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Wedgwood Ltd. Corp. v. RegisterFly.com, Domain Registration [2005] GENDND 1787 (14 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wedgwood Ltd. Corp. v. RegisterFly.com, Domain Registration

Case No. D2005-0876

1. The Parties

The Complainant is Wedgwood Ltd. Corp., Washington, D.C., United States of America, represented by Harris, Wiltshire & Grannis, LLP United States of America.

The Respondent is RegisterFly.com, Domain Registration, West Orange, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bestwedgewoodchinafast.info> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2005. On August 17, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 17, 2005, eNom 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 September 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2005.

The Center appointed Dennis A. Foster as the Sole Panelist in this matter on September 29, 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, Wedgwood Ltd. Corp., is a world-famous manufacturer of china. The Complainant has been making china under its WEDGWOOD trademark since the late 1700’s. The Complainant owns a number of United States Principal Registry WEDGWOOD trademarks (Complaint Annex 2).

The Complainant also uses its WEDGWOOD trademark to market such goods as linens, lighting fixtures, coffee, tea and snack foods.

The Respondent is an entity that registered the disputed domain name, <bestwedgewoodchinafast.info>, on June 20, 2005. The Respondent uses the disputed domain name to connect to other websites that offer many different kinds of goods for sale, including automobile loans and dating services.

5. Parties’ Contentions

A. Complainant

- Complainant Wedgwood Ltd. Corp. is a recognized world leader in the merchandising of china, earthenware, and household goods.

- Complainant has registered with the U.S. Patent and Trademark Office its rights in the trademark WEDGWOOD which it has used in commerce since 1760. A summary of the Complainant’s WEDGWOOD trademarks registered with the U.S. Patent and Trademark Office and database printouts of each of the listed trademarks are attached as Annex 2.

- Complainant uses its name and trademark primarily in connection with its famous Wedgwood china, but it also uses the trademark for other household goods such as linens, potholders, oven mitts, coasters and tea towels, china, porcelain, earthenware and beverage ware; electric lighting fixtures; coffee, tea, cocoa, sugar, biscuits, cakes, pastries, candies, processed cereals; and jewelry.

- Another major use of the WEDGWOOD trademark is on the Complainant’s website at “www.wedgwood.com”.

- Respondent’s registered domain name, <bestwedgewoodchinafast.info>, is confusingly similar to Complainant’s trademark. The only differences between the domain name and the Complainant’s trademark and website address are the misspelling of the trademark (“Wedgewood” instead of WEDGWOOD) and the addition of the words “best”, “china”, and “fast”. A prior UDRP panel has found this same misspelling of the WEDGWOOD name and the addition of the word “china” to be confusingly similar (Wedgwood Ltd. Corp. v. JIT Ltd., WIPO Case No. D2004-1025 (February 2, 2005)).

- Prior UDRP panels have also determined that such minor alterations as adding the words “best” and “fast” to a complainant’s mark do not preclude a finding of confusing similarity. See Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313 (June 21, 2005) finding <fast-cialis.com> among other domain names to be confusingly similar to the CIALIS trademark. See also America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001).

- Respondent’s use of Complainant’s trademark here, like the use in America Online supra, is an “adaptation of a recognized trademark in a domain name by variation in spelling” and the addition of words.

- The Respondent is not affiliated with the Complainant in any way. In particular, Complainant has never given Respondent any license or consent, express or implied, to use Complainant’s trademark in a domain name or in any other manner.

- In addition, Respondent is not using the disputed domain name “in connection with a bona fide offering of goods and services” or for “legitimate noncommercial or fair use, ...without intent for commercial gain to misleadingly divert customers”. Policy paragraph 4(c).

- Respondent’s website is a classic example of an illegitimate use of a domain name. It displays a list of product categories that, when clicked on, in turn display “sponsored links” to websites that sell merchandise corresponding to the product categories. (Complaint Annex 3: printout of Respondent’s website and selected linked pages as of August 11, 2005).

- Respondent’s website in fact has no function other than to “divert users” to other websites that sell merchandise, giving rise to the inference that Respondent constructed its website in order “to share in revenues obtained from diverted traffic”, Costco Wholesale Corp. v. Henry Chan, WIPO Case No. D2004-0218 (May 18, 2004) and to collect “click-through fees and to generate sales revenue” for the sites to which users are diverted, Cancer Treatment Centers of America, Inc. v. Henry Chan, WIPO Case No. D2003-0611 (September 18, 2003). Such use neither establishes rights or legitimate interests in the domain name nor constitutes a bona fide offering of goods and services.

- Finally, because Respondent’s website operates for commercial gain from diverted traffic, there can be no “legitimate noncommercial or fair use”. See Emmis Television Broadcasting, L.P. d/b/a KHON-TV v. Henry Chan, WIPO Case No. D2004-0366 (July 14, 2004).

- Respondent’s domain name is clearly relying on its confusing similarity with Complainant’s trademark to attract users and divert them to unrelated websites, presumably to generate revenue. Cancer Treatment supra.

- The disputed domain name website, “www.bestwedgewoodchinafast.info”, contains various product categories, including car loans, discount travel and dating. Thus, the Respondent is unfairly obtaining revenues from the use of the domain name which relates to a trademark in which it has no rights. This type of behavior has been repeatedly considered as a clear case of bad faith. Banque Transatlantique S.A. v. DOTSCOPE, WIPO Case No. D2004-1100 (February 23, 2005).

