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PC Mall, Inc. v. Admin Billing [2004] GENDND 1312 (27 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PC Mall, Inc. v. Admin Billing

Case No. D2004-0692

1. The Parties

The Complainant is PC Mall, Inc., Torrance, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.

The Respondent is Admin Billing, Tokyo, Japan.

2. The Domain Names and Registrars

The disputed domain names are <eccost.com>, <ecostcom.com>, <ecostt.com>, <ecosty.com>, <eecost.com>, <maccmall.com>, <macmallcom.com>, <macmalll.com>, <macmmall.com>, <mmacmall.com>, <nmacmall.com> (herein the “domain names in dispute”) are all registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2004. On August 31, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 31, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Language Direct designated in the Complaint as filed was no longer the registrant for the domain names in dispute and that Respondent was now listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 7, 2004. The Center verified that the Complaint together with the amendment to 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 September 8, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2004.

The Center appointed J. Nelson Landry as the Sole Panelist in this matter on October 7, 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.

Upon considering the Complaint, the Panel determined that certain points needed to be clarified, namely in respect of: first the rights of Complainant in the trademarks of which it was not the owner and yet requesting the transfer to it of certain of the domain names allegedly confusingly similar to the said trademarks, second the legal basis on which companies associated with Complainant and Complainant itself were at some relevant periods using trademarks of which they were not the owner and finally to confirm that certain things and activities asserted to be made or carried by Respondent were at a certain period made and carried by Language Direct ( herein “Respondent’s predecessor” of the domain names in dispute) and issued Procedural Order No. 1 requesting the clarifications and confirmation and postponed the projected decision date to one week after the expiry of the two five day-periods given to the parties to comply with the Procedural Order.

On October 15, 2004, Complainant filed a Response to the Procedural Order and a copy was sent to Respondent who was given until October 25, 2004, to provide a submission. Respondent did not file any submission or reply to Complainant’s Response.

4. Factual Background

Complainant PC Mall, Inc. (“PC Mall”) was formerly known as Creative Computers, Inc. which changed its name to Ideamall, Inc. in June 2000, and the latter subsequently changed its name to PC Mall, Inc. in June 2001. A California company, Creative Computers, Inc., changed its name in March 2002 to PC Mall Sales, Inc. (“PC Mall Sales”). Both PC Mall Sales and eCost.com, Inc. (“eCost.com”) are wholly-owned subsidiaries of Complainant.

Pursuant to adoption and use since 1989, and expansion in 1993 and 1994, and subsequent assignment, Complainant owns the two MACMALL trademarks applied for by one of its wholly-owned subsidiary companies and registered in the United States of America under Nos. 2,021,649 and 1,938,926 in association with wares and services disclosed in the registrations. In 2002, Complainant, after becoming the owner by assignment, filed a Section 15 affidavit which made each registration incontestable in the United States of America. Complainant also owns national trademark registrations for the MACMALL trademark in Australia, the Benelux countries, Canada, Denmark, Finland, France, Germany, Italy, Japan, Mexico, Norway, South Africa, Spain, Sweden, and the United Kingdom (herein the “MACMALL Trademarks”).

Pursuant to adoption and use since 1998, and application filed by PC Mall Sales and subsequent assignment to Complainant and then to eCost.com, Inc., Complainant’s wholly-owned subsidiary, eCost.com, Inc., owns the ECOST trademark registered in the United States of America under No. 2,762,044 and the trademark ECOST.COM registered under No. 2,588,881, both in association with wares and services disclosed in the registrations (herein the “ECOST Trademarks”).

ECost.com, Inc., recently filed a number of new applications with the United States Patent and Trademark Office for the ECOST and ECOST.COM trademarks under Nos. 76/589,107 and 78/409,041 for ECOST and 76/589,106 and 78/409,045 for ECOST.COM. ECost.com, Inc. also has applied to register the ECOST and ECOST.COM trademarks in Canada.

Complainant, as owner of its two wholly-owned subsidiaries eCost.com, Inc., and PC Mall Sales, Inc., has been using the Trademarks MACMALL, ECOST.COM and ECOST at the various times that it was not the owner of the said Trademarks and its two wholly-owned subsidiaries eCost.com, Inc., and PC Mall Sales, Inc., have been using said Trademarks when they were not the owner thereof, as licensee, related companies and under the control of the owner thereof in respect to the nature and quality of the goods and services with which they were used.

