WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TPS Parking Management, LLC v. Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC

Case No. D2016-0900

1. The Parties

The Complainant is TPS Parking Management, LLC of Chicago, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.

The Respondent is Whois Privacy Services Pty Ltd. of Fortitude Valley, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <thparkingspot.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2016. On May 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 6, 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 May 10, 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 proceedings commenced on May 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2016.

The Center appointed Jane Seager as the sole panelist in this matter on June 21, 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 was founded in 1998 and provides vehicle parking lot and shuttle services in numerous cities across the United States. Its main website is available at “www.theparkingspot.com” (the corresponding domain name was registered on March 26, 1999).

The Complainant has supplied evidence that it owns the following registered trademark:

- THEPARKINGSPOT, United States Registration No. 2,963,762, registered on June 28, 2005 (first use in commerce in 1998).

The Domain Name was registered on January 17, 2006. It is currently being used to point to a website containing sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is virtually identical and confusingly similar to its THEPARKINGSPOT trademark because it is a misspelling that intends to take advantage of Internet users searching for the Complainant’s website, a practice known as “typosquatting”.

The Complainant further states that the Respondent has no rights or legitimate interests in the Domain Name for a number of reasons, namely that the Respondent has no legal relationship with the Complainant, the Complainant has not consented to the Respondent’s registration of the Domain Name, and the Respondent is not commonly known by the Domain Name. In addition, the Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name. The Complainant argues that the Respondent would not have chosen the Domain Name unless it was seeking to intentionally trade on the renown of the Complainant’s trademark, and this does not establish a bona fide interest in the Domain Name.

The Complainant asserts that the Respondent has registered and used the Domain Name in bad faith and in full knowledge of the Complainant’s rights. Given the Complainant’s renown, in the Complainant’s opinion, it is not plausible that the Respondent innocently registered the Domain Name without an intention to exploit its similarity with the Complainant’s THEPARKINGSPOT trademark. In addition, the Complainant asserts that the Respondent’s failure to use the Domain Name to point to an active website also underlines the Respondent’s bad faith. The Complainant further argues that the only reasonable conclusion under the circumstances is that the Respondent has registered the Domain Name in order to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion. Finally, the Complainant states that the Respondent’s use of a proxy service further evidences bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the 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.

The standard of proof is on the balance of probabilities (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules, see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of a registered trademark in the term THEPARKINGSPOT, namely United States Registration No. 2,963,762, registered on June 28, 2005 (first use in commerce in 1998).

However, according to the trademark certificate supplied by the Complainant, the listed owner of this trademark is PRG Parking Management, LLC. The Panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision (see paragraph 4.5 of the WIPO Overview 2.0) and it is clear from the database of the United States Patent and Trademark Office that this trademark has in fact been assigned to the Complainant.

It should be noted that establishment of correct ownership of United States Registration No. 2,963,762 is in fact essential in this case because none of the other trademarks put forward by the Complainant in its evidence are relevant for the purposes of paragraph 4(a)(i) of the Policy, either because they appear on the Supplemental Register (see Integrated Print Solutions, Inc. v. Kelly Davidson and Integrated Print Solutions, WIPO Case No. D2013-0219), or because they are not identical or confusingly similar to the Domain Name and/or because they have not yet been registered.

As mentioned above, the Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trademark. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s THEPARKINGSPOT trademark without the letter “e” in “THE”. The Panel agrees with the Complainant that such variations are insufficient to avoid confusion with the Complainant’s trademark.

Furthermore, it is widely accepted that the “.com” generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

(i) before any notice to the respondent 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 (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has stated that it has not authorized the Respondent to make any use of its trademark and, furthermore, it is highly unlikely that the Respondent would be “commonly known” by the Domain Name, given the notoriety surrounding the Complainant’s trademark.

As evidenced by the Complainant, when the Complainant filed the Complaint the Domain Name was not being used. In accordance with paragraph 4.5 of the WIPO Overview 2.0 referred to above, the Panel visited the website linked to the Domain Name and found that it was displaying sponsored links to airport parking services (the Complainant’s field of business). As a result, the Respondent’s passive holding or the current use of the Domain Name cannot be considered use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use, because the mere registration of a domain name does not confer a right or legitimate interest and the Respondent (or a third party) is unduly profiting from the Complainant’s rights by using the Domain Name, a misspelling of the Complaint’s trademark, to mislead Internet users searching for the Complainant and divert them to its website instead (see paragraph 2.6 of the WIPO Overview 2.0).

The Panel is also of the view that the Respondent’s failure to submit a response is, in the circumstances of this case, also evidence of the Respondent’s lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.

The evidence put forward by the Complainant shows that the Complainant’s registered trademark in THEPARKINGSPOT predates the Domain Name and has been used extensively, particularly in the United States, where the Respondent is based. In this regard it is also significant that the Complainant was founded in 1998 and registered its domain name <theparkingspot.com> in 1999, almost seven years before the Respondent registered the Domain Name. The Panel therefore finds, on the balance of probabilities, that the Respondent was aware of the Complainant’s rights at the time of registration of the Domain Name, and thus registered it in bad faith seeking to profit from the Complainant’s rights. Under the circumstances, the Panel is of the opinion that the Domain Name was registered for its trademark value, albeit misspelled, and not in relation to any ordinary dictionary meaning that such a phrase may have.

It has long been established that passive holding of a domain name does not prevent a bad faith finding. Given no explanation from the Respondent, the Panel here finds sufficient indicia of bad faith to satisfy paragraph 4(a)(iii) of the Policy.

Moreover, the Panel further finds that the Respondent’s current use of the Domain Name, which incorporates the Complainant’s trademark in its entirety except for the omission of the letter “e”, for a parking page containing sponsored links, including links related to the Complainant’s field of business is, under the circumstances, evidence of bad faith. Whether the links are automatically generated or not is irrelevant as a domain name registrant is generally responsible for the content appearing on the associated website (see paragraph 3.8 of the WIPO Overview 2.0). The Panel thus finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith, in accordance with 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 Domain Name <thparkingspot.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: July 4, 2016