WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intersystems Corporation v. Registration Private, Domains By Proxy, LLC / Brimoh Kadiri
Case No. D2018-1784
1. The Parties
Complainant is Intersystems Corporation of Cambridge, Massachusetts, United States of America (“United States” or “US”) represented by Burns & Levinson LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Brimoh Kadiri of Valley Stream, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <intersistems.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 8, 2018, 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 Complainant on August 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 16, 2018.
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 Respondent of the Complaint, and the proceedings commenced on August 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 12, 2018.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 21, 2018. 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 Intersystems Corporation is a global technology company focusing on enterprise connectivity, information exchange, and patient management software for businesses and government entities in the healthcare field. Intersystems owns trademark registrations for the INTERSYSTEMS Mark in over thirty countries including multiple registrations for the INTERSYSTEMS mark in the United States, including: US Registrations No. 1,160,437 (registered July 7, 1981), No. 3,621,823 (registered May 19, 2009) and No. 4,297,260 (registered March 5, 2013) (the “INTERSYSTEMS Mark” or the “Mark”). Intersystems has been using the Mark for over 30 years. Intersystems has a website located at “www.intersystems.com” to provide information regarding its services and to learn more about the company.
The Domain Name was registered July 16, 2018. It resolves to a website displaying a WordPress template that purports to be related to exercise equipment and training apparel, without any apparent relation to the Domain Name.
5. Parties’ Contentions
The Domain Name consists of a misspelling of the INTERSYSTEMS Mark, substituting only an “i” for the “y”. It is well established that a domain name consisting of common, obvious, or intentional misspellings of a trademark, “typosquatting”, is considered confusingly similar to the mark. The Domain Name is identical or confusingly similar to Complainant’s Mark and is intended to intercept and confuse consumers when looking for bona fide and well-known Intersystems technical solutions and services or authorized partners.
Respondent has no connection or affiliation with Intersystems and has not received any license or consent, express or implied, to use the INTERSYSTEMS Mark in a domain name or in any other manner. Furthermore, Intersystems believes that Respondent has never been known by the Domain Name. In light of the foregoing, Respondent could have no legitimate interest in the INTERSYSTEMS Mark because it is not a name that Respondent would have legitimately and randomly chosen to use.
Respondent registered the Domain Name in bad faith by doing so with knowledge of Complainant’s rights in the INTERSYSTEMS Mark and with an intent to profit off of those rights. It is simply inconceivable that Respondent was unaware of Intersystems’ rights in the INTERSYSTEMS Mark when it registered the Domain Name that incorporates Complainant’s famous federally registered INTERSYSTEMS Mark in its entirety. At a minimum, Respondent had actual notice of Complainant’s rights. Intersystems engages in extensive advertising, featuring its name and mark and has offices throughout the world. Even a simple Internet search would have revealed Complainant’s extensive use of the INTERSYSTEMS Mark as source identifiers. Respondent must have expected that any use of the Domain Name would cause harm to Complainant. The Domain Name – wholly incorporating a misspelling of the INTERSYSTEMS Mark – is so “obviously indicative” of being authorized by Complainant that Respondent’s use of the Domain Name would “inevitably lead to confusion of some sort.” For these reasons, Respondent’s use of the INTERSYSTEMS Mark is tantamount to bad faith. The Domain Name is used to trade on the goodwill associated with Complainant and its INTERSYSTEMS Mark by defrauding and leading others to believe that Respondent is or acts on behalf of Complainant. The current use of the Domain Name supports a finding of bad faith and there is no conceivable contemplated use of the Domain Name that would not be an infringing use by Respondent. As such, it is currently being used in bad faith in violation of the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no dispute over Complainant’s trademark rights in the INTERSYSTEMS Mark. It is registered with the U.S. Patent and Trademark Office and, therefore, is entitled to a presumption of validity.
The Panel finds Respondent has engaged in typosquatting by registering the Domain Name <intersistems.com>, which consists of a misspelling of the INTERSYSTEMS Mark – substituting the letter “i” for the letter “y.” The Domain Name is virtually identical to Complainant’s INTERSYSTEMS Mark. Because Respondent has committed typosquatting, the Domain Name at issue is, by definition, confusingly similar to Complainant’s Mark. Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095.
In addition, the Domain Name <intersistems.com> is both visually and phonetically similar to the INTERSYSTEMS Mark, further heightening the likelihood of confusion. See, Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716 (finding the domain <expediua.com> confusingly similar to <expedia.com> and noting the visual and phonetic similarity of the two).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondent cannot have any legitimate interest or rights in the Domain Name because Respondent: (1) has no connection or affiliation with Intersystems; (2) has not received any license or consent, express or implied, to use the INTERSYSTEMS Mark in a domain name or in any other manner; (3) has never been known by the Domain Name; and (4) is not likely to have legitimately and randomly chosen to use the Domain Name.
Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainants’ favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Respondent registered the Domain Name on July 16, 2018, approximately thirty-seven (37) years after Complainant’s U.S. Registration No. 1,160,437 issued. Given Complainant’s widespread and long-term use of the INTERSYSTEMS Mark, as well as the U.S. trademark registrations for it, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the fact that the Domain Name was formed by a common typographical misspelling of Complainant’s INTERSYSTEMS Mark, it is confusingly similar to Complainant's Mark, and Respondent has not shown any legitimate use for it. See, e.g., ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
With regard to bad faith use - here Respondent registered a domain name that appropriates the entire Mark, but for a deliberate exchange of one character, making it difficult to infer a legitimate use of the Domain Name. No plausible explanation exists as to why Respondent selected the name “intersistems” as part of the Domain Name other than to trade on Complainant’s goodwill. Respondent has never provided any information to contradict the conclusion that Respondent registered the Domain Name to benefit from Complainant’s Mark – possibly registering it to later sell it to Complainant or to connect to the Internet. In use, the Domain Name will inevitably lead to confusion of some kind. In light of Complainant’s trademark registrations and long-standing use of the INTERSYSTEMS Mark “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name”. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
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 <intersistems.com> be transferred to Complainant.
Harrie R. Samaras
Date: September 22, 2018