In 1995, PC Mall Sales also registered the domain names <macmall.com> and <mac-mall.com>, which Complainant and PC Mall Sales have been using continuously since then to offer their goods and services.

PC Mall Sales registered the domain names <e-cost.com> and <ecost.com> in 1998 and 1999, respectively. Complainant, PC Mall Sales and eCost.com, in their respective capacities have been using these domain names continuously since then to offer their goods and services.

On May 14, 2004, Language Direct registered the eleven (11) domain names in dispute.

ECost.com, Inc., uses a company named Commission Junction to run its affiliate program. Having found on July 30, 2004, that the five (5) domain names in dispute including ECOST had been registered with Commission Junction as affiliate and that affiliate commissions were being paid, Complainant communicated with Commission Junction to remove the said ECOST domain names from the affiliate program and confirmation of said removal was received on August 2, 2004.

On August 9, 2004, Complainant verified the ownership of the domain names in dispute, all were still registered in the name of Language Direct. However pursuant to a request by this Panel to the registrar for further information about an apparent transfer, it appears that on August 16, 2004, the name of the registrant was changed to that of the Respondent, the registrar not confirming any transfer from Language Direct to the Respondent as the Panel was asking in the request.

To the extent of the information available to this Panel, Language Direct and the Respondent differ only by their name. The Panel has examined the evidence about the first and current registrant and noted that, except for a change of name, all coordinates, namely civic address, internet address, of the former and current registrants are the same. Furthermore it appears from Exhibit A, the WHOIS search, that for the first registrant, Language Direct, the Administrative Contact was “Billing, Admin” exactly the name of the current registrant the Respondent herein, but in reverse order.

Complainant and eCost.com, Inc., have not authorized Respondent nor Language Direct to use Complainant’s Trademarks or the Trademarks of its wholly-owned subsidiary, nor is Respondent nor was Language Direct a distributor of Complainant’s goods.

From May 14, 2004, until at least August 11, 2004, the domain names in dispute have been used by Language Direct to redirect Internet visitors to the domain names in dispute to the eCost.com website and benefit of income under Complainant’s associate program. From August 11, 2004, until the filing date of this Complaint, the domain names in dispute have been “parked” -i.e., they resolve to a GoDaddy Software webpage with the heading “[Disputed Domain Name] is coming soon! This page is parked free at GoDaddy.com!” as the Panel has personally observed.

From August 25, 2004, until the filing date of this Complaint, under the ownership of Respondent, five of the six domain names in dispute that had previously been used by Language Direct and Respondent to redirect to the Apple Store website returned an “HTTP 404 - File Not Found” error message, while <macmmall.com> has been parked at GoDaddy Software.

Complainant has no relationship with the affiliate program used by Respondent for the MACMALL-based domain names, and therefore cannot demand that they be removed from the program. Complainant is unaware of the reason that the MACMALL-based domain names currently return error messages.

5. Parties’ Contentions

A. Complainant

Complainant submits that the domain names in dispute are virtually identical and confusingly similar to the MACMALL, ECOST and ECOST.COM Trademarks. Respondent’s <macmallcom.com>, <macmalll.com>, <maccmall.com>, <macmmall.com>, <mmacmall.com>, and <nmacmall.com> domain names are all virtually identical and confusingly similar to Complainant’s MACMALL Trademarks. Likewise, Respondent’s <eecost.com>, <ecostcom.com>, <ecostt.com>, <eccost.com>, and <ecosty.com> domain names are all virtually identical and confusingly similar to eCost.com, Inc. ECOST and ECOST.COM Trademarks in that each of the domain names in dispute merely adds a single letter or makes some other small alteration to one of Complainant’s or its wholly-owned subsidiary’s trademarks, apparently in an effort to capitalize on the typographical errors of Internet users, which practice according to UDRP decisions is considered creating confusion. See Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762 and Telstra Corporation Limited v. Kandasamy Mahalingam, WIPO Case No. D2000-0999.

