WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Diamond Hill Investment Group, Inc. v. Richard Stroud
Case No. D2016-0510
1. The Parties
Complainant is Diamond Hill Investment Group, Inc. of Columbus, Ohio, United States of America ("United States"), represented by Vorys, Sater, Seymour and Pease LLP, United States.
Respondent is Richard Stroud of Wausau, Wisconsin, United States.
2. The Domain Name and Registrar
The disputed domain name <diamondhil.com> (the "Domain Name") is registered with Eranet International Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on March 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 11, 2016.
The Center appointed John C McElwaine as the sole panelist in this matter on April 12, 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
Complainant is an independent investment management firm headquartered in Columbus, Ohio. Complainant owns an incontestable United States trademark registration for the mark DIAMOND HILL in class 36 for "mutual fund investment services; investment management; investment advisory services", United States Reg. No. 3,475,947; and another registration for the mark DIAMOND HILL in class 36 for "providing and updating a financial index; providing financial indices of select equities", United States Reg. No. 4,625,852.
On October 22, 2015, Respondent registered the Domain Name. The Domain Name resolves to a mirror site of Complainant's website located at <diamond-hill.com>.
5. Parties' Contentions
Complainant alleges Respondent in this matter is the same person or entity that was the respondent in another UDRP action it brought in September 2015, Diamond Hill Investment Group, Inc. v. Carole Elkins, WIPO Case No. D2015-1191. In that matter, the panel found that the respondent had registered and used the domain name, <diamond-hil.com>, in bad faith. Complainant alleges that the same respondent is once again using bogus contact information, a month after the transfer of the prior domain name, and has registered and used the Domain Name to perpetuate the same fraudulent criminal phishing enterprise it began with the transferred domain name in the prior proceeding.
Complainant owns two trademark registrations for the mark DIAMOND HILL in class 36 reciting "mutual fund investment services; investment management; investment advisory services", United States Reg. No. 3,475,947; and another registration for the mark DIAMOND HILL in class 36 reciting "providing and updating a financial index; providing financial indices of select equities", United States Reg. No. 4,625,852. Both of these registrations remain in force and effect.
With respect to the first element of the Policy, Complainant asserts that the Domain Name is confusingly similar to Complainant's registered DIAMOND HILL mark. Complainant points out that the Domain Name is identical but for misspelling "hill" as "hil" and that incorporation of a trademark in its entirety in a domain name is sufficient to establish confusing similarity.
With respect to the second element of the Policy, Complainant contends that there is no relationship between Complainant and Respondent which might give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's DIAMOND HILL mark. Moreover, Complainant would never have approved or authorized the use of the Domain Name for the fraudulent scheme being operated by Respondent.
With respect to the third element of the Policy, Complainant asserts that Respondent engaged in bad faith when it registered and used the Domain Name for the purpose of operating a mirror site of Complainant's website that copies every page (including its copyright images and text and its trademarks), but for the contact information for jobseekers. Such job seekers are asked to provide personally-identifying information and (if they continue in contact with the Respondent's representatives) to become involved in moving money from unidentified persons into and out of their personal bank accounts. Complainant asserts that individuals in Australia have provided private information and even been "employed" by Respondent. Some of these individuals have complained to Complainant. Complainant asserts that diverting Internet traffic searching for Complainant and operating a possible criminal enterprise is bad faith registration and use of the Domain Name. Moreover, Complainant asserts that this Respondent is the same entity or person as the previous respondent, and therefore, was aware that such behavior was bad faith when it registered and continued to use this Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom (see St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the DIAMOND HILL mark, which long predate the registration of the Domain Name.
As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), paragraph 1.10, the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. Similarly, UDRP panels have consistently held that "a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights". Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 ("Such insignificant modifications to trademarks is commonly referred to as 'typosquatting' or 'typo-piracy,' as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser's location bar".) Here, the almost imperceptible removal of the terminal letter "i" in the Domain Name is unquestionably confusingly similar to the DIAMOND HILL mark. Also, the addition of the generic Top-Level Domain ("gTLD") ".com" to the Domain Name typically does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the Domain Name.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant's DIAMOND HILL mark.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under Policy paragraph 4(a)(ii). See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant asserts that Respondent is not a licensee or affiliate of Complainant and Respondent is not authorized to use the DIAMOND HILL mark for any activity. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the Domain Name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Complainant asserts that the Domain Name resolves to a website that is a virtually identical copy of Complainant's website and that this website is being operated to further a possible criminal enterprise. Respondent has not submitted any response to rebut these allegations. The Panel finds that the use of the Domain Name to divert Internet traffic to a scam or a phishing scheme is not a bona fide offering of goods or services. See BJ's Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, WIPO Case No. D2015-1601; see also CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, "such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name".)
Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Here, Respondent registered the Domain Name that is a typo of Complainant's mark to divert Internet traffic to a website that is a perpetrating a scam. Complainant's DIAMOND HILL mark was intentionally chosen when the Domain Name was registered to pray on the public seeking to find Complainant. In light of the copied content and the prior UDRP decision, there could be no other legitimate explanation except that Respondent intentionally registered the Domain Name consisting of a common error entered by Internet users. Such activity constitutes a disruption of Complainant's business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy.
In addition, paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See Diamond Hill Investment Group, Inc. v. Carole Elkins, supra, citing Avon Products, Inc. v. Domains Administrator c/o Dynadot Privacy; see also Ebay Inc. v. Wangming, WIPO Case No. D2006-1107. In fact, panels have held that "typosquatting" alone is evidence of bad faith registration of the disputed domain name. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <diamondhil.com>, be transferred to Complainant.
John C McElwaine
Date: April 25, 2016