WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
US Publishers, Inc. v. US Immigration Organization
Case No. D2011-1214
1. The Parties
The Complainant is US Publishers, Inc., of Newark, United States of America, represented by Leavens, Strand, Glover & Adler, LLC, the United States of America.
The Respondent is US Immigration Organization, of Chicago, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <usaimmigrationsupport.com> is registered with eNom. (“Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2011. On July 15, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 19, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On July 22, 2011, the Center noted that the Complaint was incomplete and requested the Complainant to provide with a complete version of it, according to paragraph 3 of the Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Complainant filed a copy of the complete Complaint on the same day.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2011. The Response was filed with the Center on August 17, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on September 9, 2011. 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 owns United States trademark registrations for US IMMIGRATION SUPPORT and USIMMIGRATIONSUPPORT.ORG, for use in connection with providing a website featuring information about legal aspects of immigration and online electronic publishing of books and periodicals respecting immigration. The Complainant’s trademarks were registered by the United States Patent and Trademark Office (“USPTO”) on July 20, 2010, under Section 2(f) of the Lanham Act.1 Under Section 2(f) of the Lanham Act, the USPTO will permit registration on its Principal Register of a trademark that is primarily descriptive if it has become distinctive through substantially exclusive and continuous use for five years.
The Complainant maintains a website at “www.usimmigrationsupport.org” (“US Immigration Support”), which the record reflects the Complainant has operated since January 2004.2 On its website, the Complainant offers for sale information guides on immigration-related topics. These information guides include United States Citizenship and Immigration Services (“USCIS”) application forms, and detailed information for self-filing such applications with the USCIS.3
The Respondent registered the disputed domain name on May 24, 2009. The disputed domain name resolves to a website (“United States Immigration Organization”) on which the Respondent offers for sale information guides for self-filing various USCIS applications. For USCIS applications that are capable of being filed electronically, the Respondent for a fee provides “self-preparation form software” enabling online preparation of and electronic filing of various applications with the USCIS.4
5. Parties’ Contentions
A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to its US IMMIGRATION SUPPORT and USIMMIGRATIONSUPPORT.ORG trademarks, and is identical to the Complainant’s trademarks except for the insertion of the letter “a” after the letters “us”. According to the Complainant, it has invested substantial sums of money in the advertising and promotion of its trademarks, which are highly distinctive of the Complainant’s goods and services, and have achieved a high degree of consumer goodwill and recognition. The Complainant asserts that it has used the trademarks in commerce since January 12, 2004, coinciding with the launch of the Complainant’s website.
The Complainant contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant maintains that the Respondent has never been commonly known by the disputed domain name, and asserts that the Respondent registered the disputed domain name in order to prevent the Complainant from owning said domain name, and to exploit and profit from the goodwill associated with the Complainant’s trademarks. The Complainant further contends that the Respondent has a long history of competing unfairly with the Complainant, through both copyright and trademark infringement of which the Complainant placed the Respondent on notice of in August 2009. The Complainant maintains that as a result of a DMCA takedown letter sent to the Respondent’s web hosting provider in August 2009, the Respondent’s website was taken down. Nevertheless, the Complainant asserts that the Respondent’s current website continues to infringe upon the Complainant’s copyrighted materials.
According to the Complainant, the Respondent was well aware of the Complainant’s trademark rights prior to the registration of the disputed domain name, which the Complainant alleges the Respondent is using to intentionally attract Internet visitors to its website by impermissibly using the Complainant’s trademarks. In view of all of the foregoing, the Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant argues that the Respondent’s lack of rights or legitimate interests in the disputed domain name creates a presumption that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that bad faith is demonstrated by the Respondent’s registration of the disputed domain name more than five (5) years after the Complainant registered its domain name and began using its trademarks. The Complainant maintains that its trademarks, by virtue of their registration on the USPTO Principal Register, enjoy a presumption of validity. Further, the Complainant contends that the Respondent registered the disputed domain name in bad faith and solely for purposes of competing unfairly with the Complainant. Further, the Complainant contends that the Respondent has engaged in the bad faith tactic of “typosquatting”.
B. Respondent
The Respondent claims that it owns registered trademarks issued by the USPTO for USA IMMIGRATION SUPPORT and USAIMMIGRATIONSUPPORT.COM. Parenthetically, the Panel notes from the record that the Respondent filed an application to register these trademarks with the USPTO on July 18, 2011, the day the Respondent received notice of the filing of the instant Complaint. The Respondent’s application is pending and has not yet been examined by the USPTO.
The Respondent asserts that more than 98% of the revenues generated from its website come from the sale of “self-preparation form software”, which the Complainant does not offer. According to the Respondent, the applications and instructions included in the Complainant’s application information guides can be obtained for free from the USCIS website. The Respondent asserts, based on statistics it maintains, that only 0.07% of the clicks received by its website are derived from the keyword “US Immigration Support”. Thus, the Respondent concludes that “US Immigration Support” is of little or no utility as a keyword.