Complainant further submits that itself as the owner of its two wholly-owned subsidiaries has used the MACMALL, ECOST and ECOST.COM Trademarks and at times as the owner of the MACMALL Trademarks has used the said Trademarks and therefore by reason of such use and ownership by its wholly-owned subsidiaries has rights in the said MACMALL, ECOST and ECOST.COM Trademarks, thus relying on UDRP decisions, Brechbuhler Scales, Inc. v. Dynamic Scales, NAF Case No. FA03060000164564 and Raycom Media, Inc. v Gawen Lawrence, NAF Case No. FA0302000147306.

Complainant submits that it has rights in all of the Trademarks whether as registered owner or owner of wholly-owned subsidiaries which is owner of some Trademarks. Furthermore it submits that PC Mall Sales continued to use the MAC MALL, ECOST and ECOST.COM Trademarks as a licensee and “related company” of Complainant and similarly for eCost.com, Inc., in respect of the first used of ECOST and ECOST.COM Trademarks. Finally Complainant contends that its use of the mark MAC MALL, ECOST and ECOST.COM was indirect through its wholly-owned subsidiaries.

Complainant contends that Respondent has no rights to or legitimate interests in the domain names in dispute in that, on information and belief, Respondent has not made use of the domain names in dispute in connection with a bona fide offering of goods or services, Respondent is not commonly known by the domain names in dispute, and Respondent is not making a legitimate noncommercial or fair use of the domain names in dispute.

Complainant further contends that neither Language Direct nor Respondent have made use of the domain names in dispute in connection with a bona fide offering of goods or services. Not only Complainant has not authorized or licensed Language Direct or Respondent to use Complainant’s trademarks, neither Language Direct was nor Respondent is a distributor of Complainant’s goods but Language Direct and possibly Respondent have been using the domain names in dispute to redirect Internet users either to the eCost.com website of Complainant’s wholly-owned subsidiary, or to the Apple Computer website.

From August 11, 2004, until the filing date of this Complaint, the domain names in dispute that had previously been used to redirect to the eCost.com website have been “parked” -i.e., they resolve to a GoDaddy Software webpage with the heading “[disputed domain name] is coming soon! This page is parked free at GoDaddy.com!”

From August 25, 2004, until the filing date of this Complaint, five of the six domain names in dispute that had previously been used to redirect to the Apple Store website returned an “HTTP 404 - File Not Found” error message, while <macmmall.com> has been parked at GoDaddy Software.

Complainant alleges that Language Direct and Respondent’s purpose in using the domain names in dispute to redirect users to the Apple Computer website and to the eCost.com, Inc., website was to derive commissions from “affiliate marketing” programs which eCost.com, Inc., run with a company called Commission Junction.

Complainant contends that, unbeknownst to it, at least Language Direct was paid commissions for Internet users being redirected from one of the eCost domain names in dispute to the eCost.com, Inc., website and that further to Complainant bringing this matter to the attention of Commission Junction, which considers such “typosquatting” to be a violation of its Publisher Agreement, these domain names were removed from the eCost.com affiliate program. On information and belief, this removal from the Commission Junction affiliate program is what led to the recent “parking” of the <eecost.com>, <ecostcom.com>, <ecostt.com>, <eccost.com>, and <ecosty.com> domain names as described above.

Complainant further contends that Language Direct and possibly Respondent have or had similar affiliate arrangements with respect to the Apple Computer website and the <macmallcom.com>, <macmalll.com>, <maccmall.com>, <macmmall.com>, <mmacmall.com>, and <nmacmall.com> domain names, again Language Direct and Respondent appear to have been profiting by redirecting Internet users seeking Complainant’s MacMall.com site (which sells Apple computers and related accessories) to the Apple Computer site. The use of these domain names in this manner misleads consumers by creating the appearance of a connection between Complainant’s “www.macmall.com” website and the Apple Computer website.

Complainant alleges that it has no relationship with the affiliate program used by Respondent for the MACMALL based domain names, and therefore cannot demand that they be removed from the program. Complainant is unaware of the reason that the MACMALL-based domain names currently return error messages.

