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Newcastle Permananent Building Society Limited v. LaPorte Holdings [2005] GENDND 565 (21 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newcastle Permananent Building Society Limited v. LaPorte Holdings

Case No. D2005-0511

1. The Parties

The Complainant is Newcastle Permananent Building Society Limited, Newcastle, Australia, represented by Mallesons Stephen Jaques, Australia.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <newcastlepermanant.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2005. On May 11, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On May 13, 2005, NameKing.com transmitted by email to the Center its verification response confirming that it had received the Complaint and locked 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 May 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2005.

The Center appointed David A. R. Williams QC as the sole panelist in this matter on June 30, 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

The Complaint asserted, and provided evidence in support of the following facts. The Panel finds these facts established.

Complainant’s Trademarks

The Complainant is the owner in Australia of a registered trademark for THE “NEWCASTLE PERMANENT BUSINESS BANKING” device. This trademark was first registered on August 3, 2000. The trademark is in respect of service in class 36, building society services being insurance services and financial services in this class; including business banking services. Attached as Annex 3 to the Complaint are details listing the Complainant’s trademark in Australia.

Complainant’s Activities

The Complainant stated that it is extremely well known in the Australian community as a leading supplier of banking and other financial services. It presently has approximately 347,000 customers, located throughout Australia. Complainant has been using the name “Newcastle Permanent” since 1963, either as a word logo or as part of the “Newcastle Permanent” device.

The Complainant has an active presence on the Internet. It is the registered owner of, and uses, the following Internet domain names <newcastlepermanent.com.au>, <newcastlepermanent.biz>, <newcastlepermanent.net.au> and <newcastlepermanent.com>. Through these domain names, customers worldwide are able to access Complainant’s website to access information about the Complainant and its products and services, and carry out banking online.

Respondent’s Activities

The domain name <newcastlepermanant.com> was registered on August 12, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant submits that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name.

In relation to element (i) of paragraph 4(a), the Complainant submits that the domain name is confusingly similar to “Newcastle Permanent”, the name by which the Complainant has been known since at least 1970, and in which the Complainant has built up a significant measure of goodwill. The “Newcastle Permanent” name functions as a trademark.

In relation to element (ii) of paragraph 4(a), the Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not known by the domain name, and has not acquired any rights to, or interests in, the “NEWCASTLE PERMANENT” mark. The Complainant has not licensed or otherwise permitted the Respondent to use the “Newcastle Permanent” name or any variation of it, or to apply for or use any domain name incorporating the “Newcastle Permanent” name or any variation of it.

The Complainant submits that the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods and services. The Complainant contends that the Respondent is using the domain name for the purpose of redirecting visitors to other websites, which are in direct competition with the products and services offered by the Complainant.

In relation to element (iii) of paragraph 4(a), the Complainant submits that the domain name was registered in bad faith and with the intention of causing confusion with the Complainant’s registered trademark and domain names, and in an attempt to divert Internet traffic otherwise rightfully bound for the Complainant.

Complainant submits that the Respondent’s bad faith is evidenced by Complainant’s strong reputation in the “Newcastle Permanent” name. No bona fide purpose can be attributed to the Respondent’s choice of registering and using a domain name that incorporates a common typing mistake. Respondent’s website is set up with the appearance of an online banking website, which is further evidence that the Respondent is engaging in a bad faith scheme to divert traffic from the Complainant’s website. Setting up its website to appear like an online banking website exacerbates the harm to the Complainant and the public as it increases the misleading and deceptive nature of the Respondent’s use of the disputed domain name. There is evidence that the Respondent is systematically involved in this behaviour.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent has not replied to any correspondence from the Center. The Panel notes paragraph 5(e) of the Rules, which states, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.”

6. Discussion and Findings

To succeed in its request for the transfer of the disputed domain name, the Complainant must establish, that with respect to the domain name in question, that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent and registrant of the domain name 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.

These matters are dealt with consecutively.

A. Identical or Confusingly Similar

The Complainant has alleged that the disputed domain name is confusingly similar to its “NEWCASTLE PERMANENT BUSINESS BANKING” trademark or alternatively its “Newcastle Permanent” name.

