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Network Solutions, LLC v. Texas Internet [2005] GENDND 1117 (6 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Network Solutions, LLC v. Texas Internet

Case No. D2005-0456

1. The Parties

1.1 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.

1.2 The Respondent is Texas Internet, Dallas, Texas, United States of America.

2. The Domain Names and Registrar

2.1 The disputed domain names <networksolutios.com> and <networksoutions.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2005. On April 27, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On April 27, 2005, Intercosmos Media Group d/b/a directNIC.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”).

3.2 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 April 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2005.

3.3 The Center appointed Jay Simon as the sole Panelist in this matter on May 24, 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.

3.4 Electronic copies of the Complaint and Response were forwarded to the Panel on May 24, 2005. Hard copies of the Complaint and Response were sent by courier to the Panelist that same day.

4. Factual Background

4.1 Complainant is the first, and remains, the largest registrar of Internet domain names. Complainant avers that it spends millions of dollars each year to advertise the NETWORK SOLUTIONS mark, and provides a broad range of Internet and computer related products and services, including domain name registration, electronic mail services, web hosting services and website building services.

4.2 Complainant is the assignee of the entire interest and goodwill of Network Solutions, Inc. in the NETWORK SOLUTIONS marks. All trademarks of Network Solutions, Inc. were transferred and assigned to Complainant, the assignments being recorded in appropriate jurisdictions, e.g., in the United States Patent and Trademark Office for U.S. trademarks and service marks.

4.3 Thus, Complainant is the owner of U.S. trademarks, Reg. Nos. 1,330,193 (registered April 9, 1985, and claiming a first use in 1979) and 2,468,676 (registered July 17, 2001) as well as trademarks, service marks and applications therefor in a number of other countries. Complainant’s predecessor registered the domain name <networksolutions.com> on April 27, 1998.

4.4 Respondent registered the disputed domain names on March 15, 2000.

4.5 As of the date of the Complaint, the disputed domain names resolved to a website which provides links for services that are identical to the services offered by Complainant, including domain name registration and web hosting services.

4.6 On June 25 and June 28, 2004, Complainant sent cease and desist letters to Respondent regarding the disputed domain names and demanding transfer of the disputed domain names to Complainant. On August 31, 2004, Complainant’s counsel sent by electronic mail and courier service, a similar letter to Respondent. Respondent has not responded.

4.7 Respondent has not responded to the Complaint and was notified by the Center of its default in these proceedings.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that it is the owner of a federally registered U.S. service mark as well as subsequently filed U.S. and foreign service marks and trademarks. Complainant further contends that it has developed, as a result of its registrations, promotional activities, and advertising, valuable goodwill and an outstanding reputation in its NETWORK SOLUTIONS mark and its corresponding domain name.

5.2 Complainant contends that each of the disputed domain names is virtually identical to the mark in which Complainant has rights and that therefore, the disputed domain names are confusingly similar to Complainant’s mark.

5.3 Complainant contends that the difference between its mark and each of the disputed domain names, i.e., the omission of one letter in each name, is de minimis.

5.4 Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names, is not a licensee of Complainant and Complainant never authorized Respondent to use, in any way, shape, or form Complainant’s mark NETWORK SOLUTIONS.

5.5 Complainant contends that each of the disputed domain names has been registered and used in bad faith, and that Respondent is engaged in a practice commonly known as “typosquatting”; involving the registration of common misspellings of famous marks for the purpose of diverting internet users to a respondent’s site for commercial gain.

5.6 Complainant further contends that the website to which the disputed domain names resolve offers services identical to the services offered by Complainant and that Respondent has, therefore, intentionally attempted to attract internet users to Respondent’s websites for the purpose of commercial gain by creating a likelihood of confusion with Complainant’s mark. Alternatively, Complainant contends that Respondent has registered the disputed domain names primarily for the purpose of disrupting Complainant’s business.

5.7 Complainant contends that both of the disputed domain names should be transferred to Complainant.

B. Respondent

5.8 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain names; and

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

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element of paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings is in default, and in accordance with paragraph 14(b) of the Rules, “The Panel shall draw such inferences… as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 The small differences between Complainant’s mark and each of the disputed domains is not sufficient to avoid a finding of confusing similarity. Thus, these differences, the omission of a single letter of Complainant’s mark in each of the disputed domain names does not change the overall impression of the mark; see Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675. Further, the WIPO files are replete with cases similar to this case where a single letter has been omitted from a complainant’s mark. These cases unfailingly find the disputed domain name confusingly similar to the complainant’s mark. See The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492. These cases also find that the Respondent has engaged in “typo squatting”, i.e., the intentional registration of common misspellings of famous marks for the purpose of diverting Internet users (and poor spellers and typists) to respondent’s site for commercial gain. And so is the case here: the disputed domain names are confusingly similar to Complainant’s mark, and Respondent has engaged in typo squatting.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.5 Paragraph 4(c) of the Policy lists three non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name.

6.6 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, the Complainant having made the necessary assertions (see below), it is incumbent upon the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain names, the Respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence regarding its rights or legitimate interests in the disputed domain names, and such failure is tantamount to admitting the truth of Complainant’s assertions; see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.7 Complainant asserts that Respondent is not a licensee and has not been authorized to use Complainant’s mark in any way, shape, or form. These assertions are uncontested and therefore, must be deemed for purposes of these proceedings as true.

6.8 Respondent has provided no evidence that it was commonly known by either of the disputed domain names, and it is highly unlikely that Respondent could show such evidence in the face of Complainant’s early use of the mark, its federally registered service mark, and the registration of its domain name. Further, it is clear that Respondent’s use of the disputed domain name is neither fair use nor non-commercial use thereof.

6.9 Respondent’s use of the domain name prior to institution of these proceedings cannot be viewed as a bona fide offering of goods or services. Rather, Respondent has chosen domain names that in the absence of any controverting evidence, were chosen for the purpose of luring Internet users to its site for the purpose of commercial gain. Also, the fact that Respondent offers services similar to those offered by Complainant further supports Complainant’s position that Respondent seeks to trade off the goodwill and reputation of Complainant. Respondent’s activities are not the stuff of a bona fide offering of goods or services.

6.10 This Panel finds that Respondent has no rights or legitimate interests in either of the disputed domain names.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.11 Paragraph 4(b) of the Policy indicates several, non-exclusive methods for showing bad faith registration and use of domain names. For these proceedings, paragraphs 4(b)(iii) and 4(b)(iv) are pertinent. Also typo squatting, in and of itself, has been recognized as bad faith registration and use of a disputed domain name; see Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675, National Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

6.12 There are uncontested assertions and evidence that Respondent was and is using the disputed domain names to attract internet users to its own site where Respondent offered services similar to the services offered by Complainant. In doing so, Respondent with its confusingly similar domain names, is implying an association, relationship, endorsement, affiliation with Complainant that simply does not exist. This Panel believes that Respondent intentionally registered the disputed domains for the purpose of attracting customers at the expense of Complainant. Thus, Respondent was explicitly disrupting Complainant’s business. See also TalkCity, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. In light of Respondent’s activities in trading on the good name and reputation of Complainant, this Panel finds that Respondent registered and used the disputed domain names in bad faith.

7. Decision

7.1 For all of the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Panel orders that the domain names <networksoution.com> and <networksolutios.com> be transferred to the Complainant.

Jay Simon
Sole Panelist

Dated: June 6, 2005