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Lexar Media, Inc. v. Michael Huang [2005] GENDND 23 (26 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lexar Media, Inc. v. Michael Huang

Case No. D2004-1039

1. The Parties

The Complainant is Lexar Media, Inc., Fremont, California, United States of America, represented by Cooley Godward, LLP, United States of America.

The Respondent is Michael Huang, Singapore.

2. The Domain Name and Registrar

The disputed domain name <lexamedia.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 December 9, 2004 (electronic version) and confirmed on December 13, 2004 (hardcopy). On December 10, 2004, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 14, 2004, 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 December 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2005.

The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on January 12, 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 submitted evidence of registration of the following trademarks:

Service/Trademark	Country	Registration No.	Registration Date
LEXAR MEDIA (and Design)	US	2,295,266	November 30, 1999
LEXAR	US	2,905,053	November 23, 2004
LEXAR MEDIA	US	2,906,612	November 30, 2004
JUMPDRIVE	US	2,742,037	July 29, 2003

Complainant has also submitted evidence regarding the following trademark applications:

Service/Trademark Application	Country	Application No.	Filing Date
LEXAR (and Design)	US	78,468,177	August 16, 2004
LEXAR (and Design)	US	78,468,198	August 16, 2004

Complainant claims to have accrued common law rights in the trademarks LEXAR and LEXAR MEDIA since Complainant began operating under its name Lexar Media, Inc. in November 1997.

Respondent registered the disputed domain name <lexamedia.com> on September 13, 2003.

5. Parties’ Contentions

A. Complainant

A.1. Identity or Confusing Similarity.

Complainant asserted the following:

In addition to its US marks, Complainant owns trademark registrations and pending applications for the trademarks LEXAR, LEXAR MEDIA and LEXAR MEDIA (and Design) in twenty one jurisdictions, including Singapore.

Complainant is a leading manufacturer and marketer of removable flash memory cards, USB flash drives, card readers and ATA controller technology solutions for various markets.

Complainant sells its products throughout the world, including the Asia/Pacific Region

Complainant has invested, over the past seven years, over ten million dollars in advertising and promoting its products under its LEXAR and LEXAR MEDIA marks throughout the world.

Respondent’s Website located at “www.lexamedia.com” contains page headers including “Lexar Media” and “Jump Drive.” Respondent’s site carries numerous links to online retailers purporting to sell Complainant’s products as well as links to purchase products manufactured by some of Complainant’s direct competitors.

This is a typosquatting case, because the disputed domain name <lexamedia.com> differs from Complainant’s trademark LEXAR MEDIA by a single letter (the omitted “r” in “Lexar”) (and cites Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, DaimlerChrysler Corporation and Daimler Chrysler Services North America LLC v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0756.

Complainant owns and uses the domain name <lexarmedia.com>

A.2. Respondent’s lack of rights or legitimate interests in respect of the domain name.

Complainant submitted the following statements and cited the following cases:

By the time Respondent registered the disputed domain name (September 13, 2003), Complainant had well-established rights in its trademarks in the US and Singapore, where Respondent resides.

To the best of Complainant’s knowledge, Respondent does not hold himself out as, and it is not otherwise known as, “Lexar Media” or “Lexa Media.”

Respondent is not an authorized dealer, distributor or licensee of Complainant.

A mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which Respondent has legitimate interests (and cites Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 and Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094.

A.3 Bad faith registration and use

Complainant submitted the following arguments, and cited the following case:

Some retailer links on Respondent’s site are presented as “Sponsored Links”(links for which link owners pay fees.)

Misspellings alone are “sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used [the purposefully misspelled domain name] intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark”, and cites (AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937.)

B. Respondent

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

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove each of the following three elements:

“(i) the domain name in question is identical or confusingly similar to a trademark or service mark 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.”

As Respondent has failed to submit a response to the Complaint, the Panel may choose to accept as true all of the supported allegations of the Complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

A. Identical or Confusingly Similar

Complainant has submitted evidence to prove that it holds exclusive rights to the trademarks “LEXAR” and “LEXAR MEDIA”. Complainant’s trademark registration No. 2,295,266 LEXAR MEDIA (and Design) predates Respondent’s registration of the disputed domain name.

Complainant’s incorporation of Lector Media, Inc., the use of the name LEXAR MEDIA and the common law trademark rights derived from the use of said name, also predate Respondent’s registration of the disputed domain name.

Complainant’s trademarks LEXAR and LEXAR MEDIA are arbitary. The terms “LEXAR” or “LEXAR MEDIA” do not exist in the English Language (spoken both in Complainant’s and Respondent’s jurisdiction). This fact, added to the considerable investment made by Complainant (over ten million dollars) to advertise and promote the LEXAR and LEXAR MEDIA marks throughout the world, makes said trademarks solid and distinctive. Respondent’s deletion of a letter “r” from Complainant’s trademarks LEXAR and LEXAR MEDIA creates a term (LEXA MEDIA) that is confusingly similar to such marks. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (“This conduct, commonly referred to as ‘typo squatting,’ creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy”); DaimlerChrysler Corporation and Daimler Chrysler Services North America LLC v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0756 (“It is well established that confusing similarity is normally found where a Domain Name corresponds to a typographical error in the spelling of another mark”); see also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441, in that “[t]he trademark REUTERS is not descriptive of anything, and is thus highly distinctive of the Complainant’s business. The domain name which differs by only one letter from a trade mark has a greater tendency to be confusingly similar to the trade mark where the trade mark is highly distinctive.”

