WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Segway Inc. v. Tim Canga / Contact Privacy Inc. Customer 0140186081
Case No. D2015-2331
1. The Parties
The Complainant is Segway Inc. of New Hampshire, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Tim Canga of Portsmouth, Hampshire, United Kingdom of Great Britain of Northern Ireland / Contact Privacy Inc. Customer 0140186081, Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <swegway.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 December 28, 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 December 28, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2016.
The Center appointed Edoardo Fano as the sole panelist in this matter on January 27, 2016. 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Segway Inc., a leader in the field of personal mobility devices since the launch of the world’s first electric, two-wheeled, self-balancing Personal Transporter in 2001 with the trademark SEGWAY, owning many trademark registrations for SEGWAY, among which:
- United States Trademark Registration No. 2,727,948 SEGWAY, registered in 2003;
- Community Trademark Registration No. 002545762 SEGWAY, registered in 2004.
The Complainant is also operating through the Internet with its main international website being “www.segway.com”.
The Complainant provided evidence in support of the above.
The disputed domain name <swegway.com> was registered on May 28, 2015. At the time of filing of the Complaint, the website at the disputed domain name was not active.
5. Parties’ Contentions
The Complainant states that the disputed domain name <swegway.com> is confusingly similar to its trademark SEGWAY, also considering that recently the term “swegway” as a misspelling of the Complainant’s trademark has gained popularity as a term to refer to the two-wheeled personal transporter.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, and even if currently inactive it is difficult to imagine a future use that would not harm the business of the Complainant or infringe the Complainant’s trademark.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name 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 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
The Panel finds that the Complainant is the owner of the trademark SEGWAY both by registration and acquired reputation and that the disputed domain name <swegway.com> is confusingly similar to the trademark SEGWAY.
Regarding the addition of the letter “w”, the Panel notes that this is a typical case of a deliberate misspelling of a mark (so-called “typo-squatting”), by adding, deleting, substituting or reversing the order of letters in a mark, where numerous panels in the past have found similarity to be present, see, inter alia, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.
Moreover, the Complainant is bringing to the Panel’s attention the fact that recently the term “swegway” has become a common expression to indicate the personal transportation device manufactured and distributed by the Complainant with the trademark SEGWAY, infringing the intellectual property rights of the Complainant.
It is well accepted that a generic Top-Level Domain suffix, in this case “.com”, may be ignored when assessing the confusing similarity between a trademark and a domain name, see e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607.
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “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 respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent 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 respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] web site or location.”
Regarding the registration in bad faith of the disputed domain name, the notoriety of the Complainant’s trademark SEGWAY in the field of two-wheeled personal transportation devices is clearly established, and the Panel finds that the Respondent knew that the disputed domain name <swegway.com> was confusingly similar to the Complainant’s trademark at the time of registration. This is also confirmed by the fact that the term “swegway” has recently become a common way to call these devices.
As regards to the use in bad faith, the Panel considers that bad faith may exist even if the Respondent has done nothing but to register the disputed domain (so-called “passive holding”, as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all 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 <swegway.com> be transferred to the Complainant.
Date: January 31, 2016