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Ross-Simons of Warwick, Inc. v. Domain Names [2004] GENDND 1308 (29 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ross-Simons of Warwick, Inc. v. Domain Names

Case No. D2004-0699

1. The Parties

The Complainant is Ross-Simons of Warwick, Inc. of Rhode Island, United States of America. The Complainant is represented by Amy B. Spagnole of Hinckley, Allen & Snyder LLP, Boston, Massachusetts, United States of America.

The Respondent is Domain Names of Vancouver, Canada.

2. The Domain Name and Registrar

The domain name in dispute is <ross-simns.com>. The disputed domain name (the “Domain Name”) is registered with iHoldings.com, Inc. d/b/a DotRegistrar.com, of Miami, Florida, United States of America (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 1, 2004, and in hardcopy on September 3, 2004.

On September 2, 2004, the Center transmitted by email to the Registrar a request for the Registrar’s verification in connection with the Domain Name. On September 6, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name, and providing the contact details for the administrative, billing, and technical contacts for the Domain Name. 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 sent notification to the Respondent of the Complaint by post and email to all available contact details for the Respondent on September 7, 2004. These proceedings commenced on the same day. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 29, 2004.

The Center appointed Ian Lowe as sole panelist on October 15, 2004. The Panel finds that it was properly constituted. The Panel has submitted a 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

The Complainant, Ross-Simons of Warwick, Inc. (“Ross-Simons”), sells jewelry, tableware, gifts, collectibles, home decor and related items through retail and outlet stores, by mail order and on-line, under the mark ROSS-SIMONS. The Complainant operates a website at “www.ross-simons.com”.

At the date of this decision, the Domain Name does not appear to resolve to any website.

5. The Parties’ Contentions

A. Complainant

Since at least 1954, 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 has also operated a website and on-line catalog at “www.ross-simons.com” since at least December, 1996. As a result of its continuous and exclusive use of the ROSS-SIMONS mark for over 50 years, the Complainant has built up substantial value and goodwill in the mark.

The Complainant is also the owner of registered United States service mark number 1,317,429 ROSS-SIMONS, for “retail store and mail order services specializing in jewelry, china, silver and gift items” registered as of January 29, 1985.

The Complainant 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 Domain Name was registered in June 2002. Sometime after the Respondent registered the Domain Name, the Respondent became an affiliate of the Complainant and used the Domain Name to obtain commissions fraudulently from the Complainant’s affiliate program, by redirecting users who misspelled the domain name <ross-simons.com>. The Domain Name registered by the Respondent pointed to Ross-Simons’ on-line catalogue. This re-direction is transparent to the consumer in that it appears to him that he typed the correct domain name and immediately reached the Ross-Simons website. To the manager of the Complainant’s affiliate program, however, it appears that the consumer was referred to the Ross-Simons website through a link on the Respondent’s legitimate website.

The Domain Name is confusingly similar to the Complainant’s ROSS-SIMONS registered mark. The only difference between the Complainant’s registered mark and the Domain Name is the elimination of the letter “o” from the word “simons”.

The Respondent has no rights or legitimate interests with respect to the Complainant’s registered mark or the Domain Name. 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. The Complainant has not authorised, 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 Domain Name was done in bad faith primarily for the purpose of attracting Internet users to its website for commercial gain. The Respondent is using a confusingly similar domain name 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 recognised as evidence of bad faith registration and use.

The Complainant seeks the transfer of the Domain Name to it.

B. Respondent

The Respondent did not file a Response.

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 Domain Name transferred to it, the Complainant must prove that:

- the Domain Name is 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 Name; and

- the Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant provided uncontested evidence of the Complainant’s rights arising from long-standing, continuous use of its mark in the course of trade and from its registration of the mark in the United States of America. The Panel finds that the Complainant has rights in the mark ROSS-SIMONS.

Self-evidently, the Domain Name is not identical to the Complainant’s mark. Accordingly, for the Complaint to succeed, it must be demonstrated that the Domain Name is confusingly similar to the Complainant’s mark.

Ignoring the “.com” suffix, the Domain Name is a slight misspelling of the Complainant’s mark, simply omitting the letter “o” from the word “simons”. In addition, it is phonetically and visually similar to the Complainant’s mark. It is also relevant that the Complainant’s service mark is not descriptive. It is a mark that 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.

The strong inference is 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 is a substantial number of panel decisions that 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.)

For these reasons, the Panel finds that the Domain Name is 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 the Domain Name, because:

- there is no evidence that the Domain Name comprises 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 Name or trademarks corresponding to the Domain Name 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 Name.

The Respondent did not file any Response to dispute these statements by the Complainant.

The Complainant also states that the Respondent used the Domain Name 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. At the date of this decision, the Domain Name did not resolve to any website.

The Complainant’s affiliate program necessarily gives its members some rights to link and direct Internet traffic to the Complainant’s website. The Complainant provided information about the affiliate program, which is also available on its website at “www.ross-simons.com”. The issue is whether, by joining this program, the Respondent obtained a right or legitimate interest in the Domain Name.

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 Complainant states that it has not authorised, 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 Name.

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, NAF Claim No. AF0302000145209 (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 name. 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, the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, the Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ross-simns.com> be transferred to the Complainant, Ross-Simons of Warwick, Inc.

Ian Lowe
Sole Panelist

Dated: October 29, 2004