The disputed domain name <newcastlepermanant.com> is substantially similar to the Complainant’s name “Newcastle Permanent”. The only difference is a slight change of spelling by replacing the vowel “e” in the name with an “a” in the domain name. Such misspellings are adequate grounds for finding confusing similarity. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441 (order transferring domain names <reters.com>, <reuers.com>, <reutersnews.com>, <ruters.com>, and <wwwreuters.com>).

Further, the Panel does not doubt the Respondent is engaging in “typosquatting”, an undertaking that attempts to benefit from the typographical errors of the Complainant’s consumers by registering a domain name extremely similar to the Complainant’s mark or name. This practice has been considered and unequivocally condemned in a number of cases. (See: Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party, WIPO Case No. D2001-0224). The failure of the Respondent to refute the allegation can only lead to the conclusion that the Respondent intended to register the domain name for the very reason that it is confusingly similar to the Complainant’s trademark and name.

The disputed domain name contains a part of the Complainant’s registered trademark. The Panel considers that an abbreviation of a registered mark incorporated into a domain name may constitute confusing similarity (See Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656). The Panel is satisfied that the Complainant’s use of the “Newcastle Permanent” name over a period of more than 40 years and its use of the phrase “newcastlepermanent” in four domain names demonstrates that the Complainant has an interest in that phrase.

The Panel finds that the domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has filed no response to the Complaint, and so has made no assertion of interest in the disputed domain name as provided for in paragraph 4(c) of the Policy. The failure to file a Response or to otherwise assert any such rights or interests leads to a presumption the Respondent is unable to establish any such rights or interests. (See Cornell Trading, Inc. v. Web-Interactive.com Inc., WIPO Case No. D2000-0887; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004). As stated by the panel in Cornell Trading, the burden of proof shifts where the Complainant presents a prima facie showing, as has occurred in the instant case.

Complainant has submitted that the Respondent has no rights or legitimate interests in the “NATIONAL PERMANENT” mark. The Respondent is not known by the disputed domain name. The Complainant has not granted any license or authority to use the “National Permanent” name.

Complainant submits that the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods and services. In fact, the Respondent is using the domain name for the purpose of redirecting visitors to other sites, which are in direct competition with the products and services offered by the Complainant. The Complainant refers to the case of Société des Hotels Méridien v. LaPorte Holdings Inc., WIPO Case No. D2004-0849 (involving the same Respondent) where it was stated that “the use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.”

The Respondent’s conduct in using a common misspelling of the Complainant’s trademark to redirect Internet traffic to a competing website, is done with the intention of misleading consumers for the purpose of commercial gain. There is no other inference that can be drawn from the use of the disputed domain name, given the lack of any connection between the Respondent and the disputed domain name. This is not a legitimate non-commercial or fair use of the domain name pursuant to paragraph 4(c)(iii) of the Policy.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, if found by the Panel to be present, the following activities undertaken by the Respondent 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 websites 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 websites or location or of a product or service on your website or location.”

Complainant has submitted that the disputed domain name diverts visitors to a website set up by the Respondent that has the appearance of an online banking website. The conduct of Respondent strongly suggests a deliberate attempt to divert traffic from Complainant’s website for the Respondent’s commercial gain and to the detriment of the Complainant by creating just such a likelihood of confusion. Such conduct is persuasive evidence of bad faith. See VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.

Complainant submits that no bona fide purpose can be attributed to the Respondent’s choice of registering and using a domain name that incorporates a common typing mistake. The Complainant refers to Medco Health Solutions, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800, as an example of another WIPO UDRP decision that has held that “typosquatting” evidences an intent to deceive the public and constitutes bad faith.

In addition, the Complainant refers to a number of other UDRP cases involving the Respondent as evidence that the Respondent is systematically involved in this behaviour.

The redirection of Internet traffic to the Respondent’s website based on the misspelling of the Complainant’s trademark is for the Respondent’s commercial gain. This is a bad faith use of the disputed domain name. The Respondent’s bad faith is reinforced by the sequence of similar cases involving the Respondent that have been decided by UDRP panels.

The Panel finds that the domain name has been registered and used 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 name, <newcastlepermanant.com>, be transferred to the Complainant.

David A. R. Williams QC
Sole Panelist

Date: July 21, 2005