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ESPN, Inc. v. XC2 [2005] GENDND 1038 (28 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ESPN, Inc. v. XC2

Case No. D2005-0444

1. The Parties

The Complainant is ESPN, Inc., Bristol, Connecticut, of United States of America, represented by White & Case, LLP, of Los Angeles, California, United States of America.

The Respondent is XC2, Hong Kong, SAR of China. The Respondent is not represented.

2. The Domain Name and Registrar

The disputed domain name <espnnews.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2005. On April 27, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 18, 2005, Moniker Online Services, 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 May 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2005.

The Center appointed the Honourable Sir Ian Barker QC as the sole panelist in this matter on June 22, 2005. 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

The Complainant is a large multi-media sports information and entertainment company. Its branded operation includes five domestic television networks in the United States, including the largest sports cable network which reaches 88 million homes. It operates international television networks, production companies, radio networks and publications. It covers most mainstream and action sports.

In 1996, the Complainant launched ESPNEWS, a network devoted to sports-related news and information which is distributed to 43 million homes in the United States.

The Complainant operates websites with the domain names <espn.com> and <espnnews.com> and receives 244,000 page views per month.

The Complainant owns US trademarks for ESSPN and ESPNEWS. It has used the mark continuously since 1979, to identify its numerous services.

The Respondent registered the disputed domain name on February 17, 2002. The website has links to websites offering free pornographic material, news, football and basketball.

From printouts of searches made by the Complainant, it appears that Gary Lam has registered many domain names that contain slightly modified trademarks, brands or company names of famous persons and entities. Examples are: <yahoomali.com>, <yayoomail.com>, <yahoomaiil.com>, <washingtpost.com>, <vuittom.com>, <sonys.com>, <gougle.com>, <googole.com>, <calvinklen.com>, <calvinkleim.com>, <briteny_spears.com>. Gary Lam is the Billing, Administrative and Technical Contact for the Respondent.

5. Parties’ Contentions

A. Complainant

In registering the disputed domain name, the Respondent has engaged in typosquatting, a practice by which “a registrant deliberately introduces slight deviations into famous marks” for commercial gain. Marriott Int’l, Inc. v. Seocho, FA 0303000149187 (Nat’l. Arb. Forum April 28, 2003) (finding marriottt.com confusingly similar to MARRIOTT.COM). The Respondent’s domain name is virtually identical to Complainant’s famous ESPNEWS trademark – differing only in the addition of a second letter “N”. Because Respondent’s registration of the disputed domain name constitutes typosquatting, the domain at issue is, by definition, confusingly similar to Complainant’s trademarks. (“Respondent’s typosquatting, by its definition, renders the domain name confusingly similar to Complainant’s mark.”); See, Dow Jones & Co. v. Powerclick, Inc., WIPO Case No. D2000-1259 (December 1, 2000) (holding that the deliberate introduction of errors or changes does not render Respondent’s domain name less confusingly similar to the core trademark held by the Complainant.)

In addition, the Respondent’s domain name is both visually and phonetically similar to the ESPNEWS trademark, further heightening the likelihood of confusion. See, Expedia, Inc. v. Collazo, WIPO Case No. D2003-0716 (October 30, 2003) (finding the domain <expediua.com> confusingly similar to EXPEDIA.COM and noting the visual and phonetic similarity of the two); Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039 (January 26, 2005) (finding the domain lexamedia.com to be visually and phonetically similar to complainant’s LEXAR and LEXAR MEDIA trademarks).

In short, the disputed domain name is confusingly similar to the Complainant’s globally famous and valuable ESPN and ESPNEWS trademarks and the Respondent’s use of the disputed domain name will cause consumers mistakenly to believe that “www.espnnews.com” website is affiliated with or owned by ESPN.

B. Rights or Legitimate Interests

The Respondent has no legitimate interest in the domain name <espnnews.com>. The Respondent owns no trademark registrations for and has no common law rights in “espnnews” or espnnews.com. The Respondent does not hold itself out as, and is not otherwise known as “espn” or “espnnews,” nor is the Respondent making a non-commercial fair use of the site.

