WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Squarespace, Inc. v. April Sea Information Technology Company Ltd. / Nguyễn Văn Lư
Case No. D2019-3064
1. The Parties
The Complainant is Squarespace, Inc., United States of America (“United States” or “US”), represented by Ken Kwartler Law Office, United States.
The Respondent is April Sea Information Technology Company Ltd. / Nguyễn Văn Lư, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <sqaurespace.com> (the “Disputed Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2019. On December 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 24, 2019 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 December 27, 2019.
The Center sent an email communication to the parties in English and Vietnamese on December 24, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Vietnamese. The Complainant submitted a request for English to be the language of the proceeding on December 27, 2019. The Respondent was requested to submit its comments by December 29, 2019. The Respondent submitted a request for Vietnamese to be the language of the proceeding on January 2, 2020.
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 January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not file any Response and the Notice of Respondent Default was notified on January 30, 2020.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 13, 2020. 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, Squarespace, Inc., is a US-based company, which was founded in 2003. The Complainant is specializing in website design software, website hosting, and other related services via desktop web, mobile web, and mobile app.
The Complainant’s trademark SQUARESPACE has been registered for goods and services in Classes 09, 41, 42, and 45 under US Trademark Registrations No. 3279804 and 5111825, which were registered on August 14, 2007, and January 3, 2017, respectively. However, as shown in the above mentioned trademark registrations, the trademarks SQUARESPACE have been used in commerce since 2004.
The Complainant, in connection with the operation of its business, operates a website at the <squarespace.com> domain name, which was registered on March 25, 2003.
The Respondent registered the Disputed Domain Name <sqaurespace.com> on May 2, 2005. As of the date of this Decision, the Disputed Domain Name is resolving to a parking page containing sponsored links to various third-party contents, including those associated with website design and hosting services. Further, according to what the Complainant established, the Disputed Domain Name used to resolve to a third party’s webpage at “www.wix.com”, competing with the Complainant’s business.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
First, the Complainant contends that the Complainant has rights on the trademarks SQUARESPACE since it owns the US Trademark Registrations No. 3279804 and 5111825 in Classes 9, 41, 42, and 45. Also, the Complainant contends that it has the priority use date of June 6, 2004, occurring nearly a year prior to the registration date of the Disputed Domain Name.
Secondly, the Complainant asserts that the Disputed Domain Name is confusingly similar to SQUARESPACE trademarks owned by the Complainant since the Disputed Domain Name is composed of the element “sqaurespace”, which looks almost identical to the mark SQUARESPACE with the inversion of the third and fourth letters thereof (the letters “u” and “a”).
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant contends that the Respondent’s registration of the Disputed Domain Name infringes the Complainant’s rights in its SQUARESPACE trademark. Such registration violates Section 11 of the Registrar’s terms and conditions, thus the Respondent has no legitimate rights in this trademark.
Second, the Complainant argues that the Respondent has not made any bona fide use of the Disputed Domain Name, has not become commonly known by the Disputed Domain Name and/or has not made legitimate noncommercial use of the Disputed Domain Name, since the Respondent registered the Disputed Domain Name after the Complainant registered its <squarespace.com> domain name and began using its SQUARESPACE trademark. The Respondent is benefiting from the Disputed Domain Name by redirecting consumers to sites of the Complainant’s direct competitor (i.e. <Wix.com>).
Third, the Complainant contends that the Respondent registered the Disputed Domain Name solely for the purpose of profiting from the notable and growing popularity of the Complainant’s business and SQUARESPACE trademark, which is itself a coined and distinctive term.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant argues that the Respondent uses the Disputed Domain Name in bad faith merely to redirect traffic to websites other than the Complainant’s. By this way, the Respondent profits from any association between the Disputed Domain Name and the Complainant’s distinctive trademark and business.
Second, the Complainant submits that typosquatting of this nature is itself evidence of bad faith.
Third, the Complainant asserts that the Respondent acquired the Disputed Domain Name primarily for the purpose of using it to mislead and misdirect consumers seeking the Complainant, thereby disrupting the Complainant’s business and activities.
With said arguments, the Complainant requests that the Disputed Domain Name <sqaurespace.com> be transferred to the Complainant.
B. Respondent
On January 2, 2020, the Respondent sent to the Center an email in the Vietnamese language, in which the Respondent requested Vietnamese to be the language of the proceeding as the Respondent could not understand the Complaint and the Respondent is living in Viet Nam.
6. Discussion and Findings
A. Procedural Issues
(i) Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated December 24, 2019, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by December 27, 2019.
On December 27, 2019, the Complainant submitted a request that English be the language of the proceeding.
On January 2, 2020, the Respondent sent an email to the Center, requesting Vietnamese to be the language of the proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, an American business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(ii) the English language is quite popular in Vietnam, where the Respondent is located, and the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has ample knowledge of the English language and is able to communicate in English;
(iii) the Respondent’s request for Vietnamese to be the language of the proceeding was submitted after the due date of December 29, 2019; in this regard, according to the Center’s Notification of Complainant and Commencement of Administrative Proceeding dated January 9, 2020, the Center accepted the Complaint as filed in English.
