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Bellsouth Intellectual Property Corporation v. Netsolutions Proxy Services [2005] GENDND 313 (18 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Longs Drug Stores California, Inc. v. Shep Dog

Case No. D2004-1069

1. The Parties

The Complainant is Longs Drug Stores California, Inc. of Walnut Creek, California, United States of America, represented by attorneys E. Lynn Perry, Jonathan Swartz, and E. Shalu Saluja of Thelen Reid & Priest LLP, San Francisco, California, United States of America.

The Respondent is known as Shep Dog of Bronx, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wwwlongs.com> (hereafter the “Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2004. On December 17, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 17, 2004, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent, Shep Dog, was the current registrant of the disputed Domain Name. 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 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2005.

The Center appointed Paul E. Mason as the sole panelist in this matter on February 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.

4. Factual Background

According to paragraph 12 of the Complaint, Complainant Longs Drug Stores California, Inc. has been using the LONGS service mark in both stylized and standard form since 1938. Under U.S. trademark law, basic trade and service mark rights flow from continuous use in commerce, with registration providing supplementary rights.

Annex C to the Complaint indicates registration of the LONGS mark in the U.S. and Japan.

Complainant also asserts ownership of the domain name <longs.com>.

5. Parties’ Contentions

A. Complainant

Complainant asserts rights to the LONGS service mark, and indicates its close similarity to the domain name at issue in this case <wwwlongs.com>. The difference between the domain name and Complainant’s own domain name and corresponding website “www.longs.com” is merely the absence of a period between “www” and “longs”. Complainant contends that this small difference amounts to the practice of “typosquatting” by Respondent.

Complainant asserts that Respondent has no legitimate rights or interests in the domain name.

Complainant asserts bad faith registration and use of the domain name by Respondent as follows:

a) the domain name does not resolve to a matching website, but rather re-directs traffic to a website selling products competing with those of Complainant (Complaint, paragraph 17 and Annex D thereto); and

b) Respondent has concealed his identity by providing false contact information (Complaint, paragraph 20); and

c) Respondent owns some 4,419 domain names, many of which are slight typographical variations of marks owned by well-known companies (Complaint, paragraph 24 and Annex E thereto).

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The UDRP Rules provide that in the event of a Respondent default, the Panel shall weigh and evaluate the strength of Complainant’s claims and proceed to a decision on the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the domain name is very close and hence confusingly similar to

Complainant’s service mark LONGS. The addition of the letters “www” does not render the Domain Name distinctive.

B. Rights or Legitimate Interests

The Panel finds that Complainant has clearly established its rights and interests in the LONGS mark and made a prima facie case that Respondent lacks legitimate interests in <wwwlongs.com>, and that Respondent has shown no such rights or interests.

C. Registered and Used in Bad Faith

The variation is very slight between the domain name and Complainant’s own mark and corresponding domain name and website. This is a clear case of typosquatting – using a small typographical variation between someone else’s mark and one’s own domain name in order to attract Internet traffic to one’s own site. There are a myriad of UDRP cases running against this practice.

The only question remains whether Complainant has proven bad faith by Respondent in its practice of typosquatting. A visit by the Panel on February 28, 2005, to the website to which the domain name redirects indicates that Respondent is indeed using that site to promote and sell pharmaceutical products competing with those of Complainant. The Panel notes that Respondent has made no effort to avoid Internet user confusion by posting a disclaimer on its website to the effect that it is not associated in any way with Complainant or Complainant’s products or services.

Of course Respondent is free to engage in the Internet pharmaceutical business to compete with Complainant. However, what Respondent is not free to do is to tread upon the goodwill built up by Complainant in order to steer traffic to a competing site based on intent to take advantage of Internet user confusion from typographical errors involving Complainant’s trademark. This is bad faith under paragraph 4(b)(iv) of the Policy.

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 <wwwlongs.com> be transferred to the Complainant.

Paul E. Mason
Sole Panelist

Dated: February 28, 2005