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Encyclopaedia Britannica, Inc. v. Michele Dinoia/SZK.com [2005] GENDND 1799 (10 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Encyclopaedia Britannica, Inc. v. Michele Dinoia/SZK.com

Case No. D2005-0865

1. The Parties

Complainant is Encyclopaedia Britannica, Inc., Chicago, Illinois, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.

Respondent is Michele Dinoia/SZK.com, Pineto, Italy.

2. The Domain Names and Registrars

The disputed domain names <brittannica.net> and <wwwbritannica.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com and Dotster, Inc. respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2005. On August 16, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name <wwwbritannica.com>. On August 16, 2005, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On August 23, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name <brittannica.net>. On August 23, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 24, 2005. In accordance with the Rules, Paragraph 5(a), the due date for the Response was September 13, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 19, 2005.

The Center appointed Ross Carson as the sole panelist in this matter on October 4, 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

Complainant has been engaged in the manufacturing, sales and distribution of encyclopedia, dictionaries, atlases and other reference-related goods and services since the 19^th century. Complainant has sold encyclopedia, dictionaries, atlases and other reference-related goods and services throughout the United States under the ENCYCLOPAEDIA BRITANNICA and BRITANNICA trademarks since the late 1870’s.

Complainant owns numerous valid and subsisting federal trademark registrations issued by the United States Patent and Trademark Office, including Reg. No. 2,550,643 for BRITANNICA.COM and Reg. Nos. 1,309,991, 1,506,869 and 2,287,468 for BRITANNICA. Copies of the above referred to United States trademarks BRITANNICA and copies of additional United States trademark registration for compound trademarks including BRITANNICA owned by Complainant were attached as Annex F to the Complaint.

Complainant also owns valid and subsisting trademark registrations for the BRITANNICA mark in a number of countries throughout the world. Complainant is the owner of European Community Trademark Registration Nos. 1364777 and 198432 for the trademark BRITANNICA. Complainant is also the owner of Italian Trademark Registration No. 624514 for the trademark BRITANNICA. Copies of Complainant’s European Community and Italian registrations were attached as Annex E to the Complaint.

Complainant is the registrant and owner of the following domain names, among others <britannica.com>, <britannica.org>, <brittanica.com>, <britanica.com>, <britanica.net>, <britanicca.com>, <britanicca.org>, <britannicaschool.com>, and <britannicastore.com>. Copies of the Whois reports for these domain names were attached as Annex G to the Complaint. Complainant operates its principal website at “www.britannica.com”. This site offers a variety of online reference services, including providing news, sports, market and weather information.

Complainant has sold many billions of dollars worth of encyclopedia, reference and other online goods and services under the BRITANNICA trademarks throughout the United States. Complainant has spent hundreds of millions of dollars to advertise and promote its encyclopedia, reference and other online goods and services under the BRITANNICA trademarks throughout the United States.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Complainant submits that the domain name <wwwbritannica.com>, which is in dispute, is virtually identical or confusingly similar to Complainant’s BRITANNICA trademarks. The domain name is merely composed of Complainant’s BRITANNICA trademarks with the prefix “www”. Complainant further submits that the addition of the “www” prefix is a common practice of “typo-squatters” who try to take advantage of the fact that Internet users may fail to insert a period between the World Wide Web prefix and the remainder of the domain name.

Complainant submits that the second domain name in dispute <brittannica.net> is also virtually identical or confusingly similar to Complainant’s BRITANNICA trademarks. The removal or addition of one letter from a registered mark has been held to be insufficient to distinguish the domain name from the mark under the Policy. See Wells Fargo & Company v. Michele Dinoia and SZK.com, National Arbitration Forum Case No. FA366278 (“The mere misspelling of Complainant’s mark… is insufficient to distinguish the domain name from the mark”).

In conclusion, Complainant submits that both the <wwwbritannica.com> and <britannica.net> domain names in dispute are confusingly similar to Complainant’s BRITANNICA trademarks within the meaning of Paragraph 4(a)(i) of the Policy.

No Rights or Legitimate Interests

Complainant states that it has not licensed or otherwise permitted Respondent to use the BRITANNICA marks or to apply for or use any domain name incorporating those marks. Complainant submits that Respondent is not commonly known by the <wwwbritannica.com> or <brittannica.net> domain names and states that to the best of Complainant’s knowledge, Respondent has not applied for or obtained any state or federal trademark or service mark registration for either of the domain names in dispute.

Complainant states that Respondent is not making a legitimate or fair use of the domain names in dispute, without intent for commercial gain. Respondent uses the <brittannica.net> domain name to host a webpage containing links to various commercial websites which offer encyclopedia and related reference materials, including links to Complainant’s website and the websites offering the products of Complainant’s competitors, such as World Book. Printouts from Respondent’s website at the <brittannica.net> domain name were attached as Annex H to the Complaint. Respondent uses the “www.wwwbritannica.com” website to link to third party products and services unaffiliated with Complainant.

Registered and Used in Bad Faith

Complainant submits that Respondent had constructive notice of Complainant’s prior rights in the BRITANNICA trademarks and probable actual knowledge of Complainant’s rights in its BRITANNICA trademarks and that Respondent obtained the <wwwbritannica.com> and <brittannica.net> domain names in order to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web pages by creating a likelihood of confusion with Complainant’s BRITANNICA trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

Complainant further submits that Respondent used the domain names in dispute intentionally to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s BRITANNICA trademarks as to the source or affiliation of the websites in breach of Paragraph 4(b)(iv) of the Policy.

