DECISION

Register.com Inc. v. Kuska House

Claim Number: FA0307000167970

PARTIES

Complainant is Register.com Inc., New York, NY (“Complainant”) represented by Brett E. Lewis of Register.com Inc. Respondent is Kuska House, Kingston, ON, CANADA (“Respondent”) represented by Vratislav Kuska of Kuska House.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwregister.com> registered with Wild West Domains, 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.

Judge Karl V. Fink (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 9, 2003; the Forum received a hard copy of the Complaint on July 10, 2003.

On July 10, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <wwwregister.com> is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 5, 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@wwwregister.com by e-mail.

A timely Response was received and determined to be complete on August 5, 2003.

Complainant submitted a timely and complete Additional Submission on August 8, 2003.

The Panel received additional information from Respondent which was not timely submitted in accordance with the Rules and the Panel did not consider that submission.

On August 11, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Register.com, Inc. (“Register.com”) is the owner of the United States trademarks for REGISTER® and REGISTER.COM®, and has filed applications for several other REGISTER.COM trademarks in the United States (the “REGISTER® Marks”).  Register.com first used the REGISTER® Marks in commerce in 1994 and has used them continuously and extensively ever since.

The disputed domain name registration <wwwregister.com>, consists of nothing more than typo piracy of the REGISTER® Marks.  A domain name registration that begins with the “www,” has no period or “dot” in between, and ends in a trademark is no different from the trademark alone.

Register.com has not licensed, assigned or otherwise authorized Respondent to use the REGISTER® Marks, or any variations thereof, as domain names on the Internet.

Respondent has never, as an individual, business, or other organization, been known by <wwwregister.com>.

Respondent has made no use of, or demonstrable preparations to use <wwwregister.com> in connection with a bona fide offering of goods or services.

Respondent had no trademark rights in or to the REGISTER® mark prior to registering <wwwregister.com>, and has not subsequently obtained any rights in or to the REGISTER® Marks.

Respondent’s use of <wwwregister.com> is made with the sole purpose of misleadingly diverting consumers for commercial gain.  The <wwwregister.com> website has links and advertisements for www.nameboy.com and www.freeservers.com, both of which are direct competitors of Register.com. Respondent is also a direct competitor of Register.com.

Respondent registered the <wwwregister.com> domain name on October 19, 1998, four years after Register.com began using the REGISTER® Marks in commerce.

On or about August 8, 2000, Register.com learned of Respondent’s activities and sent Respondent a cease and desist letter.

On January 29, 2002, Complainant sent Respondent a final cease and desist letter demanding that he transfer <wwwregister.com> to Register.com.

The www.wwwregister.com website appears to be a sham site, registered and held in bad faith for the purpose of sale to Register.com or other unlawful commercial use.  The site is perpetually “under construction,” and no aspects of its purported search engine features actually work.

B. Respondent

The Complainant has produced no evidence of actual confusion between the Register.com, Inc. or www.register.com and the World Wide Web Register or www.wwwregister.com.  The Complainant has also failed to prove any association of the word “register” exclusively with it.

The names “Register.com, Inc.” and “World Wide Web Register” would not be confused.

Several years before any notice to the Respondent of the dispute, planning and preparation work for the “World Wide Web Register” website was started by authors of the “World Tourism Directory.”

There was never even a slight indication about source, sponsorship or endorsement by the Register.com, Inc. or any association with the <register.com> website on the World Wide Web Register.

Respondent is not, and never was, a direct or indirect competitor of the Register.com, Inc. or the www.register.com website.

The statement (quote) “If a user clicks on the “Kuska House” link, the user is immediately directed to a website dedicated to offering Freeservers.com’s services.” is incorrect.

The World Wide Web Registration site, name of the site and the domain name of the site were deliberately designed, not to confuse customers, but to inform them that it is or will be the register of the websites in hundreds of categories and subcategories.