The Respondent asserts that it changed the content of its website 2 years ago in response to the Complainant’s letter of August 2009, and had heard nothing further from the Complainant until recently. The Respondent contends that the layout of its website is totally different from that of the Complainant. The Respondent further denies that the Complainant has valid copyright claims regarding its information guides, which the Respondent maintains are based on publicly available information and instructions for applications available on the USCIS website.
The Respondent argues that the success of the Respondent’s immigration application preparation software, which the Complainant does not have, coupled with the Respondent’s securing of a number of high value keywords on the top of natural search engine listings, constitutes the underlying motivation for the Complainant’s recent actions, rather than concerns about copyright or trademark infringement as alleged. The Respondent argues that the Complainant is trying to take down a competitor because the Complainant’s business is being hurt, and making false claims to damage the reputation of the Respondent’s in order to “steal the [Respondent’s] expensive product free of charge”. The Respondent claims that the Complainant has not responded to offers to buy the disputed domain name or otherwise “rectify the situation in a fair and reasonable way”.5
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) that the disputed domain name <usaimmigrationsupport.com> is confusingly similar to the Complainant’s US IMMIGRATION SUPPORT and USIMMIGRATIONSUPPORT.ORG trademarks, in which the Complainant has established rights. The registration of the Complainant’s trademarks on the USPTO Principal Register pursuant to section 2(f) of the Trademark Act, based on substantially exclusive and continuous use of a trademark by the applicant in commerce for five years, constitutes prima facie evidence that the marks have acquired distinctiveness as used with the Complainant’s goods or services.
In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.6 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. This is commonly tested by comparing the trademark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
In this instance, the disputed domain name differs from the Complainant’s trademarks only by the insertion of the letter “a” after the letters “us”. As used in this context, it is evident that the terms “US” and “USA” interchangeably refer to the United States of America. Accordingly, based on a comparison of the Complainant’s trademarks and the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks for purposes of paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent is using the disputed domain name in connection with a commercial website where the Respondent offers goods and services in direct competition with the Complainant. There is no indication that the Respondent, which operates under the name “United States Immigration Organization”, has been commonly known by the disputed domain name, and it is undisputed that the Respondent has not been authorized by the Complainant to use its trademarks.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it 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.
A number of panels have concluded that a respondent has the right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered trademark of a complainant, at least in circumstances indicating that the respondent was not aware or reasonably should not have been aware of the complainant’s rights in the mark. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
On the record of this case, the Respondent has not demonstrated to the satisfaction of this Panel that it registered the disputed domain name based on a good faith belief that its value was based on attraction as a descriptive term. The Response convincingly reflects that the Respondent is well aware of its major competitors, one of whom is the Complainant, which has operated its business under the US IMMIGRATION SUPPORT and USIMMIGRATIONSUPPORT.ORG trademarks since early 2004. The Respondent has not claimed to have been unaware of the Complainant or the Complainant’s trademarks when registering the disputed domain name in May 2009. Further, the Respondent has provided statistics indicating that the term “US Immigration Support” is of little or no value to the Respondent in a descriptive sense, since as a keyword (or natural search term) it does not drive Internet traffic to the Respondent’s website to any appreciable extent.
In light of the foregoing, Panel is persuaded from the record before it that the Respondent registered the disputed domain name because of its value as a trademark – that is, because the disputed domain name reflected the trademark of one of the Respondent’s major, established competitors. On the basis of the record before it, the Panel considers that the Respondent most likely acquired the disputed domain name in order to trade on the initial interest confusion between the disputed domain name and the Complainant’s trademarks. Under such circumstances, the Respondent cannot be said to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com v. Ult. Search, Inc., WIPO Case No. D2001-1319. See also Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
After a thorough review of the record, the Panel concludes that the Respondent’s conduct in this case supports a finding of bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. Based on the facts and circumstances reflected in the record, as noted herein and under the preceding heading, the Panel concludes that the Respondent registered and is using the disputed domain name with the intent to exploit and profit from the goodwill associated with the Complainant’s marks. See Aubert International SAS and Aubert France SA v. Tucows.com Co., supra. The Panel is further of the view that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 disputed domain name, <usaimmigrationsupport.com>, be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: September 23, 2011
1 The Complainant’s applications to register its marks were filed with the USPTO on October 2, 2009.
2 The Complainant registered the domain name that resolves to its website, <usimmigrationsupport.org> on January 12, 2004, according to relevant WhoIs information.
3 The USCIS is the federal government agency that oversees lawful immigration to the United States. Various immigration and citizenship application forms are provided by the USCIS and can be downloaded for free from the official USCIS website, and some electronically filed with the USCIS. The USCIS prescribes filing fees for some of the applications.
4 The Respondent charges fees (that according to the disclaimer on the Respondent’s website do not include any prescribed USCIS filing fees) for providing online application forms and electronically filing the completed applications with the USCIS. This appears to be characterized by the Respondent as the purchase of “self-preparation form software”.
5 Parenthetically, the Panel notes that, following the filing of the Complaint, the Respondent indicated in an email sent to the Complainant’s counsel that the Respondent would consider selling the disputed domain name along with the Respondent’s immigration application preparation software for USD 16,000,000.