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Stokes Seeds, Ltd. v. Peter Carrington [2004] GENDND 1236 (3 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Stokes Seeds, Ltd. v. Peter Carrington

Case No. D2004-0526

1. The Parties

The Complainant is Stokes Seeds, Ltd., of Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondent is Peter Carrington, of Jan Luykenstraat, Amsterdam, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <stokeseed.com> is registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2004. On July 19, 2004, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On July 27, 2004, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center 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 notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2004.

The Center appointed Justin Hughes as the sole panelist in this matter on August 20, 2004. 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

According to the uncontested statements in the Complaint and its supporting Exhibits Books, Stokes Seeds, Limited has been incorporated under the laws of the province of Ontario since 1932, and, since that time, has been engaged in extensive commerce in providing vegetable and flower seeds to commercial truck farmers, greenhouse growers, and residential customers in Canada and the United States (the latter, since at least 1965). [Complaint at 4-5, Exhibits 4-8]. In recent years, the Complainant has generated over CDN$30 million annually in gross sales connected to these commercial activities [Complaint at 5].

In these commercial activities, the Complainant has continuously used STOKES SEEDS and STOKES as its trademarks [Complaint at 4]. The Complainant maintains an Internet presence at a number of domain names readily associated with its trademarks, including <stokesseeds.com>, <stokesseeds.ca>, <stokesseed.com>, and <stokesseed.ca>. [Complaint at 6]

The Complainant also has a series of trademark applications filed in Canada and the United States [Complaint at 4], but for reasons described below, these do not bear directly on the disposition of this matter.

The Respondent registered the disputed domain names on October 31, 2002. Other panels constituted pursuant to the Policy have concluded [a] that the Respondent has registered many other domain names that are intentional misspelling of third party trademarks; [b] that the Respondent is, in fact, an alias for John Zuccarini, and [c] that the contact information provided by the Respondent – the same being - provided with the registration of this domain name – is false [Complaint, passim]. Absent a response from the Respondent, the Panel will take the factual conclusions of prior Panels as correct and accurate.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions, as they bear on resolution of this dispute, are discussed individually under section 6. A-C below.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To prevail in a UDRP action, Paragraph 4(a) of the Policy requires that the Complainant must establish each of the following:

(i) The domain name at issue is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) essentially involves a two step analysis. First, the Panel must establish “the trademark or service mark in which the complainant has rights.” This trademark(s) is/are the foundation for considering, second, whether the domain name at issue is identical or “confusingly similar.”

In the present dispute, the Complainant did not file any of its trademark applications until 2003 and 2004, that is after the Respondent registered the domain name in question in October 2002.

The Policy is crafted in a sufficiently broad way as to permit complainants to proceed on common law trademark rights. Common law trademark rights can exist prior to registration in Canada and the United States (See, e.g. Canadian Trade-Marks Act, R.S.C., c. T-13, §§19- 20 and 15 U.S.C. § 1125 [Lanham Act, § 43]). Panels must be cautious in handling claims of common law trademark rights because an overly broad understanding of such rights would give persons in common law jurisdictions a significant advantage over persons in jurisdictions that do not recognize unregistered trademark rights.

Nonetheless, the Complainant has successfully established the existence of strong common law trademark rights in STOKES SEEDS and STOKES in both Canada and the United States prior to the Respondent’s registration of the domain name. This is based on the uncontroverted evidence of the historical extent and current amount of Complainant’s sales [discussed supra], the extent of its advertising [e.g. 600,000 catalogues distributed in Canada and the U.S. in 2001, Complaint at 5], and its commercial operations in Ontario, New York, and New Jersey.

The domain name at issue is <stokeseed.com>, which differs from the STOKES SEEDS trademark in the deletion of two “s” characters.

This Panel has previously cautioned against the development of a per se rule that any one or two letter variation with a well-known trademark produces a confusingly similar sign. Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150 (June 15, 2004). In order for a domain name to constitute a case of “typosquatting,” the domain name should reflect predictable typographical errors or common misspellings of the Complainant’s trademark.

