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Network Solutions, LLC v. Terry Wang [2004] GENDND 1327 (25 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Network Solutions, LLC v. Terry Wang

Case No. D2004-0675

1. The Parties

The Complainant is Network Solutions, LLC, Herndon, Virginia, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States of America.

The Respondent is Terry Wang, Philadelphia, Pennsylvania, United States of America, represented by DelVal Law Group, United States of America.

2. The Domain Name and Registrar

The disputed domain name <networksolution.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2004. On August 26, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 27, 2004, Network Solutions, LLC 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 August 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2004. Upon request of the Respondent, the due date for Response was re-set to September 26, 2004. The Response was filed with the Center on September 27, 2004.

The Center appointed Nels T. Lippert as the sole panelist in this matter on October 11, 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

Complainant is a registrar of domain names. Complainant or Complainant’s predecessor in interest has used the trademark and service mark NETWORK SOLUTIONS since 1979. Complainant owns two United States trademark registrations for the NETWORK SOLUTIONS mark, namely Registration No. 1,330,193 issued April 9, 1985, for designing and programming computer controlled communications systems, claiming first use as of November 6, 1979, and No. 2,468,676 issued July 17, 2001, for various services in International Class 35 and International Class 42 claiming first use as of January 1, 1993. Complainant also owns Canadian Registration No. TMA539808 for NETWORK SOLUTIONS. Finally, Complainant owns applications pending in the United States for registration of NETWORK SOLUTIONS as well as pending applications in various countries outside of the United States for registration of NETWORK SOLUTIONS.

Complainant has registered the domain name <networksolutions.com>

Respondent registered the disputed domain name on July 8, 1997.

At the time of filing of the Complaint and as of the date of this decision, the disputed domain name resolved to a website that displays the wording “Fast & Easy Domain Registration Apply now”. The website also provides links relating to information security resources, understanding security technologies, cryptography, information security and information security FTP sites.

Prior to commencement of this proceeding, Respondent offered to cease use of the disputed domain name for between fifteen and thirty thousand dollars.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar or identical to Complainant’s mark and domain name because it differs only by omitting the last letter “s”.

Respondent has never been authorized by Complainant to use the NETWORK SOLUTIONS mark in any way and therefore, Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is engaged in the practice “typosquatting” in order to divert Internet users who misspell Complainant’s mark and domain name.

Respondent’s offer to sell the disputed domain name at an exorbitant price establishes that the disputed domain name has been used and registered in bad faith.

Respondent’s use of the disputed domain name to resolve to a website that places banner advertisements is an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark and constitutes bad faith use and registration.

B. Respondent

Respondent contends that Complainant cannot meet its burden of proving that the disputed domain name is identical or confusingly similar to a trademark or service mark owned by the Complainant; that the Respondent has no interest in the disputed domain name; and that the disputed domain name was registered purely in bad faith.

Respondent contends that before any notice to it of the dispute, it used the disputed domain name <networksolutions.com> [sic] in connection with his business since some time in October 1999.

With regard to its offer to sell the disputed domain name, Respondent contends that when approached by Complainant he offered to give up all rights to the disputed domain name for reimbursement of costs of registration, costs of transfer and costs relating to advertising and other reliance damages.

The Response furthermore sets forth general denials of Complainant’s allegations.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, all three of the following elements:

(i) The domain name is identical or confusingly similar to a trademark 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.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent’s rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

A. Identical or Confusingly Similar

The disputed domain name differs from Complainant’s service and trademark rights only by deletion of the last letter “s” of Complainant’s mark. The deletion or addition of one letter is an insignificant change for the purposes of Policy paragraph 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (September 5, 2000) (finding that deleting the letter “s” from Complainant’s Universal City Studio’s storemark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the mark in which Complainant has rights.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has no rights or legitimate interests in the disputed domain name. It is not refuted that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the NETWORK SOLUTIONS mark in a domain name or in any other manner. Furthermore, Respondent does not assert that it is commonly known by the disputed domain name.

Respondent relies on Policy Paragraph 4(c)(i) and contends that before notice to it of the dispute it used the disputed domain name in connection with its business. However, Respondent has offered no proof supporting its contention. In any event, the use of the disputed domain name to deliberately divert Internet users interested in Complainant or its products and services is not a bona fide offering of goods or services as required by the Policy. MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000).

C. Registered and Used in Bad Faith

Complainant’s NETWORK SOLUTIONS mark was registered and used for many years prior to Respondent’s registration of the disputed domain name. Indeed, Respondent utilized Complainant’s services for registration of the disputed domain name. Therefore, it is inconceivable that Respondent did not have actual or constructive notice of Complainant’s trademark rights. The Respondent has offered no justification for registering the confusingly similar disputed domain name many years after Complainant’s mark had achieved notoriety. Therefore, this Panel finds that Respondent’s registration of the disputed domain name was in bad faith.

The Panel also finds that Respondent’s use of the disputed domain name is in bad faith. Respondent’s use of the disputed domain name which differs from Complainant’s mark by only one letter, to resolve to a website that places banner advertising for domain registration services as well as links to other sites is a bad faith commercial use. Typosquatting, as is the case here, is recognized as bad faith under the Policy. See National Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (January 21, 2003). Similarly, Respondent’s offer to cease use of the domain name for various sums well in excess of the registration fee is a bad faith use in registration. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000). Therefore, the Panel finds that Complainant has established that the Respondent’s use and registration of the disputed domain name is in bad faith under the criteria set forth in Paragraphs 4(b)(i) and 4(b)(iv) of the Policy.

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 <networksolution.com> be transferred to the Complainant.

Nels T. Lippert
Sole Panelist

Dated: October 25, 2004