To carry into effect the similarity analysis, we must not take into account the generic top-level domain (gTLD) “.com,” because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035.)

The disputed domain name <lexamedia.com> is confusingly similar to Complainant’s trademarks LEXAR and LEXAR MEDIA visually and phonetically. The deletion of the letter “r” from the disputed domain name adds no distinctiveness to such domain name, as compared to the said trademarks. See, mutatis mutandis, Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 and Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094.

Paraphrasing AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447, this Panel finds that but for the addition of a letter “r,” the subject domain name would be identical to Complainant’s trademarks LEXAR and LEXAR MEDIA. It is also confusing.

Following VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446, this Panel believes that “Respondent appears to have employed minor misspellings of Complainant’s mark[s] to take bad faith advantage of spelling errors made by Internet users while attempting to enter Complainant’s Internet address from the web browser,” i.e., that Respondent’s conduct falls within the definition of “typosquatting,” which consists of taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom.

According to Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, “‘typosquatting,’ is a practice that has been condemned and been found to be confusingly similar to the marks which they mimic.”

In light of the above, the Panel finds that the domain name <lexamedia.com> is confusingly similar to the trademarks LEXAR and LEXAR MEDIA in which Complainant has rights. The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, Paragraph 4(c).

Respondent has not submitted any evidence showing any rights or legitimate interests in the disputed domain name. Complainant has denied having granted any license, dealership or distributorship to Respondent, regarding Complainant’s trademarks LEXAR and LEXAR MEDIA, or the products covered by said marks.

According to the evidence submitted by Complainant (which has not been rebutted by Respondent), Respondent’s site contains page headers including “Lexar Media” and “Jump Drive,” which are registered trademarks owned by Complainant. Respondent’s site also has a section called “Popular Links” which includes sub-sections like “Jump Drive”, “Lexar Media” and “Lexar.” The “Sponsored Links” section carries some links to online retailers purporting to sell Complainant’s products. According to Complainant, Respondent’s site also features some links to purchase products manufactured by some of Complainant’s direct competitors.

Offering various goods and services, including those that are related to memory devices, at a site to which a domain name called <lexamedia.com> resolves, which is confusingly similar to the name and trademarks of Complainant, who has spent more than ten million dollars publicizing its marks, and doing so by implementing a typosquatting practice, cannot constitute a bona fide conduct.

Complainant has stated that, to the best of its knowledge, Respondent does not hold himself out as, and it is not otherwise known as, “Lexar Media” or “Lexa Media.” Respondent has not contested this argument.

Respondent is not making a legitimate noncommercial use of the disputed domain name. Respondent has engaged in a typosquatting practice to divert, for commercial gain, consumers looking for Complainant’s products on the Internet. Consumers are diverted to a site where they are offered various computer products, including those that compete with Complainant and Complainant’s products.

The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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.”

Complainant has submitted enough evidence to show that Respondent is conducting a typosquatting practice, i.e., taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom.

Respondent has submitted no justification for registering a domain name that is almost identical to Complainant’s well-publicized trademarks LEXAR and LEXAR MEDIA, but for the deletion of a letter “r.” Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name (see AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937; News Group Newspapers Limited and News Network Limited v. Momm Amed Fa, WIPO Case No. D2000-1623; America Online, Inc. v. Intellectual-Assets.com, Inc., WIPO Case No. D2000-1043; Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2000-1547;Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594,; Club Méditerranée S.A. v. Clubmedical, WIPO Case No. D2000-1428; Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587; AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447.

Respondent is trading on the goodwill of the Complainant and free-riding on the recognition that Complainant’s trademarks enjoy among Complainant’s customers on the Internet. Respondent has intentionally attempted to attract, and indeed has attracted for commercial gain, Internet users to his website, where he offers products that are directly related to Complainant, and even products from Complainant’s competitors. Respondent is using Complainant’s trademarks in his site. Respondent has created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, by taking advantage of a misspelling or typing error of Internet users who were looking for <lexarmedia.com>, but mistakenly typed <lexamedia.com> (Paragraph 4(b)(iv) of the Policy).

In this sense, even if the user who arrives at Respondent’s Website may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in his purpose of using Complainant’s marks to attract the user with a view to commercial gain. (See Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No.D2000-0587, citing in turn National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118.)

Complainant has thus established that the disputed domain name <lexamedia.com> has been registered and is being used in bad faith. The third requirement of the Policy has therefore been fulfilled.

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 <lexamedia.com> be transferred to the Complainant

Kiyoshi I. Tsuru
Sole Panelist

Date: January 26, 2005