- There can be no doubt that causing confusion regarding affiliation with the Complainant is no accident, but is instead the very purpose of Respondent’s use of the disputed domain name. Moreover, Respondent’s inclusion of the word “china”, Complainant’s premier product, in the disputed domain name demonstrates that Respondent was well aware of Complainant’s WEDGWOOD trademark.

- In this case, “Respondent’s effort to disguise its true identity by using the privacy protection of the registrar is yet another example of bad faith conduct”. Medco Health Solutions, Inc. v. Whois Privacy Protection Services, Inc., WIPO Case No. D2004-0453 (August 25, 2004) and also Marian Keyes v. Old Bam Studios Ltd., WIPO Case No. D2002-0687 (September 23, 2002) finding that use of the registrar Register.com’s account masking function to hide Respondent’s identity is evidence of bad faith.

- It has been most difficult for the Complainant to make contact with the Respondent. Complainant wrote to multiple email addresses provided at the registrar’s website without success. The registrar wrote to the Complainant that it would not supply the Respondent’s current email address without a court order.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to obtain transfer of the disputed domain name, the Complainant must show under paragraphs 4(a)(i-iii) of the Policy:

- the disputed 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 the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has produced for the Panel many examples of its WEDGWOOD trademark registrations. These include, for example, United States Principal Register No. 1471030 dated December 29, 1987, in International Class 42 for retail store services in glassware and dinnerware. (Complaint Annex 2).

The disputed domain name, <bestwedgewoodchinafast.info>, contains three other words that surround the word “wedgewood”. The Panel first notes that the Complainant’s WEDGWOOD trademark is readily identifiable even though it is slightly misspelled, i.e., “wedgewood” instead of WEDGWOOD. This slight and apparently willful misspelling often is called “typosquatting”. (see, e.g., Wedgwood Ltd. Corp. v. JIT Ltd., WIPO Case No. D2004-1025 (February 2, 2005) where the Respondent registered <wedgewood.com>).

As to the three words the Respondent has added, “best”, “china” and “fast”, the Panel finds they are mere logical add-ons that do not obviate the confusing similarity with the Complainant’s trademark. In essence, the disputed domain name, <bestwedgewoodchinafast.info> leads one to think the Complainant is selling its famous china in an expeditious manner on the Internet. (For a discussion supporting this treatment of logical add-ons, see Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313 (June 21, 2005) where words such as “fast” and “cheap” were added to trademarked goods. Also America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001) where “sportsbet” and “casino” were added to AOL).

The Panel finds the disputed domain name, <bestwedgewoodchinafast.info> is confusingly similar to the Complainant’s WEDGWOOD trademark. Pro tanto, the Panel finds the Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends the Respondent does not have a license to use the Complainant’s WEDGWOOD trademark in the disputed domain name. The Complainant goes further and states that it has never had any relationship whatever with the Respondent.

As to the Respondent’s use of the disputed domain name—to prod the Internet navigator to click through to a variety of websites selling a variety of goods and services—the Complainant contends this is not in good faith per paragraph 4(c)(i) of the Policy.

The Respondent is in default in this proceeding and has thus not attempted to rebut the Complainant’s contentions. The Panel agrees with the Complainant that the Respondent’s use of the disputed domain name has already been rejected as in bad faith by many previous UDRP decisions. The Panel follows these decisions and finds the Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy. (For an example of rejection of the click-through business method as in bad faith, see Banque Transatlantique S.A. v. DOTSCOPE, WIPO Case No. D2004-1100 (February 23, 2005)).

C. Registered and Used in Bad Faith

The Complainant contends the Respondent’s use of the disputed domain name constitutes bad faith registration and use in violation of paragraph 4(b)(iv) of the Policy:

“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.”

The Panel reiterates that the Respondent is using the disputed domain name to connect to other websites that offer a wide variety of goods and services. The Panel believes it appropriate to assume that the Respondent is being paid for this service. The Panel finds the Respondent’s business model is squarely in violation of the bad faith provisions of paragraph 4(b)(iv) of the Policy set out above. As the Complainant points out, the Respondent’s using the word “china” in the disputed domain name—the Complainant’s signature product—is a sign that the Respondent wanted to be confused for the Complainant. (Again, see Banque Transatlantique supra. Also see Costco Wholesale Corp. v. Henry Chan, WIPO Case No. D2004-0218 (May 18, 2004) where the Respondent’s click-through method of advertising other websites selling various goods was found to violate the bad faith provisions of paragraph 4(b)(iv) of the Policy).

The Panel also agrees with the Complainant that the Respondent’s assiduous attempts to hide its identity, taken together with its click-through business model that violates paragraph 4(b)(iv) of the Policy, is further evidence of the Respondent’s bad faith. (For further discussion of circumstances where using registration privacy protection to hide identity may lead to a finding of bad faith, see Medco Health Solutions, Inc. v. Whois Privacy Protection Services, Inc., WIPO Case No. D2004-0453, (August 25, 2004)). Although this is not one of the express bad faith provisions of the Policy, paragraph 15(a) of the Rules gives the Panel the discretion to find additional bad faith grounds where appropriate.

The Panel finds the Complainant has proved the Respondent registered and is using the disputed domain name in bad faith.

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, <bestwedgewoodchinafast.info>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist

Dated: October 14, 2005