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Network Solutions, LLC v. NetworkSolutionz [2005] GENDND 509 (7 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Network Solutions, LLC v. NetworkSolutionz

Case No. D2005-0450

1. The Parties

The Complainant is Network Solutions, LLC, Herndon, Virginia, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo PC of Washington, DC, United States of America.

The Respondent is NetworkSolutionz, Pickering, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <networksolutionz.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on April 27, 2005, and in hardcopy on April 28, 2005. On April 27, 2005, the Center acknowledged receipt of the Complaint and transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 27, 2005, Tucows transmitted by email to the Center its verification response, confirming the registrant’s precise name 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 April 29, 2005. Pursuant to the Rules, paragraph 5(a), the due date for Response was May 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2005.

The Center appointed the undersigned as the sole panelist in this matter on May 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.

There is no controversy that English is the language of this Administrative Proceeding and the instant Decision for English is the language of the domain name registration agreement.

4. Factual Background

The Complainant, a Delaware limited liability company, provides a broad range of Internet and computer related services, including, domain name registrar services, electronic mail services, web hosting services and web site building services. Complainant is the first and largest registrar of domain names in the world.

Complainant has used since 1979, and most recently for over seven years through its associated website at www.networksolutions.com, the service mark “NETWORK SOLUTIONS”, for which it owns valid and subsisting US Federal Registrations Nos. 1,330,193 and 2,468,676 in international classes 35 and 42, covering a variety of computer network services. The “NETWORK SOLUTIONS” mark has also been registered or is being applied for in a number of countries.

Complainant spends millions of dollars per year to advertise and promote globally the “NETWORK SOLUTIONS” mark and the <networksolutions.com> domain name, and, as a result, the mark has widespread recognition in the United States, Canada and worldwide.

For its part, Respondent, -an unspecified entity-, registered the domain name that is the subject of this dispute on January 26, 2000.

Currently, the disputed domain name resolves to a website that displays a listing of poems or songs, which include lewd titles, such as “bored demoshit”.

Having found out about Respondent’s registration of the domain name at issue and noting the close resemblance between the disputed domain name and the protected trademark name of NETWORK SOLUTIONS, on February 9, 2004, counsel for Complainant wrote Respondent demanding that the latter cease and desist from using the mark in question and ultimately transfer the domain name that is the subject of this dispute. Following the unsatisfactory reply on the part of Mr. Michael Pietchsmann, the administrative and technical contact person for the domain name in issue, coupled with Mr. Pietchsmann’s lack of response to a subsequent letter sent by counsel for Complainant reiterating its original request, Complainant moved to commence the present proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant’s legal submissions can be summarized as follows:

i. The domain name at issue is confusingly similar to Complainant’s mark and domain name as the only difference between those signs is the replacement of the letter “s” with the letter “z” and such a de minimis divergence is insufficient to overcome a finding of confusing similarity in accordance with prior Policy decisions.

ii. Respondent has no rights or legitimate interests in respect of the disputed domain name for it has never been authorized by Complainant to use the mark “NETWORK SOLUTIONS” in any way, shape or form, much less as part of the disputed domain name <networksolutionz.com>

iii. Respondent is engaged in a practice commonly referred to as “typosquatting”, which involves the registration of common misspellings of famous marks and the diversion of Internet users who misspell famous marks for commercial gain. Typosquatting has been recognized by previous Panels as evidence of bad faith with regard to Policy 4(a)(iii).

iv. Respondent’s registration of the disputed domain name establishes that Respondent has intentionally registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant as set forth in section 4(b)(iii) of the Policy.

v. The only conclusion that can be drawn from the evidence is that Respondent has either intentionally registered the disputed domain name mainly for the purpose of disrupting the business of the Complainant or it has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

B. Respondent

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

6. Discussion and Findings

Preliminary

It is worth noting that even though Respondent’s failure to submit a Response does not automatically result in a decision in favor of the Complainant (as reflected in the recently published WIPO Overview of WIPO Panel Views on Selected UDRP Questions at para. 4.6), it is well established that the Panel may accept all reasonable and supported allegations and inferences in the Complaint as true. See Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint) and also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Case No.95095 (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

