WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SEGWAY INC. v. Perfect Privacy, LLC / Oliver Weisfeld, SwegWay
Case No. D2015-2340
1. The Parties
The Complainant is SEGWAY INC. of Bedford, New Hampshire, United States of America, represented by Burns & Levinson LLP, United States of America.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Oliver Weisfeld, SwegWay of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Richard Weisfeld.
2. The Domain Name and Registrar
The disputed domain name <swegway.net> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 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 the same day, 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 8, 2016 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 January 13, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2016. The Response was filed with the Center on February 4, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 15, 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.
4. Factual Background
The Complainant is the supplier of what it refers to as “personal mobility devices” or “personal transporters” under the trademark SEGWAY. The product was introduced to the market under this name in 2001. According to the Complaint, the Complainant now has 250 distributors, dealers and retail centres in 80 countries. Since the introduction of its product, it claims consistently to have led the field in “the emerging small vehicle space”.
According to the Complaint, the Complainant has made substantial investments in developing and promoting the trademark SEGWAY and, as a result has developed a valuable goodwill in the trademark. Specific details about sales or promotional expenditure have not been included in the Complaint.
The Complainant says it has registered SEGWAY as a trademark in over 50 countries. Annex D to the Complaint includes details of 10 registrations for SEGWAY in the United States of America. These registrations include Registered Trademark No. 2,727,948 for SEGWAY in International Class 12 in respect of motorized self-propelled, wheeled personal mobility devices, namely wheelchairs, scooters, utility carts and chariots. Other registrations for SEGWAY are for related goods and services including apparel, printed matter, training, etc. This trademark was registered on June 17, 2003, claiming first use in commerce on December 3, 2001.
According to the Complaint, the Complainant also has a registration for SEGWAY as a Community Trademark. The Complaint fails to provide any details of this registration. While it is not necessary for the maintenance of a complaint under the Policy to have a trademark registered in the jurisdiction where the respondent is located, the Panel would normally expect the Complaint to include the details of such a trademark where its existence is specifically referenced in the Complaint; all the more so where such a registration could found the basis of an allegation that the Respondent’s use in the place where the Respondent is located infringes the Complainant’s rights.
It would appear that the Complainant is referring to Community Trademark No. 002545762 which was first registered on January 22, 2002 for a wide range of goods and services in a number of International Classes including “Motorized, self-propelled, wheeled personal mobility devices, namely, wheelchairs, scooters, carts and chariots”.
The Respondent is apparently a 16 year old student. He registered the disputed domain name on June 22, 2015. According to the Response, the Respondent had previously operated a business on the side selling candy and the like. To fund his own purchase of such a device, his researches led to him importing for resale a number of products known as “swegways”. The disputed domain name was registered in connection with that. The business became very successful and he arranged for the website’s operations to be taken over by one of the importers into the United Kingdom of such products, Breezeboardpro Ltd.
The products offered for sale through the Respondent’s website are two-wheeled, electric powered devices variously referred to as e-boards, hoverboards and/or “swegways” or, by at least the police in the United Kingdom, as “self-balancing scooters”. According to the Response, the Respondent adopted the disputed domain name as his researches showed that the term “swegway” is widely used around the world as the name of the product.
At the risk of doing significant disservice to both the Complainant and the Respondent, as a very general simplification, a noticeable difference between the Respondent’s products and those of the Complainant is that the Respondent’s products do not have a balancing stick or pole extending vertically from the platform between the wheels. No doubt both parties would point to other differences, but neither has favoured the Panel with their views.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. For the avoidance of doubt, the Panel includes in that finding the Community Trademark as well as the ten United States registrations.
In accordance with usual practice, the Panel disregards the generic Top-Level Domain (“gTLD”) “.net” component of the disputed domain name as merely a functional aspect of the domain name system.
The disputed domain name differs from the Complainant’s trademark, therefore, by the addition of the letter “w” after the “s”. The Complainant invokes the well-known prohibition on typosquatting to support its contention that the disputed domain name is confusingly similar to the Complainant’s trademark: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.10.
The Respondent denies “typosquatting” or any intention to trade on the Complainant’s reputation and goodwill. He points out that his name is not identical to the Complainant’s trademark. He contends further that the disputed domain name is not confusingly similar to the Complainant’s trademark. In this connection, the Respondent claims that the term “swegway” is the generic term for the particular type of device he is offering for sale. The Respondent further points out that a Google search returns some 496,000 clear responses for the term “swegway”. Further, these are responses for “swegway”. Unlike terms such as “wamazon”, “bebay”, “wikipledia” and the like, the Google search algorithm does not redirect the search on the assumption that there was a typographical error and the search intended was for, respectively “amazon”, “ebay” or “Wikipedia”. In addition, the Respondent points out that he has registered only one domain name whereas, in the typosquatting case invoked by the Complainant,1 the respondent had registered 13 domain names with obvious misspellings of the complainant’s trademark.
The Respondent’s position proceeds on a misunderstanding. In the context of the Policy, panels have generally focused on the role of this requirement as a threshold requirement of standing designed to ensure that complainants have a legitimate basis for invoking the protections afforded under the Policy. In that connection, panels have generally considered that it is sufficient for the complainant’s trademark to be recognizable within the domain name to give rise to a finding of confusing similarity. All that is required under this limb of the Policy, therefore, is a comparison of the sign comprising the trademark to the disputed domain name. This is a visual and oral comparison only. See for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Factors of these kinds, if relevant, may fall for consideration under the other elements of the Policy.
