is evidence of other improper behaviour on the part of the Respondent (see, e.g. Bryant Tyson v. Fundacion Private Whois/ Domain IP Holding Corp., WIPO Case No. D2013-0529).
The Panel finds that the Complainant has succeeded on the third element of the Policy.
D. Reverse Domain Name Hijacking
In light of the Panel's findings above, it is unnecessary to address the Respondent's submissions regarding RDNH.
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 <twtter.com> be transferred to the Complainant.
Date: June 15, 2014