General

According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:

i. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

ii. The Respondent has no rights or legitimate interest in respect of the Domain Name; and

iii. The Domain Name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

On its face, it is evident that the domain name at issue is not only confusingly similar but virtually identical to Complainant’s mark and domain name as to sound, connotation, and commercial impression, for a mere replacement of a single letter with another one phonetically equivalent is too tenuous and insubstantial to detract from this conclusion. See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (holding that “essential” or “virtual” identity constitutes appropriate basis for the purposes of satisfying Policy para. 4 (a)(i)); Stella D’oro Biscuit Co., Inc. v. The Patron Group Inc., WIPO Case No. D2000-0012 (finding identity between <stelladoro.com> and STELLA D’ORO); AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (finding that the disputed domain name <atttwireless.com> is very similar to the AT&T WIRELESS group of marks in its visual impression and therefore, an Internet user or consumer viewing the disputed domain name is likely to confuse it with Complainant’s distinctive and well known marks); also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, published in “Collection of WIPO Domain Name Panel Decisions”, Eun-Joo Min and Mathias Lilleengen, eds., Kluwer Law International, The Netherlands, 2004, at p.140 (finding that in terms of sight and sound, the domain name <guiness.com> is virtually identical to the Complainant’s GUINNESS name and mark).

Accordingly, the Panel finds that the Complainant has proven the first threshold of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant denies to have ever authorized Respondent to use the mark “NETWORK SOLUTIONS” in any way, shape or form, much less as part of the disputed domain name.

In view of the foregoing and in concert with prior Policy decisions, the Panel is satisfied that the Complainant has shown prima facie evidence with respect to this element of the Policy, thus shifting the burden of proof on Respondent. Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; and Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467.

As a result, the Panel chooses to view Respondent’s failure to submit a Response to the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, on the assumed possibility that Respondent’s use of the domain name in question for the purposes of “storing (joke) music” (as stated in Respondent’s e-mail reply to Complainant’s initial communication) might constitute a right or legitimate interest within the meaning of Policy paras. 4(a)(ii) and 4(c), the Panel finds Respondent’s assertion to be disingenuous on this point, for given Complainant’s widespread recognition over the Internet, it can only be inferred that Respondent intentionally misspelled Complainant’s service mark and domain name by employing the letter “z” in place of the letter “s” contained in Complainant’s registered signs, thus incurring in the so-called practice of “typosquatting”, which deceptive behavior under no circumstance could it be regarded as a bona fide offering of goods or services, or a legitimate non-commercial or fair use of a domain name in the sense of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (finding that given the worldwide fame and notoriety of the mark GUINNESS, no trader would choose the domain name <guiness.com> unless to create a false impression of association with the Complainant or its beers; to attract business from the Complainant or misleadingly to divert the public from the Complainant to the Respondent.)

In sum, on the evidence and legal argument submitted, it is not apparent to this Panel that any of the defenses set forth in 4(c) of the Policy is available to Respondent.

As a result, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Complainant puts forward that Respondent is engaged in a practice commonly referred to as “typosquatting”, which has been recognized by previous Panels as evidence of bad faith with regard to Policy 4(a)(iii).

In effect, as defined in another case, typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Thus, in line with Complainant’s submission, the Panel notes the authority is legion under the Policy that “typosquatting is inherently parasitic and of 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; Nintendo of America Inc. v. Max Maximus, WIPO Case No.D2000-0588; Bank for International Settlements v. BIS, WIPO Case No.D2003-0986; and also Geocities v. Geociites.com, WIPO Case No. D2000-0326.

Additionally, for completeness, with regard to Complainant’s contention that Respondent has intentionally registered the disputed domain name primarily for the purpose of disrupting the former’s business, in acknowledging the wide meaning of the term “competitor” under Policy para. 4(b)(iii) as defined in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (a “competitor is one who acts in opposition to another and the context does not demand any restricted meaning such as commercial or business competitor”), the Panel determines that, in the present case, “the Respondent is ‘competing’ with the Complainant for the attention of internet users which it hopes to attract to its site” (Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406), thus falling under the bad faith scenario laid down by Policy para. 4(b)(iii).

The finding of bad faith is further reinforced in the instant case since all the evidence and legal argument tendered, when taken as a whole, leads the Panel to conclude that Respondent registered and has been using the contested domain name “for the (express) purpose of causing confusion with the Complainant and for the purpose of benefiting from that confusion”. Sydney Markets Limited v. Nick Rakis, trading as Shell Information Systems, WIPO Case No. D2001-0932.

Based on the above, the Panel holds that Policy 4(a)(iii) has been satisfied.

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 <networksolutionz.com> be transferred to the Complainant.

Reynaldo Urtiaga Escobar
Sole Panelist

Dated: June 7, 2005