WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Faria Systems LLC v. Domain Admin, Whois Privacy Corp.
Case No. D2017-1488
1. The Parties
The Complainant is Faria Systems LLC of San Francisco, California, United States of America ("United States") represented by Rosen Lewis, PLLC, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <mangebac.com> (the "Disputed Domain Name") is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2017. On August 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 28, 2017.
The Center appointed John Swinson as the sole panelist in this matter on August 31, 2017. 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 an international business which designs, develops, and markets integrated information systems for the education sector. ManageBac is a service offered by the Complainant that is used by students and schools participating in the International Baccalaureate programme.
The Complainant owns the United Kingdom of Great Britain and Northern Ireland trade mark registration number 00003192235 for MANAGEBAC which was registered on May 26, 2017. The Complainant also claims unregistered trade mark rights in the Trade Mark from at least August 2009 (together, the "Trade Mark").
The Complainant owns the domain name <managebac.com>, which incorporates the Trade Mark, to advertise and promote its ManageBac business. This domain name has been registered since May 30, 2009.
The Disputed Domain Name was registered on February 23, 2011. It resolves to different websites (seemingly at random) which feature pay-per-clink ("PPC") links or which invite Internet users to participate in surveys or other schemes for payment.
The Respondent has used a privacy service to conceal its identity. The Respondent did not file a response and consequently little information is known about the Respondent.
5. Parties' Contentions
Identical or confusingly similar
The Complainant submits that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant highlights that the Disputed Domain Name is a misspelling of the Trade Mark where the second letter "a" of the word "managebac" is omitted.
This misspelling is a minor typographical nuance which does little to distinguish the word from the Trade Mark. Consumers and Internet users are likely to believe that the Disputed Domain Name relates to the Complainant.
The Disputed Domain Name is a case of "typosquatting", and is confusingly similar to the Trade Mark.
Rights or legitimate interests
The Respondent registered the Disputed Domain Name almost two years after the Complainant first began using the Trade Mark.
The Complainant submits that the Respondent lacks rights or legitimate interests in the Disputed Domain Name because the Respondent is not known by the Disputed Domain Name, has no affiliation with the Complainant and is not authorized by the Complainant to use the Trade Mark.
Rather, the Complainant submits that the Respondent has registered and is using the Disputed Domain Name to confuse Internet users and to benefit from the goodwill associated with the Complainant and their Trade Mark.
Registration and use in bad faith
The Complainant submits that the Respondent registered and is using the Disputed Domain Name in bad faith for the primary purpose of selling, renting or otherwise transferring the Disputed Domain Name to the Complainant. The Complainant also submits an alternative argument that the Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Trade Mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
Irrespective of the fact the Respondent has not filed a response, the onus of proving these elements remains on the Complainant.
A. Procedural Issues
No response from the Respondent
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainant (see Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant is the owner of the Trade Mark. According to the Complaint, the Trade Mark was registered on May 26, 2017.
As the Complainant submitted, the Disputed Domain Name appears to be a misspelling of the Trade Mark. It differs from the Trade Mark only by the omission of the second letter "a" in the word "managebac".
The Panel finds that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made out a prima facie case. This decision has been reached after consideration of the following facts:
- There is no evidence to suggest that the Respondent has ever been known by the Disputed Domain Name.
- The Panel accepts that the Respondent's use of the Trade Mark in the Disputed Domain Name is unauthorized and without permission from the Complainant.
- The Respondent has not used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Rather, one of the websites to which the Disputed Domain Name redirects appears to be a website for telecommunications company AAPT inviting consumers to respond to a survey, and another relates to a money making scheme called "Millionaire's Blueprint". These websites have no obvious connection with the Disputed Domain Name or the Respondent. At other times, the Disputed Domain Name resolves to a PPC website which contains links relating to educational services, which is a field in which the Complainant operates. In the circumstances, this use is not bona fide.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. It appears likely that the Respondent is profiting from the PPC advertising or other schemes on the websites to which the Disputed Domain Name redirects. In the absence of any evidence from the Respondent to the contrary, the Panel is of the view that this does not amount to a bona fide use for the purposes of the Policy.
- As previous panels have found, typosquatting does not constitute a legitimate use of the Trade Mark (see Edmunds.com, Inc. v. Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694 and Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537).
The Respondent, despite having the opportunity to present a defence, chose not to submit a Response. Consequently, the Respondent has not rebutted the Complainant's prima facie case.
The Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Complainant asserts that the Complainant has been promoting its ManageBac service under the Trade Mark since 2009.
The Disputed Domain Name was registered prior to the Complainant's registration of the Trade Mark. However, the Complainant is also claiming common law rights in the Trade Mark, with a date of first use of August 21, 2009. Therefore, the Panel will also consider whether the Complainant held common law rights in the Trade Mark prior to the date the Disputed Domain Name was registered.
In order to successfully assert common law or unregistered trade mark rights, the Complainant must show that the Trade Mark has become a distinctive identifier associated with the Complainant or the Complainant's goods or services (i.e., that the Trade Mark has acquired a "secondary meaning").
The Complainant has provided evidence of its use of the Trade Mark on a website associated with its <managebac.com> domain name as at August 21, 2009. That website refers to the service being offered in a number of schools. It also refers to international conferences at which the Complainant promoted the service.
The Panel is satisfied that the Complainant has common law rights in the Trade Mark prior to the date the Disputed Domain Name was registered.
In light of the circumstances of the case, the Panel considers it likely that the Respondent registered the Disputed Domain Name with knowledge of the Complainant, in order to trade off the Complainant's reputation and Trade Mark for commercial gain. This is evidence of registration and use in bad faith under paragraph 4(a)(iii) of the Policy.
The Panel considers that this is a case of typosquatting – the Disputed Domain Name is almost identical to the Trade Mark, with the exception of one letter. The Panel concludes that it is likely that the Respondent has registered a common misspelling of the Trade Mark to divert Internet users who were looking for the Complainant's website to the Respondent's website.
For the reasons listed above, the Panel finds that the Complainant has succeeded on the third element of 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, <mangebac.com> be transferred to the Complainant.
Date: September 14, 2017