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Albert Fürst von Thurn und Taxis v. Rainer Merthan [2005] GENDND 335 (7 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WSI Holdings Ltd. v. WSI House

Case No. D2004-1089

1. The Parties

The Complainant is WSI Holdings Ltd., c/o World Technology Group, Inc., of Toronto, Ontario, Canada, represented by Piper Rudnick, United States of America.

The Respondent is WSI House, of Purley, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <wsicompany.biz> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2004. On December 23, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 23, 2004, Tucows 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 January 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2005.

The Center appointed Dan Hunter as the sole panelist in this matter on February 14, 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

A. The Complainant and its Mark

The Complainant is an Internet service business that franchises elements of its business to franchisee-operators. It has franchised its business to over 1000 franchisees in 87 countries. These franchises all trade under the name “WSI.” The Complainant uses the domain name <wsicorporate.com> for corporate and information purposes.

The Complainant has US trademark and service mark registrations for the marks “WSI Internet Consulting & Education” and “WSI ICE” in the Principal Register of the US Federal Trademark Office, and in the Georgia and South Carolina state trademark registers. It has made significant expenditures in promoting the WSI brand in the US, in England and elsewhere.

B. The Respondent

No Response was filed. From the Complaint and the WHOIS record the Respondent appears to be the individual or organization named above.

C. The Use of the Domain Name

On or about July 21, 2004, the Respondent registered the disputed domain name. It appears that the Respondent has adopted the domain name to create the false impression that it is the Complainant. The Respondent’s website uses the same logos, name, marks, fonts and other elements as the Complainant’s website and has solicited personal information from individuals on the basis that the Respondent was the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark. Specifically, the Complainant asserts:

(1) The domain name adopts the Complainant’s “WSI” name with only the generic term “company” appended to it. Other UDRP panels have considered similar domain names with generic additions to be confusingly similar and ordered transfers in similar circumstances.

(2) Any use of the domain name by the Respondent will cause confusion among users who will mistakenly assume an association between the domain name and the Complainant. Indeed the Complainant believes that actual confusion has already taken place. Internet users are likely to type in the domain name in search of the “www.wsicorporate.com” website, and will confuse the Respondent’s site with the Complainant’s.

The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:

(1) Despite the fact that the Respondent’s WHOIS record indicates that its name is “WSI” there is no evidence that the Respondent engages in a legitimate business under the WSI name. In fact the only use of the WSI name appears to be to divert consumers to a website which imitates the authorized WSI website, and the contents of which the Respondent has copied directly from the Complainant’s website

(2) The Respondent is collecting information from Internet users under false pretenses, and is not engaged in any bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.

The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:

(1) The Respondent registered the domain name at issue in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks, trade name and domain names as to the source of the Respondent’s website and services. See Policy, para. 4(b)(iv).

(2) The Respondent registered the domain name which is confusingly similar to the well-known WSI name, and as such was a willful and intentional bad faith attempt to profit from the WSI name.

Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.biz> namespace. Paragraph 4(a) of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and

C. The Respondent registered and is using the domain name in bad faith (Paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its marks “WSI Internet Consulting & Education” and “WSI ICE”. The Panel concludes that it has established rights in a trademark or service mark, sufficient for the purposes of paragraph 4(a)(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is merely the Complainant’s mark, together with the generic word “company” and the <.biz> top level domain signifier. By now it is well established that the TLD signifier does not change the meaning of the name. The generic suffix term “company” is unlikely to affect the understanding of the active part of the domain name—ie the “wsi” stem—especially since the Complainant uses the similar <wsicorporate.com> domain name to conduct its business. The Panel concludes that the domain name is, for the purposes of the Policy, confusingly similar to the Complainant’s marks.

The Complainant has shown that it has rights in a trademark, and that the domain name is confusingly similar to this mark. The Panel concludes therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, and the Respondent has made no assertions in response.

However, the Panel considers it both necessary and instructive to analyse whether any of the defences provided in Paragraph 4(c) of the Policy might apply. Paragraph 4(c) provides the following examples to the Respondent:

“(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.”

There is no evidence that any of the scenarios of Paragraph 4(c) apply here to the Respondent. The Respondent’s use of the domain name appears to be calculated to attract mistaken users who type the domain name into the address bar of web browsers, and think that they might be going to the Complainant’s website. The evidence is that the Respondent has adopted the same basic trade dress of the Complainant (inter alia) in an effort to confuse potential employees of the Complainant, and has in fact gained personal information from these prospective employees of the Complainant. The Respondent appears to be engaged in “phishing” for mistaken potential employees of the Complainant. Not only is this activity criminal, it is clear evidence that the Respondent has no legitimate interest in the domain name.

As a result the Panel concludes that, even having considered the possible application of Paragraph 4(c), the Respondent has no rights or legitimate interest in the domain name. The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The final issue is that of bad faith registration and use by the Respondents. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith. The actions of the Respondent clearly fall into the bad faith exemplar scenario outlined in paragraph 4(b)(iv) of the Policy, which reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

…

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.”

The evidence is that the Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy. As a result the activity is deemed to fulfil the bad faith use and registration requirements of paragraph 4(a)(iii).

The Panel therefore concludes that the Complainant has satisfied paragraph 4(a)(iii) 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, <wsicompany.biz> be transferred to the Complainant.

Dan Hunter
Sole Panelist

Date: February 21, 2005