WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ross-Simons, Inc. v. Domain.Contact
Case No. D2003-0994
1. The Parties
The Complainant is Ross-Simons, Inc., a corporation existing under the laws of the State of Rhode Island, United States of America ("USA"). The Complainant is represented by Amy B. Spagnole, Esq. of Hinckley, Allen & Snyder LLP, Boston, Massachusetts, USA.
The Respondent is registered as Domain.Contact, of Kuala Lumpur, Malaysia.
2. The Domain Names and Registrar
Thirteen domain names are in dispute: <rossssimons.com>, <rosss-simons.com>, <ross-simonsdimonds.com>, <ross-simons-diamonds.com>, <ross-simon-diamonds.com>, <rosssimonns.com>, <rosssimones.com>, <rosssimond.com>, <rosssimone.com>, <ross-simonns.com>, <ross-simones.com>, <ross-simonds.com>, <ross-imons.com>.
The registrar of the disputed domain names is iHoldings.com, Inc. d/b/a DotRegistrar.com, of Miami, Florida, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") in hardcopy on December 15, 2003, and by email on December 23, 2003, and was copied by email and post to the Respondent.
On December 16, 2003, the Center transmitted by email to the registrar a request for the registrar's verification of details relating to the disputed domain names. On December 16, 2003, the registrar responded to the Center confirming that the Respondent is listed as the registrant of the disputed domain names, and providing the contact details for the administrative, billing, and technical contacts for the domain names. The Center then verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally sent notification to the Respondent of the Complaint on January 14, 2004, by post and email to all available contact details for the Respondent. This proceeding commenced on the same day. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 3, 2003. No response was filed by the Respondent. Accordingly, the Center notified the Respondent's default on February 5, 2003.
The Center appointed James A. Barker as sole panelist on February 18, 2004. The Panel finds that it was properly constituted. The Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence for compliance with the Rules, paragraph 7.
This Decision is due to be provided by the Panel to the Center on March 3, 2004.
4. Factual Background
Since 1952, the Complainant has sold fine jewelry, tableware, gifts, collectibles, home decor and related items through well-known retail and outlet stores, by mail order and on-line under the mark ROSS-SIMONS. Copies of the Complainant's mail order and on-line catalogues were attached to the Complaint. The Complainant also operates websites at <ross-simons.com> and <ross-simonsdiamonds.com>. The Complainant has operated the website at <ross-simons.com> since May 1996. The Complainant is also the owner of a service mark registration in the USA for ROSS-SIMONS, for "retail store and mail order services specializing in jewelry, china, silver and gift items".
The Complainant also operates an affiliate program, by which owners of websites that provide a link to the Ross-Simons on-line catalogue can earn up to 7% of the merchandise value of sales arising from that link.
The Complainant states that the Respondent used the domain names to fraudulently obtain commissions from the Complainant's affiliate program, by redirecting users who misspelled the domain names <ross-simons.com> or <ross-simonsdiamonds.com>, both of which are operated by the Complainant. The domain names registered by the Respondent, according to the Complaint, all pointed to Ross-Simons’ on-line catalogue. At the date of the appointment of the Panel however, the domain names did not appear to revert to any website.
5. The Parties’ Summarized Contentions
The following is a summary of the Complaint.
Since 1952, the Complainant has substantially, continuously and exclusively used the mark ROSS-SIMONS in connection with its business. The Complainant is the owner of a registered United States service mark for ROSS SIMONS. As a result of its continuous and exclusive use of the mark ROSS-SIMONS, Ross-Simons has built up substantial value and goodwill in its ROSS-SIMONS registered mark.
The disputed domain names are confusingly similar to Complainant’s ROSS-SIMONS registered mark. The only difference between the Complainant’s registered mark, the Complainant’s domain names <ross-simons.com> and <ross-simonsdiamonds.com>, and the Respondent’s domain names is the insertion or deletion of one or two letters and/or the deletion of a hyphen.
The Respondent has no rights or legitimate interests with respect to the Complainant’s registered mark or the disputed domain names. In effect, the Complaint states that the Respondent could not demonstrate any of the elements of paragraph 4(c)(i)-(iii) of the Policy, which might demonstrate rights or legitimate interests for the purpose of that paragraph. Also, the Complainant has not authorized, licensed or otherwise permitted the Respondent to apply for or use any domain name comprising or incorporating the Complainant’s registered mark or any confusingly similar variation of that mark.
The Respondent’s registration and use of the disputed domain names was done in bad faith. The Respondent is using confusingly similar domain names to re-direct unsuspecting Internet users who inadvertently misspell or mistype the Complainant’s name to the Respondent’s website and then immediately to the Complainant’s website. The mere act of "typosquatting" or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of bad faith registration and use.
The Complainant seeks the transfer of the domain names to it.
The Respondent did not file a Response.
The Panel notes that, under paragraph 14(a) of the Rules, if a party does not comply with a time period established by the Rules, the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b) of the Rules, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with the Rules.
There are no exceptional circumstances in this case. Accordingly, subject to the discussion and findings below, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant.
6. Discussion and Findings
Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain names transferred to it, the Complainant must prove that:
- the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain names; and
- the domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the mark ROSS-SIMONS. The Complainant provided uncontested evidence of the Complainant's rights arising from continuing use of its mark in commerce, and from its registration of the mark in the USA.