Therefore, for the purpose of easy comprehension of the Complainant (the party majorly taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SQUARESPACE. Also, the Complainant has sufficiently demonstrated and evidenced that it has a continuous use of its trademark for its commercial activities, and in particular to offer website design and hosting services bearing the mark SQUARESPACE in particular.
In the case at hand, the Panel notes that the Complainant does not have a registered trademark for “SQUARESPACE” in Viet Nam. The Panel also notes that the two trademark registrations that the Complainant has obtained in the US were issued in 2007 and 2017, after the registration of the Disputed Domain Name. However, it is well established that the jurisdictions where the trademark is valid, its date of registration (or claimed first use), and the goods and/or services for which it is registered or used in commerce, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. See the section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
As to the second requirement that the Disputed Domain Name is identical or confusingly similar to the trademark, the Panel finds that the Disputed Domain Name differs from the SQUARESPACE trademarks by merely the inversion of letter “u” after letter “a” with regard to <sqaurespace.com>. In accordance with section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Thus, the inversion of letters does not prevent a finding of confusing similarity between the Disputed Domain Name and the SQUARESPACE trademarks. In the Panel’s view, “sqaurespace” is confusingly similar to the Complainant’s trademarks in terms of structure, presentation, and pronunciation.
This is a typical case of a deliberate misspelling of a trademark (so-called “typosquatting”), by omitting, adding, or substituting the order of letters of a trademark, where numerous UDRP panels in the past have found confusing similarity to be present; see, inter alia, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.
Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the applicable generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name is viewed as a standard registration requirement and as such can be disregarded in the determination of confusing similarity (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; 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). Therefore, in this present case, the addition of the gTLD “.com” does not prevent a finding of confusing similarity for purposes of the Policy.
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks, and paragraph 4(a)(i) of the Policy is established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit a substantive reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The consensus of UDRP panels is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the disputed domain name (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; section 2.1 of the WIPO Overview 3.0).
In this instant case, the Panel finds that the Respondent has failed to meet that burden since no Response was submitted, while the Complainant has presented evidence to the Panel that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds no evidence available that the Respondent holds any registered or unregistered trademark rights to the Disputed Domain Name.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that the Disputed Domain Name resolves to parked pages with pay-per-click (“PPC”) links that redirect Internet users to other online locations. In this regard, section 2.9 of the WIPO Overview 3.0 holds that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
In this present case, the Panel finds that the PPC links in question are referring to services of the Complainant’s competitors and others. The Complainant also submitted evidence that the Disputed Domain Name used to resolve to a third party’s webpage at “www.wix.com”, which also competes with the Complainant’s business. Hence, in light of the foregoing viewpoint and of a number of well-established prior UDRP decisions, the Panel upholds that operating PPC parking pages using a distinctive trademark or its intentionally misspelled version in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish bona fide offering of goods or services (see, e.g, Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302; Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363).
Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. It is plain to the Panel that the Respondent does not have a name reflecting the Disputed Domain Name. Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is identified by “sqaurespace” or that it has any right in it.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a) of the Policy is established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not submit a reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
Registration in bad faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s SQUARESPACE trademarks have been used in commerce since 2004, before the registration of the Disputed Domain Name. Besides functioning as a trademark, SQUARESPACE is also being used in the Complainant’s domain name <squarespace.com> that was registered in 2003.
The Disputed Domain Name in fact incorporates typographical errors of the SQUARESPACE trademarks. Further, SQUARESPACE as a whole is not descriptive and is devoid of meaning other than the services of the Complainant. Hence, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the typographical errors of the Complainant’s trademarks without knowledge of the SQUARESPACE trademarks and it defies common sense to believe that the Respondent coincidentally selected the Disputed Domain Name without any knowledge of the Complainant and its trademarks.
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent obviously knew of the Complainant and its SQUARESPACE trademarks before the registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent to take advantage of the Complainant’s goodwill.
Use in bad faith
In section 6.C. above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the Panel’s view, use of a domain name to which one has no rights or legitimate interests, is very often a clear indication of use in bad faith.
As discussed earlier, the Respondent is typosquatting the Complainant’s trademarks in the Disputed Domain Name. The Disputed Domain Name resolves to PPC parking sites, where the PPC links are also referring to the services of the Complainant’s competitors and others. These facts, in the Panel’s opinion, further evidence bad faith use.
With all these facts in mind, the Panel finds that by using the Disputed Domain Name in this manner, the Respondent has intentionally attempted to attract Internet users to its website and earns income from such links on a PPC basis by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain, and earning.
In addition, the Panel notes that the Respondent, Nguyễn Văn Lư, in 2019, was involved in another typosquatting case of domain name disputes, namely Thi Factory S.A. v. Vietnam Domain Privacy Services, Nguyễn Văn Lư, WIPO Case No. D2019-2596.
Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b) of the Policy, and the third element under paragraph 4(a) of the Policy is established.
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 Name <sqaurespace.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: February 26, 2020