DECISION

De La Rue Holdings PLC v. Video Images Productions L.L.C.

Claim Number:  FA0309000196054

PARTIES

Complainant is De La Rue Holdings PLC, Hampshire, England (“Complainant”) represented by Michael S. Culver, of Oliff & Berridge, PLC.  Respondent is Video Images Productions, L.L.C., Houston, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <delaru.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

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

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 15, 2003; the Forum received a hard copy of the Complaint on September 16, 2003.

On September 15, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <delaru.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 September 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2003 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@delaru.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 October 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <delaru.com> domain name is confusingly similar to Complainant’s DE LA RUE mark.

2. Respondent does not have any rights or legitimate interests in the <delaru.com> domain name.

3. Respondent registered and used the <delaru.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant was founded by Thomas De La Rue in 1813 and has traded under the DE LA RUE mark on a worldwide basis since that time.  Complainant has been a pioneer of currency and security printing and cash handling since its development.  Currently, Complainant employs almost 7,000 people in 31 countries and works with financial institutions in over 60 countries. 

Complainant is the holder of United States Patent and Trademark Office (“USPTO”) Registration No. 2,464,824 (registered on July 3, 2001) for the DE LA RUE mark.  Complainant also holds trademark registrations for its DE LA RUE mark in 65 other countries. 

Respondent registered the <delaru.com> domain name on October 13, 2002.  Respondent mousetraps Internet users who type in the <delaru.com> domain name by subjecting them to a barrage of unsolicited advertisements.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

The Panel finds that Complainant has established rights in its DE LA RUE mark through registration of the mark with the USPTO and throughout the world.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <delaru.com> domain name is a simple misspelling of Complainant’s mark.  Respondent merely eliminates the letter “e” from Complainant’s DE LA RUE mark in its domain name.  Eliminating a letter from another’s mark is a common typographical error that Internet users often make.  Thus, the omission of the letter “e” does not significantly alter the overall impression of the mark.  Consequently, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Am. Airlines Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com> "effectively identical and certainly confusingly similar" to Complainant's AMERICAN AIRLINES registered marks).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Although Respondent has the burden of rebutting Complainant’s allegations, Respondent did not submit a Response to the Panel.  Thus, the Panel accepts as true all reasonable allegations set forth in the Complaint and accordingly finds that Respondent does not have any rights or legitimate interests in the <delaru.com> domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

There is no evidence before the Panel showing that Respondent is commonly known by either the <delaru.com> domain name or the DE LA RUE mark.  Thus, the Panel infers that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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 is using the <delaru.com> domain name to subject unsuspecting users to a barrage of unsolicited advertisements.  It can be inferred that Respondent is commercially benefiting by subjecting Internet users to the pop-advertisements.  Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The list of circumstances evidencing bad faith under Policy ¶ 4(b) are nonexclusive.  Thus, the Panel chooses to consider other circumstances in determining whether Respondent registered and used the <delaru.com> domain name in bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Respondent is profiting by mousetrapping Internet users at its website by bombarding unknowing users with advertisements when they inadvertently misspell Complainant’s mark.  In the past, Panels have determined that mousetrapping by itself is a prima facie showing of bad faith use and registration.  Consequently, the Panel concludes that Respondent registered and used the <delaru.com> domain name in bad faith.  See Woldwinner.com, Inc. v. Cupcake Patrol, FA 175289 (Nat. Arb. Forum Sept 22, 2003) (“To the extent that Policy ¶ 4(b)(iv) defines, as bad faith registration and use, the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark, so too must the practice of mousetrapping evidence bad faith registration and use of a domain name identical or confusingly similar to another’s mark”); see also Kidman v. Zuccarini, D2000-1415 (WIPO Jan. 23, 2001) (finding that Respondent’s use of mousetrapping techniques demonstrated bad faith).

Moreover, Respondent is using a typosquatted version of Complainant’s DE LA RUE mark to mousetrap unwary Internet users.  Typosquatting in itself is evidence of bad faith use and registration.  Accordingly, the Panel concludes that Respondent registered and used the <delaru.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

Accordingly, 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 relief shall be GRANTED.

Accordingly, it is Ordered that the <delaru.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  October 27, 2003

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