Omission of letters is a predictable form of typographical errors. See, e.g. Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302 (May 18, 2001) [<wallsteetjournal.com> confusingly similar to WALL STREET JOURNAL]; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273 (June 18, 2003) [omission of “.” made wwwamctv.com confusingly similar to “www.amctv.com” and AMC TV mark ]. This seems particularly true in the case of double consonants. See, e.g. Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol, WIPO Case No. D2001-0184 (April 11, 2001) [<harypotter.com> and <scobydoo.com>]. Thus, the omission of a middle “s” from STOKES SEEDS is a predictable form of typing error.

Similarly, the dropping of the final “s” from STOKES SEEDS is a predictable omission. In fact, a number of online consumer information sources make the mistake of referring to the Complainant as “Stokes Seed”. See, e.g. <DavesGarden.com> “The scoop on Stokes Seed (US and Canada)” at “http://davesgarden.com/gwd/c/8/”; I Can Garden, Press Release, July 26, 2004, (referring to “The Stokes Seed trialing facility”), at “http://www.icangarden.com/document.cfm?task=viewdetail&itemid=5155&categoryid=145; Chilcutt Direct Marketing”, at “http://www.cdmlist.com/list/CDM13949.htm” (Listing Stokes Seeds, Inc. as “Stokes Seed”).

For these reasons the domain name <stokeseed.com> is confusingly similar to the Complainant’s trademark STOKES SEEDS.

B. Rights or Legitimate Interests

The Panel has researched the trademark databases at the Canadian Intellectual Property Office, the United States Patent and Trademark Office, and the Office of Harmonization in the Internal Market (European Union) and has established that the Respondent has no filings for a trademark corresponding to the domain name. The Respondent’s business name does not correspond to the domain name.

At the time of this decision, the Panel found that the domain name does not resolve to any website. Therefore, the Respondent does not appear to be using the domain name in any legitimate commercial or non-commercial way.

Paragraph 14(b) of the Rules provides that in the event of a default, “the Panel shall draw such inferences therefrom as it considers appropriate.” Pursuant to this paragraph, the Panel considers Respondent’s default as a presumption against Respondent as to its rights or legitimate interests in the domain names.

On these grounds, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a set of circumstances that evince bad faith in the registration and use of domain names. Paragraph 4(b)(iv) provides that bad faith is shown where:

“by using the domain name, you [the Respondent]have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Although the disputed domain name is now inactive, according to uncontroverted statements in the Complaint that the disputed domain name appears to have resolved at one time to “www.hanky-panky-college.com” [Complaint at 4]. Such use of the domain name for diversion of Internet traffic constitutes bad faith under Paragraph 4(b)(iv).

Bad faith in registration of the disputed domain name registration is also indicated by Respondent’s practice of stockpiling domain names that are minor variations on established trademarks. See BellSouth Intellectual Property Corporation v. Nick West and American Consumers First, Inc., WIPO Case No. D2003-0290 (July 1, 2003); Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (November 30, 2003). This pattern of trading on confusingly similar domain names constitutes bad faith. See also Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No, D2004-0214 (May 10, 2004) (bad faith registration pattern established by Respondent registering “1,100 domain names, many of them incorporating expressions that are confusingly similar to third parties’ marks, including several misspellings”). In this case, Respondent has an established record of stockpiling typosquatting domain names and using these domain names to generate Internet traffic through diversion. [Complaint, Exhibits 35 – 40].

Finally, the Panel agrees that bad faith is indicated in this case by the Respondent providing false contact information in the domain name registration. While not an express ground of bad faith under Paragraph 4(b), false contact information is widely recognized as an indication of bad faith in domain name registration. See, e.g. 15 U.S.C. § 1125(d)(1)(B)(i)(VII) [“provision of material and misleading false contact information” constitutes bad faith under American law]. The Panel has confirmed the conclusion of other UDRP Panels: that the address provided by Respondent is actually that of the Bilderberg Hotel Jan Luyken in Amsterdam and has no apparent connection to the Respondent. Grupo Televisa, S.A. v. Party Night, Inc. a/k/a Peter Carrington, WIPO Case No. D2003-0796 (December 2, 2003); Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (October 2, 2002).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <stokeseed.com> be transferred to the Complainant.

Justin Hughes
Sole Panelist

Dated: September 3, 2004