The Complainant has not and could not prove that the disputed domain name was registered or used abusively or in bad faith or that the Respondent has no legitimate claim to the use of the name.

C. Additional Submissions

Complainant

The only issue facing the panel with respect to the REGISTER Marks is whether there is a confusing similarity with the domain name.

When a customer forgets the dot and types “wwwregister.com” into his or her Internet browser, the consumer is directed to Respondent’s website.  The confusion at issue could not be clearer.

Respondent supplies no business plan, executive summary, website design, branded or promotional materials or any other evidence of a business in development in support of his Response.

Respondent’s argument is the “WWW” in the domain name stands for the same World Wide Web, only in this case “WWW” occurs both before and after the “dot” that precedes the second level domain.  Accordingly, Respondent’s website is located on the World Wide Web at World Wide Web Register.com, <wwwregister.com> for short.  This argument strains credulity beyond the breaking point.

Respondent does not deny that he was aware of the www.register.com website at the time he registered the domain name, and his knowledge can be imputed from this admission.

Complainant repeatedly placed Respondent on notice that the appearance of the advertisements on his website violated Register.com’s trademark rights.

There is ample evidence of Respondent’s bad faith intent to profit from advertising placed on the www.wwwregister.com website.

FINDINGS

For the reasons set forth below, the Panel grants the request to transfer the domain name.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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 submitted evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the REGISTER mark (Reg. No. 2,664,968 registered on December 24, 2002) and the REGISTER.COM mark (Reg. No. 2,664,967 registered on December 24, 2002) both in relation to computer services, business services and electronic mail services. The trademark registrations list December 1994 as the recorded first use in commerce. The Panel finds that Complainant’s submissions establish its rights in the REGISTER mark in accordance with Policy ¶ 4(a)(i). 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 Panels finds that Respondent’s <wwwregister.com> domain name is confusingly similar to Complainant’s REGISTER mark because the disputed domain name appropriates Complainant’s entire mark and merely adds the letters “www” to the beginning of the mark. The addition of the prefix “www” does not significantly distinguish the domain name from the mark in accordance with Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

Complainant has proven this element.

      Rights or Legitimate Interests

Complainant has not licensed, assigned or otherwise authorized Respondent to use the REGISTER mark, or any variations thereof, as a domain name on the Internet. The Panel finds that Respondent has failed to establish any rights to or legitimate interests in the <wwwregister.com> domain name under Policy ¶ 4(c)(ii) because Respondent is not commonly known by WWW REGISTER or <wwwregister.com>. 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).

The website at the <wwwregister.com> domain name includes links to and advertisements for direct competitors of Complainant. The use of a domain name confusingly similar to a registered trademark to promote the mark holder’s competitors is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

Respondent’s registration and use of a domain name that capitalizes on a typographical error indicates Respondent has no rights to or legitimate interests in the <wwwregister.com> domain name. See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using Complainant’s mark to earn profit from pop-up advertisements); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacked rights or legitimate interests in the disputed domain name).

Complainant has proven this element.

      Registration and Use in Bad Faith

The Panel finds that Respondent’s registration and use of the <wwwregister.com> domain name demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv) because Respondent is capitalizing on a likelihood of confusion with Complainant’s mark for commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Respondent’s registration and use of a domain name that takes advantage of a common Internet-user typographical error such as omitting the period between the letters “www” and the domain name itself demonstrates bad faith registration and use. See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that the <wwwcanadiantire.com> domain name is likely to confuse Internet users and encourage them to access Respondent’s site, and that this evidences bad faith registration and use of the domain name); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding that 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” as evidence that the domain name was registered and used in bad faith).

Respondent has failed to contest its awareness of Complainant’s rights in the mark. The Panel finds that Respondent’s registration and use of the <wwwregister.com> domain name despite actual or constructive knowledge of Complainant’s rights in the REGISTER mark constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Complainant has proven this element.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Judge Karl V. Fink (Ret.), Panelist
Dated: August 22, 2003

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