On that basis, the Panel considers the disputed domain name is confusingly similar to the Complainant’s trademark. The inclusion of the letter “w” is a small visual difference and, while orally there is a difference in sound between the respective terms, it is not a strong or striking difference. The Respondent is correct that the decision relied on by the Complainant involved multiple domain names. However, that is not an essential requirement before a misspelling can qualify as confusingly similar.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s own name. The Respondent also adopted the disputed domain name and his trading style long after the Complainant had adopted the trademark and long after the Complainant had secured its trademark registrations in both the United States of America and the European Union.
These factors lead to a prima facie case of lack of rights or legitimate interests.
The Respondent denies that he has ever had any intention to misleadingly divert consumers from the Complainant. Rather, as indicated above, he says he is engaged in a bona fide offering of goods because the term “swegway” is a common or accepted English term for the kind of product he is offering. He offers a number of supporting matters.
First, the results of Google searches on the term “swegway” and the fact that Google’s search algorithm does not assume it is a mis-typing has already been referred to above. The Respondent also says that the term “swegway” has in fact been incorporated into a statute of the United Kingdom Parliament.2 He also points out that the term “swegway” has been used in countless mentions in the press, radio and television and has included some examples of this in the Annexes to the Response. The Respondent also contends that his products are totally different products with a totally different price point to those of the Complainant. The Respondent also contends that, unfortunately for the Complainant, it appears that its trademark has simply been overtaken by the tide of events just as a dietary supplement known as “Ayds” was forced to rebrand in the 1980s with the advent of the AIDS.
The Respondent’s argument that his products are not the same as the Complainant’s and are offered for sale at a different price point does not avail him. As indicated above, another term to describe the Respondent’s products is “self-balancing scooter”. Such products would appear to fall fairly within the scope of the Complainant’s trademark registrations.
Next, section 72 of the Highways Act 1835 (UK) provides:3
If any person shall wilfully ride upon any footpath or causeway by the side of any road made or set apart for the use or accommodation of foot passengers; or shall wilfully lead or drive any horse, ass, sheep, mule, swine, or cattle or carriage of any description, or any truck or sledge, upon any such footpath or causeway; or shall tether any horse, ass, mule, swine, or cattle, on any highway, so as to suffer or permit the tethered animal to be thereon;. . . . . . . . . . . . . . . . . . . . . . . . . . every person so offending in any of the cases aforesaid shall for each and every such offence forfeit and pay any sum not exceeding level 2 on the standard scale, over and above the damages occasioned thereby.
It does not refer specifically to “swegway”. It appears that the Respondent may have been led into his belief from newspaper reports referring to the products being illegal under this provision.4 While some of the media reports do refer to the devices as “swegways”, many also do so only incidentally or use the term “hoverboard” as the generic name for the product. The fact that Google search results are not redirected to “segway” as searches for other misspellings like “wamazon” arguably provides some support for the Respondent’s claim. However, searches of many other websites show the opposite result; for example, asking “did you mean segway?”5
Individually, these results are not conclusive. Overall, however, they indicate that the term “swegway” is not necessarily accepted by the trade and public as the generic name for the product. Other, more apt terms exist and are used, such as hoverboard.
The Respondent also cites the number of visits to his website to demonstrate there is no confusion with the Complainant. Within a month of his website starting up, his Google Analytics report shows a spike up to 50,000 visits a day. This subsequently dropped down to between perhaps 15,000 and 25,000 visits daily. The Respondent contends this has nothing to do with the Complainant or its trademark which the Respondent characterizes as stale and dated.
However that may be, the report provided by the Respondent shows an average time on page of 56 seconds, but a “bounce rate” of 45%.6 This is suggestive of visitors leaving directly after landing. The information provided does not show what site or sites the visitors who left went to.
In these circumstances, the Panel considers that the Respondent has not established that “swegway” is in fact a descriptive term for a product category. Accordingly, the Panel is not prepared to find that the Respondent has rights or legitimate interests in the disputed domain name in the face of the Complainant’s clear trademark rights. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.
The Respondent vehemently asserts his good faith in registering and using the disputed domain name.
Nonetheless, the circumstances are that the Respondent registered a confusingly similar domain name to the Complainant’s trademark for the purpose of selling products which appear to be covered by the scope of the Complainant’s registered trademarks; that is, to engage in infringing conduct. That is in fact how the disputed domain name has been used. In the Panel’s view, registration of a domain name for such use of another’s trademark, whether intentionally or not, constitutes “bad faith” under the Policy.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith under 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, <swegway.net>, be transferred to the Complainant.
Warwick A. Rothnie
Date: February 29, 2016
2 Highways Act 1835 s 72.
4 See e.g. “http://www.theguardian.com/uk-news/2015/oct/16/move-over-cars-the-swegway-is-here-or-it-would-be-if-it-wasnt-illegal; http://www.independent.co.uk/life-style/gadgets-and-tech/news/hoverboards-are-illegal-on-british-streets-authorities-say-a6690596.html”.
5 For example: “http://dictionary.reference.com/misspelling?term=swegway&s=t”; “http://dictionary.cambridge.org/spellcheck/english/?q=swegway; http://www.merriam-webster.com/dictionary/suggestions/swegway; http://www.oxforddictionaries.com/spellcheck/english/?q=swegway”.