Each of the disputed domain names incorporate, entirely or in recognizable part, the Complainant's mark. Self-evidently, none of the disputed domain names are identical to the Complainant's mark. Accordingly, for the Complaint to succeed, it must be demonstrated that the disputed domain names are confusingly similar to the Complainant's mark.
All of the domain names are variations on, or incorporate entirely, the Complainant's mark.
Ten of the disputed domain names are either slight misspellings of the Complainant's mark, in some cases combined with a misplacement of a hyphen. In addition, those domain names are all phonetically similar to the Complainant's mark, and are visually similar. These similarities strongly support a finding that these ten domain names are confusingly similar to the Complainant's mark. It is also relevant that the Complainant's service mark is not descriptive. It is a mark which is distinctive because of its association with the Complainant's business. Slight variations on such a mark will, by nature, be more likely to be confused with the distinctive mark of the Complainant.
In the case of the ten misspelled domain names, it is clear that the Respondent has engaged in a form of ‘typosquatting’. ‘Typosquatting’ is a practice in which a respondent registers domain names with slight misspellings of a complainant's mark to divert internet traffic. There are a substantial number of panel decisions which have found that such domain names are confusingly similar to the marks which they misspell. (For a recent example, see Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707, which cites other panel decisions which have made similar findings.)
The other three disputed domain names (<ross-simons-diamonds.com>, <ross-simonsdimonds.com>, <ross-simon-diamonds.com>) comprise the Complainant's mark entirely or a slight variation of it, and add the word ‘diamonds’ or a misspelling of that word (dimonds). The sale of diamonds is associated with the Complainant's business. Therefore, the inclusion of the word ‘diamonds’ (and the misspelling of that word) in these three domain names strengthens the association, and therefore the confusing similarity, between the domain names and the Complainant’s mark.
For these reasons, the Panel finds that all of the thirteen domain names are confusingly similar to the mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant states that the Respondent has no rights or legitimate interests in domain names, because:
- there is no evidence that the domain names comprise the legal name of or a name that is commonly used to identify the Respondent;
- there is no evidence that the Respondent used the domain names or trademarks corresponding to the domain names in connection with a bona fide offering of goods or services;
- there is no evidence that the Respondent made a bona fide non-commercial, fair use of the domain names.
The Respondent did not file any Response to dispute these statements by the Complainant.
The Complainant also states that the Respondent used the domain names to obtain commissions through its affiliate program, by diverting Internet traffic to the Respondent's website that instantaneously re-directed consumers to Ross-Simons’ website. (Although the Complainant did not provide supporting evidence, the Panel accepts this contention because there is no evidence to the contrary. However, the Respondent must have since stopped diverting Internet traffic in that way. At the date of this decision none of the disputed domain names resolved to an active website.)
The Complainant's affiliate program necessarily gives its members some rights to link and direct Internet traffic to the Complainant's website. (The Complaint attached a copy of information about the affiliate program, which is also available on its website at <ross-simons.com>.) The issue is whether, by joining this program, the Respondent obtained a right or legitimate interest in the disputed domain names.
The apparent terms of the affiliate program are not detailed about the extent to which a member might use the Complainant's mark. Relevantly, the program states "you have the right to link to "www.ross-simons.com" in a variety of ways - text links, banners, product links and virtual storefronts are the major link types available to you". The program does not appear to give its members rights to use a domain name that is identical or confusingly similar to the ROSS-SIMONS mark. Supporting this conclusion, the Complaint states that it has not authorized, licensed or otherwise permitted the Respondent to incorporate its mark, or any confusing similar variation, in a domain name.
Accordingly, the Complainant has established that the Respondent has no rights or legitimate interests in respect of the domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides (in part) that there is evidence of bad faith registration and use where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Complainant contends that there is evidence of the Respondent's bad faith under this paragraph 4(b)(iv) of the Policy. The Complainant referred to a number of previous panel decisions to support this contention (including, for example, Register.com, Inc. v. Mike Torres, FA 0302000145209 (March 11, 2003)) all of which involved similar facts to the present case. (Each of those cases involved membership of an affiliate program by the respondent, and registration by the respondent of a domain name based on a misspelling of the complainant’s mark.) In all of those cases, the panels made an order for the transfer of the domain names then in dispute.
As noted above, the Panel has accepted that the Respondent was a member of the Complainant's affiliate program, and received commissions from referrals to the Complainant's website via the disputed domain names. As such, it seems clear that the Respondent had an intention to attract Internet users to its site by creating a likelihood of confusion with the Complainant's mark, and this comprises evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly, all of the disputed domain names were registered and used in bad faith.
For all 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 be transferred to the Complainant, Ross-Simons, Inc., being the domain names as follows: <rossssimons.com>, <rosss-simons.com>, <ross-simonsdimonds.com>, <ross-simons-diamonds.com>, <ross-simon-diamonds.com>, <rosssimonns.com>, <rosssimones.com>, <rosssimond.com>, <rosssimone.com>, <ross-simonns.com>, <ross-simones.com>, <ross-simonds.com>, <ross-imons.com>.
James A. Barker
Dated: March 3, 2004