Complainant made representations as to the true identity and relationship of Language Direct and the Respondent and submits that it is patently obvious that the purported transferee, “Admin Billing” is an invented amalgam of the terms “administrative contact” and “billing contact”, and is not a real person or entity. In fact as alleged in the Complaint, the same individual – Ian Hewitt – controlled the domain names in dispute both before and after the purported transfer from Language Direct to Admin Billing. Respondent has not denied any of these allegations made by Complainant in the Complaint and in the Response, which may, therefore, be deemed admitted. See Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587. According to Complainant’s belief, Mr. Hewitt, after learning that Commission Junction was terminating his affiliate account in respect of some of the domain names in dispute changed the WHOIS information for the domain names in dispute, not necessarily by transfer, in order to obscure his identity, disrupt these proceedings, and improperly delay Complainant’s recovery of the domain names. Complainant, again relying of said Yahoo Inc. decision, contends that the simple change of name of the registrant and administrative contact, while all the rest remains the same, is clear evidence that there was no true transfer to a bona fide third party.

According to Complainant, this “purported transfer” is a clear case of “cyber-flying” and is improper under section 8(a) of the Policy and in support thereof Complainant relies on British Broadcasting Corporation v. Data Art Corporation/Stoneybrook, WIPO Case No. D2000-0683 and relying on AT&T Corp. v. W.N.A., a/k/a “Worldwide Network of Attornies” Farouk al Khalifa a/k/a Jaye Rayes and “World of Nettie Atteberry”, WIPO Case No. D2001-1160, Complainant suggests that a transfer order may be made against both the registrant at the time of the complaint and its predecessor.

Complainant, relying on UDRP panel decisions, submits that registering and using the domain names in dispute to profit from creating confusion with the registered trademarks of Complainant and its wholly-owned subsidiary, and to capitalize on the typographical errors of Internet users does not constitute use of the domain names in dispute “in connection with a bona fide offering of goods or services”, and cannot give Respondent rights or legitimate interest in the domain names in dispute. See The Sports Authority Michigan, Inc. v. Elias Skandar dlbla Web Registration Service, NAF Case No. FA135598; The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Case FA124516 and National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini , WIPO Case No. D2002-1011.

Complainant alleges that to its knowledge, neither Respondent nor its predecessor has been commonly known by the domain names in dispute. At the time of registration of the domain names in dispute the registrant was “Language Direct” which appears to be a language school and/or a publisher of language books based in Tokyo and that the first registrant or the Respondent has never used any of the domain names in dispute in connection with the publishing or language school businesses, or any other legitimate business or offering of goods or services and it certainly did not do so prior to its registration of the domain names in dispute. Accordingly, neither Language Direct nor Respondent can claim that either was or is commonly known by any of the domain names in dispute. See Compañía de Radiocomunicaciones Móviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a “MOVICOM BELLSOUTH”, WIPO Case No. D2000-0915, and National Spiritual Assembly of the Bahá’ís v. Buy This Name, WIPO Case No. D2001-1302.

Complainant finally submits that neither Language Direct was nor Respondent is making legitimate non-commercial or fair use of the domain names in dispute in that firstly Respondent’s predecessor has been using the domain names in dispute to redirect customers to the eCost.com and Apple Computer websites in order to reap undeserved affiliate commissions which is not a non-commercial use and secondly the use of the domain names in dispute to create confusion with the Trademarks of Complainant and its wholly-owned subsidiary, and to capitalize on Internet users’ typographical errors, can never constitute legitimate or fair use according to UDRP decisions. See Geoffrey, Inc. v. Toyrus.com, NAF Case No. FA150406; The Sports Authority Michigan, Inc. v. Elias Skandar d/b/a Web Registration Service, NAF Case No. FA135598 and The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Case FA124516.

Complainant contends that the domain names in dispute were registered and have been used in bad faith by Respondent and its predecessor relying on the four non-exhaustive circumstances that constitute evidence of bad faith enunciated in Paragraph 4(b) of the Policy.

Complainant reiterates that Respondent’s predecessor registered and used domain names consisting of common misspellings of registered trademarks in order to generate affiliate commissions and submits that such conduct has been found to constitute bad faith under Paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See Deluxe Corporation v. Dallas Internet, NAF Case No. FA105216.

