DECISION

Gold & Silver Reserve, Inc. v. Giacomo Furlan

Claim Number: FA0204000109054

PARTIES

Complainant is Gold & Silver Reserve, Inc., Wilmington, DE (“Complainant”) represented by Michael F. Snyder, of Drinker Biddle & Reath LLP.  Respondent is Giacomo Furlan, Bruino, Torino, ITALY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <e-yold.com>, <e-vold.com>, <e-qold.com>, <e-gpld.com>, <e-gopd.com>, <e-golx.com>, <e-gols.com>, <e-golr.com>, <e-gole.com>, <e-golc.com>, <e-glox.com>, <e-glld.com>, <e-gkld.com>, <e-gild.com>, <e-g9ld.com>, <e-g0ld.com>, and <3-gold.com>, registered with Verisign, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 4, 2002; the Forum received a hard copy of the Complaint on April 8, 2002.

On April 8, 2002, Verisign, Inc. confirmed by e-mail to the Forum that the domain names <e-yold.com>, <e-vold.com>, <e-qold.com>, <e-gpld.com>, <e-gopd.com>, <e-golx.com>, <e-gols.com>, <e-golr.com>, <e-gole.com>, <e-golc.com>, <e-glox.com>, <e-glld.com>, <e-gkld.com>, <e-gild.com>, <e-g9ld.com>, <e-g0ld.com>, and <3-gold.com> are registered with Verisign, Inc. and that Respondent is the current registrant of the names.  Verisign, Inc. has verified that Respondent is bound by the Verisign, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 30, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@e-yold.com, postmaster@e-vold.com, postmaster@e-qold.com, postmaster@e-gpld.com, postmaster@e-gopd.com, postmaster@e-golx.com, postmaster@e-gols.com, postmaster@e-golr.com, postmaster@e-gole.com, postmaster@e-golc.com, postmaster@e-glox.com, postmaster@e-glld.com, postmaster@e-gkld.com, postmaster@e-gild.com, postmaster@e-g9ld.com, postmaster@e-g0ld.com, and postmaster@3-gold.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent has registered seventeen domain names that are confusingly similar to Complainant’s E-GOLD mark.  The only difference between the mark and each of the seventeen disputed domain names are common spelling errors, and thus the domain names do not distinguish themselves from Complainant’s mark.

2. Respondent’s use of the disputed domain names is a blatant attempt to trade on the goodwill associated with Complainant and Complainant’s E-GOLD mark.  Respondent has not received a license from Complainant, and diverting Internet users by taking advantage of common misspellings is not a legitimate use of the disputed domain names.  Further, Respondent is not commonly known by any of the disputed domain names.  Therefore, Respondent has no rights or legitimate interests in any of the seventeen disputed domain names.

3. Respondent registered the seventeen confusingly similar domain names to disrupt Complainant’s business, and thus has registered the disputed domain names in bad faith.  Furthermore, Respondent’s use of seventeen confusingly similar domain names that are connected to confusingly similar websites is evidence that Respondent has used the disputed domain names in bad faith under Policy ¶ 4(b)(iv).

B. Respondent

No Response was submitted.

FINDINGS

Complainant, Gold & Silver Reserve, Inc. has been providing services in connection with online monetary exchange under the trademark E-GOLD since at least as early as November 1996.  Complainant registered its E-GOLD mark on December 29, 1998 with the United States Patent and Trademark Office, Reg. No. 2,215,173, for administration of an electronic medium of monetary exchange, backed by precious metal in the physical custody of a repository and owned by another party (The E-Gold Bullion Reserve Special Purpose Trust).  Complainant owns and operates an Internet website located at <e-gold.com>, which reflects its goods and services. 

Respondent registered <e-qold.com> on April 8, 2001.  Respondent registered the remaining sixteen disputed domain names on April 7, 2001.  Respondent links each of the disputed domain names to a website that not only offers similar services, but uses Complainant’s E-GOLD mark on the corresponding websites.  According to the Complaint, Respondent’s websites are a complete replica of the website associated with Complainant’s E-GOLD mark, <e-gold.com>, and Respondent’s use of the disputed domain name is to drain the E-GOLD account of Complainant’s customers.

Respondent has sent an e-mail to Complainant stating that he is the owner of “more of 30 e-gold mistyped web site” and that Respondent “could change web hosting service everyday until you close your e-gold web site.”  Respondent then requested $3,000 “every [M]onday” to “suspend all the attacks against” Complainant.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant has established its right to the E-GOLD mark through registration with the United States Patent and Trademark Office and subsequent continuous use.  All seventeen disputed domain names are confusingly similar to Complainant’s mark.

First, Each of the seventeen disputed domain names incorporate the generic top-level domain (gTLD).  Since it has been held that an addition of a gTLD does not create a distinguishable mark capable of overcoming confusing similarity, the disputed domain names are similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).

Second, each of the seventeen disputed domain names misspells Complainant’s E-GOLD mark in some manner.  For example, one disputed domain name is <e-yold.com> where the disputed domain name uses a “y” rather than the “g” of E-GOLD.  Another example is <3-gold.com>, which Respondent has used a “3” to replace the “e” of E-GOLD.   In both cases, Respondent takes advantage of typos; Respondent’s intent is evident considering that each mistaken character is right next to the intended character.  Further, this is the case in sixteen of the seventeen domain names; only <e-qold.com> is not in the same vein.  However, because “q” and “g” are confusingly similar and like the other sixteen disputed domain names, <e-qold.com> takes advantage of a typographical error of Complainant’s mark, therefore, all seventeen disputed domain names are confusingly similar to Complainant’s mark.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistakes by users when entering the url address”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not filed a Response.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in any of the disputed domain names.  See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to respond to the Panel's additional requests warranted a finding for Complainant).  Because a Response was not filed, the Panel presumes that all allegations in the Complaint are true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent has used seventeen confusingly similar domain names to divert Internet users to a website that causes confusion as to whether Complainant sponsors or endorses the website associated with each of the seventeen disputed domain names.  Such activity is not considered a bona fide offering in connection with the disputed domain names pursuant to Policy ¶ 4(c)(i).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use)

         

Respondent is known as “Giacomo Furlan” and there is no evidence presented that Respondent is commonly known by any of the seventeen disputed domain names.  Therefore, Respondent has not satisfied Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

         

Respondent has used seventeen domain names that take advantage of various misspellings of Complainant’s E-GOLD mark.  Such use is not considered a right or legitimate interest pursuant to Policy ¶ 4(c)(iii).  See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has registered seventeen confusingly similar domain names that direct Internet users to a website that offers nearly identical services to Complainant’s website.  Therefore, there is an inference that Respondent has registered the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  See Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring BAYAREAVW.COM from Respondent automobile dealership specializing in Volkswagens to Complainant); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring <fossilwatch.com> from Respondent watch dealer to Complainant); see also Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular phone dealer to Complainant).

 

Respondent has registered seventeen disputed domain names, which incorporate various misspellings of Complainant’s E-GOLD mark.  It has been held that this practice of “typosquatting” has been recognized as a bad faith use of domain names under the UDRP, therefore Respondent has used the disputed domain names in bad faith.  See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the following domain names: <e-yold.com>, <e-vold.com>, <e-qold.com>, <e-gpld.com>, <e-gopd.com>, <e-golx.com>, <e-gols.com>, <e-golr.com>, <e-gole.com>, <e-golc.com>, <e-glox.com>, <e-glld.com>, <e-gkld.com>, <e-gild.com>, <e-g9ld.com>, <e-g0ld.com>, and <3-gold.com> be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: May 23, 2002

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