Complainant submits that the domain names in dispute are close misspellings of Complainant’s trademark BRITANNICA. Respondent’s websites contain links to websites of Complainant’s competitors as well as links to a panoply of goods and services, such as business, cars, insurance, travel, etc. Respondent’s above activities are commonly referred to as “typo-squatting or “typo-piracy” and constitute use of the domain names in dispute in bad faith. See e.g., National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

Complainant also submits that “typo-squatting” as has occured in this case and in numerous earlier cases involving Respondent is evidence of bad faith.

The fact that Respondent has engaged in numerous cases of “typo-squatting” using misspellings of others’ trademark rights is evidence of bad faith. In the past four years numerous UDRP panels have found this Respondent to have engaged in various types of “typo-piracy”, and have ordered Respondent to transfer the respective domain names. These decisions include the following: Allianz AG v. Michele Dinoia, WIPO Case No. D2005-0277 (ordering the domain name <alianz.com> transferred to complainant); Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911 (ordering the domain name <wwwvolvocars.com> transferred to complainant); BellSouth Intellectual Property Corporation v. Michele Dinoia, WIPO Case No. D2004-0486 (ordering the domain name <wwwfastaccess.com> transferred to complainant); Bank of America Corp. v. Michele Dinoia, National Arbitration Forum Case No. FA390945 (ordering the domain name <bamkofamerica.com> transferred to complainant); Wells Fargo & Company v. Michele Dinoia and SZK.com, National Arbitration Forum Case No. FA366278 (ordering the domain name <ellsfargo.com> transferred to complainant); Alcoa Inc. v. Michele Dinoia d/b/a SZK.com, National Arbitration Forum Case No. FA227654 (ordering the domain name <wwwalcoa.com>, transferred to complainant); Circuit City Stores, Inc. v. Michele Dinoia, National Arbitration Forum Case No. FA128792 (ordering the domain name <wwwcircuitcity.com> transferred to complainant). Just as has been the case in the many decisions cited above, this Respondent registered and uses the <wwwbritannica.com> and <brittannica.net> domain names to unlawfully divert and siphon off Internet users seeking Complainant’s “www.britannica.com” website. Respondent’s use of these domain names for such purposes is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names, and is itself evidence of bad faith. See National Association of Professional Baseball Leagues Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, Complainant must prove that each of the three following elements is satisfied:

1. The domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

2. Respondent has no rights or legitimate interests in respect of the domain names; and

3. The domain names have been registered and are being used in bad faith .

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate. Respondent did not file a Response to the Complaint. By reason of the failure of Respondent to file a Response, the Panel infers that Respondent does not contest the proof submitted in the Complaint.

A. Identical or Confusingly Similar

The <wwwbritannica.com> domain name registered by Respondent is confusingly similar to Complainant’s BRITANNICA trademarks. The prefix “www” is insufficient to differentiate this domain name from Complainant’s BRITANNICA mark. The <brittannica.net> domain name is confusingly similar to Complainant’s BRITANNICA trademarks. The addition of a second letter “t” is insufficient to distinguish the domain name <brittannica.net> from Complainant’s BRITANNICA trademarks. See Wells Fargo & Company v. Michele Dinoia and SZK.com., National Arbitration Forum Case No. FA366278.

The Panel finds that the two domain names in dispute are confusingly similar to Complainant’s well known BRITANNICA trademarks.

B. Rights or Legitimate Interests

Respondent did not file any proof to demonstrate its rights to and legitimate interests in the domain names in dispute by responding to the Complaint as invited by Paragraph 4(a) of the Policy. The Panel finds that Respondent was not licensed by Complainant to use the domain names in dispute; that Respondent was not known by the name BRITANNICA or a name confusingly similar thereto; that Respondent is not making a legitimate or noncommercial use of the domain names in dispute; and that Respondent had actual knowledge of Complainant’s BRITANNICA trademark as well as constructive knowledge thereof before Respondent registered the domain names in dispute.

The Panel finds that in the absence of any evidence of rights or legitimate interests of Respondent, Complainant has proven that Respondent has no rights or legitimate interests in the domain names in dispute.

C. Registered and Used in Bad Faith

Complainant’s BRITANNICA trademarks were well known at the time of registration of the domain names in dispute. Respondent had constructive and actual knowledge of Complainant’s rights in the BRITANNICA trademarks at the time it registered the <wwwbritannica.com> and <brittannica.net> domain names.

Respondent uses the domain names in dispute to intentionally divert traffic from Complainant’s websites, whose URL incorporates Complainant’s BRITANNICA trademarks. The domain names in dispute either misspell the word BRITANNICA or fail to place a period after “www”. Once diverted to Respondent’s websites associated with the confusing similar domain names, the Internet user is linked to sites containing links to various commercial websites, some of which offer products of Complainant’s competitors including World Book.

Respondent’s “typosquatting” in this case is similar to other cases in which Respondent has been found to be “typosquatting” in bad faith.

The Panel finds that Complainant has proven that Respondent registered the domain names in dispute with knowledge of Complainant’s BRITTANICA trademarks and is using the domain names in dispute 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 names <brittannica.net> and <wwwbritannica.com> be transferred to Complainant.

Ross Carson
Sole Panelist

Date: October 10, 2005