Moreover, even though Respondent’s predecessor initially linked Complainant’s customers to Complainant’s website through its own site, it did not have permission from Complainant to do so. As a result, the registration and use of the disputed domain name were in bad faith. Furthermore, according to Complainant, this unauthorized use of the domain names in dispute disrupted Complainant’s business, despite the fact that it was initially linking Complainant’s customers to Complainant’s website. These activities of Respondent and of its predecessor are in bad faith pursuant to Policy Paragraph 4(b)(iii) according to the panel decisions in respect of such “typosquatting” holding that it is better analyzed as an example of bad faith not directly enumerated in the Policy. See The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Case FA124516; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini , WIPO Case No. D2002-1011; The Sports Authority Michigan, Inc. v. Elias Skandar dlbla Web Registration Service, NAF Case No. FA135598 and Yahoo! Inc. v. Peter Carrington, NAF Case No. FA184899. In addition Complainant contends that registration of eleven domain names, all nearly identical and confusingly similar to the registered trademarks of Complainant or its wholly-owned affiliate, is further evidence of bad faith under Paragraph 4(b)(ii) of the Policy. See Yahoo! Inc. v. Peter Carrington, NAF Case No. FA184899 wherein it was held that registration of numerous YAHOO-based domain names “demonstrates a pattern of typosquatting ... [and] an intentional attempt to deprive Complainant of the opportunity to register domain names reflecting its mark, as outlined in Policy Paragraph 4(b)(ii); see also Harcourt, Inc. v. Fadness, NAF Case No. FA 95247 and YAHOO! Inc. v. Syrynx, Inc., WIPO Case No. D2000-1675.

Finally Complainant contends that there is a single person acting behind the name of Language Direct and Admin Billing, namely Ian Hewitt who communicated with Complainant counsel and who appears to be the person controlling the domain names in dispute under Language Direct and Admin Billing and that there was not necessarily a transfer of ownership from Language Direct to Admin Billing as the Panel surmised in the Procedural Order. Complainant contends that in fact there should not be any distinction made between Language Direct and Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in the Complaint nor to its Response to the Procedural Order.

6. Discussion and Findings

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

(i) 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

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

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

Prior to engaging into the discussion, the Panel considers appropriate to comment on the availability and utility for a non American Panel of the additional evidence, the legal background in United States law about rights of a parent and controlling company outside of a licensee relationship and the additional jurisprudence pertaining thereto.

Since the evidence is that in the relevant period, from May 14, 2004, the date of registration of the domain names in dispute, and the date of commencement of these proceedings on September 8, 2004, a change of registrant and Respondent from Language Direct to the current Respondent with the registrar was made on August 16, 2004.

It is important in the present proceedings to consider and comment on the change of registrant during the period of May 11, 2004, when the domain names in dispute were registered and September 8, 2004, when there was a Notification of Complaint and commencement of proceedings issued. The Panel finds that satisfactory evidence was put forward by the Complainant both in the Complaint and in the Response pursuant to the Procedural Order in respect of the nature and identity of the Respondent herein. It is most likely that Language Direct seeing in August 2004, that it was being dismissed from Complainant’s affiliate program, suspected that further proceedings might be forthcoming and, as Complainant contends, tried to shield behind a new identity, Admin Billing. Complainant has put forward a very convincing and plausible argument that Language Direct and Admin Billing are fronts or facades for the same person Ian Hewitt, the mastermind in these activities. All addresses, civic and internet, are the same and furthermore, while the Panel in seeking further information from the registrar, used the word “transfer” and expected to be confirmed that the domain names had been transferred, the only information which came back from registrar was that Admin Billing is now the registrant. Respondent has not submitted any evidence to the contrary despite the two opportunities it had.

Without diminishing the merits of the argument advanced by Complainant, the Panel, for greater certainty, decides to analyze the activities of both Language Direct and Respondent, Admin Billing, under each of the criteria of under Paragraph 4(a) of the Policy.

For these reasons, the Panel decides not to accept Complainant’s request in the alternative to amend the Complaint so that eCost.com, Inc., be entered as a co-Complainant and have the ECOST domain names in dispute transferred to it as the Panel finds that this is not necessary.

A. Identical or Confusingly Similar

The evidence is clear and not contradicted that the Complainant owns the two MACMALL Trademarks registered in the United States of America and other registrations for the MACMALL trademark in several others countries, including Japan, the country where Language Direct and the Respondent are located and that Complainant’s wholly-owned subsidiary eCost.com, Inc., owns the ECOST and ECOST.COM Trademarks registered in the United States of America.

