WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Corporation Service Company Corporation / Netnames Operations Limited v. WhoisGuard, Inc. / Lord Oxford

Case No. D2019-0322

1. The Parties

The Complainant is Corporation Service Company Corporation of Wilmington, Delaware, United States of America (“United States”) / Netnames Operations Limited of London, United Kingdom, represented by CSC Digital Brand Services AB, Sweden (hereinafter the “Complainant”, unless referred to individually).

The Respondent is WhoisGuard, Inc. of Panama / Lord Oxford of Brisbane, Australia.

2. The Domain Names and Registrar

The disputed domain names <netnames.site>, <netnames.website>, and <netname.website> are registered with NameCheap, Inc. and the disputed domain name <netnames.global> is registered with Uniregistrar Corp (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2019. On February 12, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 12, 2019, the registrar NameCheap, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for three of the disputed domain names which differed from the named Respondent and contact information in the Complaint. On February 13, 2019, the registrar Uniregistrar Corp transmitted by email to the Center its verification response disclosing registrant and contact information for one of the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2019, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 18, 2019.

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 February 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2019.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on March 19, 2019. 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 first Complainant is Corporation Service Company Corporation (CSC), a leading provider of business and legal brand services. CSC has existed since 1899 and since 2016 is the owner of the second Complainant, NetNames Operations Limited. The second Complainant, NetNames Operations Limited, is a company that provides online brand protection, domain name management and acquisition services throughout the world. Annexes 6.1-6.2 and 6.3 of the Complaint illustrate the history of the Complainants as well as of the acquisition.

The first Complainant is the owner of several trademark registrations granted worldwide for the NETNAMES mark. As evidenced by the documents attached to the Complaint, the mark has been extensively promoted, without limitation, in print advertisements, promotional materials, Internet forums, etc. The first and second Complainants have a significant portfolio of trademark registrations, as presented in Annex 1 of the Complaint (see, for example, Australia trademark registration no. 878254 for NETNAMES, registered March 3, 1999).

The disputed domain names were registered between June and September of 2018. One disputed domain name, <netnames.site>, does not resolve to an active website. The remaining three disputed domain names all resolve to the same blog-style website featuring content unrelated to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant has used the mark NETNAMES to identify its services and website for a long time, the first registration being granted in 1999. The service provided was innovative and for that reason was successful. The mark identifies the services from the Complainant all over the world.

The Complainant is the owner of trademark registrations obtained in different jurisdictions, as stated in Annex 1 of the Complaint, which presents registrations issued by the United States Patent and Trademark Office, the European Union Intellectual Property Office, and the Intellectual Property Office of Australia.

“Netnames” is not a dictionary word, rather a creation of the Complainant, a creative agglutination of words.

The disputed domain names <netnames.global>, <netnames.website> and <netnames.site> reproduce the Complainant’s NETNAMES trademark, resulting in domain names that are identical to the Complainant’s NETNAMES trademark and thus meeting the requirements under paragraph 4(a)(i) of the Policy. On its turn, the disputed domain name <netname.website> is a purposeful misspelling of the Complainant’s NETNAMES trademark and also may be considered confusingly similar to the Complainant’s trademark, a clear example of typosquatting, which is intended to confuse Internet users.

The Complainant tried to contact the Respondent by addressing cease-and-desist (“C&D”) letters by email, to which the Respondent replied with an offer to sell the disputed domain name <netnames.global>.

B. Respondent

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

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names are, indeed, confusingly similar to the NETNAMES trademark. They clearly show the Complainant’s mark either in its entirety, either with the suppression of a letter, which can be seen as an example of typosquatting.

The Complainant has presented consistent evidence of ownership of the trademark NETNAMES in various jurisdictions, by presenting international registrations for it, as well as evidence of the use of the trademark to identify the original services as of 1999.

Given the above, the Panel concludes that the disputed domain names are confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

The evidence demonstrates that the trademark NETNAMES is widely known as identifying the Complainant’s activities, and is registered in the Complainant’s name. Given that the Complainant has not licensed this trademark to the Respondent and has not otherwise permitted the use of the disputed domain names, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. In the absence of a Response, the Respondent has not rebutted such prima facie case.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

Given the circumstances of this case, the facts outlined in sections 6A and 6B above can also evidence the Respondent’s bad faith in the registration and use of the disputed domain names.

The Panel finds that the disputed domain names were registered to mislead consumers, as they reproduce or nearly reproduce the Complainant’s trademark. The Respondent’s intention appears to have been to give the impression that each of the disputed domain names is associated with the Complainant.

Further, the Respondent responded to the C&D letter by offering the disputed domain name <netnames.global> for sale for USD 900. Following receipt of the C&D letter, the Respondent then proceeded to register the other three disputed domain names, which can be considered as clear evidence of bad faith.

The Panel also considers the fact that the Respondent owns other domain names that are apparently reproducing marks owned by third parties as suggestive of bad faith.

All the points above lead to the conclusion by the Panel that the Respondent was fully aware of the Complainant at the time of registration of the disputed domain names and that the Respondent registered and is using the disputed domain names in bad faith.

The Panel finds that the Complainant has proved the third element 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 disputed domain names <netnames.global>, <netnames.site>, <netnames.website>, and <netname.website> be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: April 2, 2019