In addition, the Respondent is not making a bona fide commercial use of the disputed domain name. It uses the site as a portal to house sports-related “sponsored links,” some which ultimately resolve at the Complainant’s competitors’ websites. For example, clicking on the link labeled “college basketball”, calls up three sponsored links, each resolving to the websites for America Online, The Washington Post and The New York Times – all competitors of Complainant in the dissemination of sports-related news via the Internet. Diverting consumers who are looking for ESPN’s products on the Internet to competing sports-related websites for commercial gain is not a legitimate, bona fide use and does not confer legitimate interests in the domain name. See, Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039 (January 26, 2005) (Respondent’s use was not bona fide where, via typosquatting, the Respondent diverted consumers to his website which then linked to the websites of Complainant’s competitors); MouseSavers, Inc. v. Tsung, WIPO Case No. D2004-1034 (February 1, 2005) (Diversion of Internet traffic, via typosquatting, to website offering advertising for other sites offering goods similar to the Complainant’s was not a bona fide use); Marriott Int’l, Inc. v. Seocho, FA 0303000149187 (Nat’l. Arb. Forum April 28, 2003) (same).

C. Registered and Used in Bad Faith

The disputed domain name was registered and is being used in bad faith.

Respondent is a serial typosquatter who has registered many domain names incorporating the slightly modified trademarks or company names of other entities. It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name. See, Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069 (February 28, 2005) (Finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039 (January 26, 2005) (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (November 29, 2004) (“[typosquatting] is presumptive of registration in bad faith”). The fact that the Respondent has an extensive history of typosquatting only strengthens the inference of bad faith. MouseSavers, Inc. v. Tsung, WIPO Case No.D2004-1034 (February 1, 2005) (finding bad faith where Respondent was a “serial” typosquatter).

Further, as discussed above, the Respondent is using the domain name to wrongfully divert consumers looking for Complainant’s products and services on the Internet to his website, where, upon information and belief, he charges third parties a fee to advertise on his site. This use is not bona fide and evidences Respondent’s bad faith attempt to trade on Complainant’s famous trademarks. See, Marriott Int’l, Inc. v. Seocho, FA 0303000149187 (Nat’l. Arb. Forum April 28, 2003) (finding “Respondent[‘s] attempt to derive commercial benefit from [a] typographical error” to be evidence of bad faith use); Expedia, Inc. v. Collazo, WIPO Case No. D2003-0716 (October 30, 2003) (holding that Respondent’s use of typo in the domain name to attract Complainant’s consumers to his website for commercial gain was bad faith use).

As additional evidence of the Respondent’s bad faith, the Respondent’s website contains numerous links to other websites containing pornographic material. The redirection of traffic to pornographic sites from a domain name incorporating a well-known mark has been held to be evidence of bad faith. Ferrero S.p.A. v. Stade, WIPO Case No. DBZ2003-0002 (August 25, 2003) (finding bad faith where the default page resolved to a pornographic website); CCA Industries, Inc. v. Dailey, WIPO Case No. D2000-0148 (April 26, 2000) (holding that mere association of a trademark with a pornographic website can itself constitute bad faith); Ty, Inc., v. O.Z. Names, WIPO Case No. D2000-0370 (June 27, 2000) (finding bad faith where Respondent linked the domain name in question to pornographic websites.)

B. Respondent

The Respondent has not filed a Response.

6. Discussion and Findings

The Complainant’s submissions correctly state the position with regard to typosquatting and are adopted by the Panel which summarizes its findings as follows:

(a) The disputed domain name is confusingly similar to the Complainant’s mark. The addition of another letter “N” does not change the way in which the word is pronounced. Moreover, an Internet user could easily type in an additional “N” by mistake and thus be directed to the Respondent’s website.

(b) The Respondent has no rights in the disputed domain name. The Complainant gave him none. The Respondent has not raised any of the defences under paragraph 4(c) of the Policy.

(c) The Respondent can be inferred to have registered and to use the disputed domain name in bad faith because:

(i) The Complainant’s mark is well-known and the Respondent must have known of it.

(ii) Typosquatting itself is evidence of bad faith as the cases cited show. The person closely associated with the Respondent is a wholesale typosquatter, as is shown by his registrations of many domain names just a little different from well-known names and marks.

(iii) The Respondent is using the disputed domain name wrongfully to direct customers looking for the Complainant’s products and services for commercial gain.

(iv) The Respondent’s website has links to pornographic websites which is evidence of bad faith, as shown by the cases cited.

(v) The Respondent has other domain names concerning which typosquatting allegations could well be made.

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 <espnnews.com> be transferred to the Complainant.

Hon Sir Ian Barker QC
Sole Panelist

Dated: June 28, 2005