Complainant has put in evidence and explained the parent-subsidiary relationship between the three related companies and their respective capacities in their respective use of the Trademarks and established the basis of the rights of Complainant in all the Trademarks which use and rights the Panel adopts.

The Panel finds that Complainant has rights in all the Trademarks and that there is no doubt that the domain names in dispute are confusingly similar to the said MACMALL and ECOST Trademarks.

The first criterion has been met.

B. Rights or Legitimate Interests

Respondent has not filed any response to the Complaint nor comments to the Complainant’s Response to the Procedural Order in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint and Response summarised herein as true. The Complainant has made a prima facie case that both Language Direct and the Respondent at relevant times lacked rights or legitimate interests in the domain names in dispute by stating that neither Language Direct nor the Respondent has ever been known by the name “PC MALL or ECOST” or any of the domain names in dispute and that neither has made legitimate non-commercial or fair use of the domain names in dispute.

Furthermore, neither Complainant nor its subsidiary have ever given a license or in any way authorized Language Direct or Respondent to make use of the Trademarks of Complainant or of its subsidiary. There is no evidence that Language Direct or Respondent have ever engaged at any time in any legitimate business under the Complainant’s Trademark. To the contrary, Respondent has been using the domain names in dispute to redirect Internet users either to the “www.ecost.com” website of Complainant’s wholly-owned subsidiary, or to the Apple Computer website and thereafter these have been parked free at GoDaddy Software. Finally five of the six domain names in dispute that had previously been used to redirect to the Apple Store website have also been parked at GoDaddy Software. This evidence demonstrates conduct contrary to legitimate business or to legitimate non-commercial or fair use of the domain names in dispute.

The Panel finds that the second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain names in dispute were registered and are used in bad faith.

The Panel has determined from the evidence that the domain names in dispute were all registered on May 14, 2004, at least 15 years since the adoption and use of the MC MALL Trademarks and at least five years after the adoption of the ECOST and ECOST.COM Trademarks. Not only these Trademarks were used extensively in several countries, some were also the subject matter of further registration in numerous countries including Japan where Respondent and Language Direct are located. The fact that these Trademarks are registered in the United States provides the Complainant with a presumption of validity as well as the benefit of constructive notice to both Language Direct and the Respondent of the existence of these trademarks.

Further considering the small typographical differences in the six MC MALL domain names in dispute and five small differences in the ECOST domain names in dispute, it is inconceivable to this Panel that Language Direct was not aware of the existence of the activities of Complainant under the Trademarks. The Panel in agreement with panel decision in Deluxe Corporation v. Dallas Internet, NAF Case No. FA105216, which found that the registration and use of domain names consisting of common misspellings of registered trademarks in order to generate affiliate commissions constitute bad faith conduct under Paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.

It is clear from the evidence that Language Direct has managed to become associated with the affiliate program of Complainant and was thereby drawing commissions without the knowledge and authorization of Complainant until Complainant found so on July 30, 2004, and within days put a term to these activities. Again as put in evidence by Complainant, Language Direct made similar affiliate arrangements with respect to the Apple computer website and six domain names in dispute incorporating MC MALL. The way in which these affiliate programs and arrangements were operating unbeknownst to Complainant and furthermore in respect of the Apple Computer website program where Complainant had no means of demanding that the domain names be removed from the program and put a term to those return error messages, constitute clear indications of activities carried in bad faith.

The Panel finds that the domain names in dispute have been registered and used in bad faith and that the third element in Paragraph 4(a) of the policy has been met.

7. Decision

The Panel concludes that:

(a) all the Domain names <eccost.com, <ecostcom.com>, <ecostt.com>, <ecosty.com>, <eecost.com>, <maccmall.com>, <macmallcom.com>, <macmalll.com>, <macmmall.com>, <mmacmall.com>, <nmacmall.com> are confusingly similar to the Trademarks in which Complainant has rights;

(b) Language Direct did not have and the Respondent has no rights or legitimate interests in the domain names in dispute;

(c) the domain names in dispute have been registered and are being used in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <eccost.com>, <ecostcom.com>, <ecostt.com>, <ecosty.com>, <eecost.com>, <maccmall.com>, <macmallcom.com>, <macmalll.com>, <macmmall.com>, <mmacmall.com>, <nmacmall.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Dated: October 27, 2004