WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Papercheck, LLC v. Registration Private / Leevi Tuulola
Case No. D2015-0861
1. The Parties
The Complainant is Papercheck, LLC of San Francisco, California, United States of America, represented by Ridder, Costa & Johnstone LLP, United States of America.
The Respondent is Registration Private of Scottsdale, Arizona, United States of America / Leevi Tuulola of Las Cruces, New Mexico, United States of America.
2. The Domain Name and Registrar
The disputed domain name <paperscheck.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2015. On May 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2015, 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 May 26, 2015 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 May 29, 2015.
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 June 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on June 25, 2015. 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 the owner of a United States trademark registration for PAPERCHECK for use with various text editing goods and services. The registration was issued by the United States Patent and Trademark Office ("USPTO") on July 19, 2011 (U.S. Reg. No. 3997533), pursuant to Section 2(f) of the Trademark Act.1 The Complainant's application to register the mark was filed with the USPTO on December 22, 2010. The Complainant has submitted archived screenshots of its website at "www.papercheck.com" using the search engine on the Internet Archive ("www.archive.org"), called the "Wayback Machine". The archived web pages reflect the Complainant's use of PAPERCHECK in connection with the Complainant's goods and services since as early as November 2002.
The disputed domain name was registered by the Respondent Leevi Tuulola on October 24, 2013, according to the concerned Registrar's WhoIs records.2 At the time of the filing of the Complainant, the Registrar's WhoIs records showed the disputed domain name to be registered in the name of Registration Private, Domains By Proxy LLC, a private registration service affiliated with the Registrar. The disputed domain name currently resolves to a web page promoting proofreading and editing services offered by "Proof-Editing.com". The web page also contains links to Proof-Editing.com's home website ("www.proof-editing.com").
5. Parties' Contentions
A. Complainant
The Complainant submits that it owns exclusive rights in and to the registered PAPERCHECK trademark, which the Complainant avers it has used since 2002 with proofreading, copy editing, essay editing, and other text editing-related goods and services. Additionally, the Complainant asserts common law rights in the PAPERCHECK mark. The Complainant submits that the mark is strong and distinctive, and entitled to a wide scope of protection due to the Complainant's substantially exclusive and continuous use of the mark since as early as 2002.
The Complainant notes that the PAPERCHECK mark is registered on the USPTO Principal Register, that the USPTO did not require a showing of secondary meaning for purposes of registration, nor object to the registration of the mark based on descriptiveness. The Complainant asserts entitlement to a presumption that its mark is inherently distinctive, citing Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir. 2006). Alternatively, assuming that the PAPERCHECK mark initially was descriptive, the Complainant maintains the mark would have acquired distinctiveness based on the Complainant's substantially exclusive and continuous use of the mark long before the Respondent registered the disputed domain name in 2013.
The Complainant asserts that the disputed domain name <paperscheck.com> is confusingly similar to the PAPERCHECK mark, differing only by the insertion of the letter "s" between the words "paper" and "check". According to the Complainant, WIPO panels have long recognized that pluralizing a trademark in a domain name does not avoid confusing similarity with the mark. The Complainant further submits that the Respondent has engaged in the practice of typosquatting, which the Complainant asserts has consistently been recognized in prior UDRP decisions as cybersquatting.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant's PAPERCHECK mark, and that the Respondent has not been commonly known by the disputed domain name. The Complainant further submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor making any legitimate noncommercial or fair use of the disputed domain name. Rather, the Complainant asserts that the Respondent is using the disputed domain name in order to divert the Complainant's customers to the Respondent's website, where the Respondent offers for sale goods and services that compete directly with those of the Complainant. The Complainant argues that this is not a bona fide use of the disputed domain name, citing Advance Magazine Publishers, Inc. v. Lisa Whaley, WIPO Case No. D2001-0248.
In view of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent is offering goods and services on the "www.paperscheck.com" website that are legally identical to those offered by the Complainant under its PAPERCHECK mark. The Complainant notes its use of the PAPERCHECK mark with text editing goods and services for more than 10 years before the Respondent registered the disputed domain name, and argues it is inconceivable that the Respondent was unaware of the Complainant and the Complainant's PAPERCHECK mark. The Complainant maintains this is sufficient to demonstrate bad faith, but further asserts that the Respondent is using the disputed domain name in bad faith to intentionally 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, or endorsement of the website.
The Complainant also submits that the Respondent has engaged in the bad faith practice of typosquatting, and has deliberately obfuscated its true name and identity – first, by using a privacy protection service, and second, by providing false contact information to the Registrar. The Complainant observes by way of example that that the Respondent's postal address contains a fictitious street name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting".See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <paperscheck.com> is confusingly similar to the Complainant's PAPERCHECK mark, in which the Complainant has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant's mark for purposes of the Policy. The disputed domain name in this case would be identical to the Complainant's mark but for the insertion of the letter "s" between the words "paper" and "check". The foregoing is evocative in the Panel's view of the practice commonly referred to as "typosquatting" – the intentional registration and use of a domain name that is a common misspelling 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. Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.
Although the generic Top-Level Domain ("gTLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i)of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant's authorization or consent, has registered a domain name that is confusingly similar to the Complainant's PAPERCHECK mark. Given the foregoing, the indication of typosquatting, and the Respondent's use of the disputed domain name to divert Internet traffic to a website offering goods and services competitive to those of the Complainant, a prima facie showing has been demonstrated.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it most likely that the Respondent was aware of the Complainant and the Complainant's PAPERCHECK mark when registering the disputed domain name. The Complainant's mark was registered prior to the Respondent's registration of the disputed domain name, and the record reflects the use of the mark in commerce by the Complainant as early as 2002. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant's mark through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Respondent registered and is using the disputed domain name in order to divert Internet users to the Respondent's website, on which text editing goods and services competitive to those of the Complainant are offered. Under the attendant circumstances, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
As noted above, the Respondent has not been authorized to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Panel, after reviewing of the facts and circumstances in the record, and absent any reply by the Respondent, finds nothing to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the absence of any reply by the Respondent, the Panel considers that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights. This also appears to be a case involving typosquatting, in which the Respondent registered and has intentionally used the disputed domain name for commercial gain, in order to divert Internet users to the Respondent's website, relying on typographical errors made by Internet users. See, e.g., Red Bull GmbH v. Grey Design, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
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 <paperscheck.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: July 8, 2015
1 For purposes of Section 2(f), substantially exclusive and continuous use of a mark by the applicant in commerce for at least five years before the date on which the claim of distinctiveness is made may be accepted by the USPTO as evidence that the mark has acquired distinctiveness as used with the applicant's goods or services.
2 Unless otherwise indicated, "Respondent" as used herein refers to Leevi Tuulola, identified as the actual registrant by the concerned Registrar.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.