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Network Solutions, LLC v. Lambright Publications [2005] GENDND 671 (6 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Network Solutions, LLC v. Lambright Publications

Case No. D2005-0455

1. The Parties

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

1.2 The Respondent is Lambright Publications, Wayne Lambright, San Francisco, California, United States of America.

2. The Domain Names and Registrar

2.1 The disputed domain names <networksoluition.com> and <networksoluitions.com> are registered with BulkRegister, LLC.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2005. On April 27, 2005, the Center transmitted by email to BulkRegister, LLC a request for registrar verification in connection with the domain names at issue. On April 28, 2005, BulkRegister, 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”).

3.2 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. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 19, 2005. The Response was filed with the Center on May 18, 2005.

3.3 The Center appointed Jay Simon 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.

3.4 Electronic copies of the Complaint and Response were forwarded to the Panelist on May 24, 2005. Hard copies of the Complaint and Response were sent by courier to the Panelist that same day.

4. Factual Background

4.1 Complainant is the first, and remains, the largest registrar of Internet domain names. Complainant avers that it spends millions of dollars each year to advertise the NETWORK SOLUTIONS mask, and provides a broad range of Internet and computer related products and services, including domain name registration, electronic mail services, web hosting services and website building services.

4.2 Complainant is the assignee of the entire interest and goodwill of Network Solutions, Inc. in the NETWORK SOLUTIONS marks. All trademarks of Network Solutions, Inc. were transferred and assigned to Complainant, the assignments being recorded in appropriate jurisdictions, e.g., in the United States Patent and Trademark Office for U.S. trademarks and service marks.

4.3 Thus, Complainant is the owner of U.S. trademarks, Reg. Nos. 1,330,193 (registered April 9, 1985 and claiming a first use in 1979) and 2,468,676 (registered July 17, 2001) as well as trademarks, service marks and applications therefore in a number of other countries. Complainant’s predecessor registered the domain name <networksolutions.com> on April 27, 1998.

4.4 Respondent registered the disputed domain names on November 4, 2000.

4.5 Complainant wrote to Respondent on July 7, 2004 demanding that Respondent cease and desist its use of the disputed domain names and that Respondent transfer the disputed domain names to Complainant. On August 31, 2004 counsel for Complainant sent a second letter to Respondent via electronic mail and courier service. Respondent did not respond to counsel’s letter (and presumably did not respond to Complainant’s earlier letter).

4.6 The disputed domain names resolve, as of the date of this decision, to Respondent’s website.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that it is the owner of a federally registered U.S. service mark as well as subsequently filed U.S. and foreign service marks and trademarks. Complainant further contends that it has developed, as a result of its registrations, promotional activities, and advertising, valuable goodwill and an outstanding reputation in its NETWORK SOLUTIONS mark and its corresponding domain name.

5.2 Complainant contends that each of the disputed domain names is virtually identical to the mark in which Complainant has rights and that therefore, the disputed domain names are confusingly similar to Complainant’s mark.

5.3 Complainant further contends that the difference between its mark and each of the domain names - - both include an additional “i” and one omits the letter ”s” - - is de minimus.

5.4 Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names, is not a licensee of Complainant and Complainant never authorized Respondent to use, in any way, shape, or form Complainant’s mark NETWORK SOLUTIONS.

5.5 Complainant contends that each of the disputed domain names has been registered and used in bad faith, and that Respondent is engaged in a practice commonly known as “typo squatting”; involving the registration of common misspellings of famous marks for the purpose of diverting Internet users to a respondent’s site for commercial gain.

5.6 Complainant further contends that neither of the disputed domain names resolve to an active website and that Respondent intentionally registered the disputed domain names primarily for the purpose of disrupting Complainant’s business.

5.7 Complainant contends that, as of the date of the Complaint, the disputed domain names did not resolve to an active website.

5.8 Complainant contends that both of the disputed domain names should be transferred to Complainant.

B. Respondent

5.9 Respondent filed a response in which it contended that “soluitions” is how Respondent spells the word and that Respondent also spells it with “soul” as in “soulutions”.

5.10 Respondent contends that the Complaint is in error in stating that the disputed domain names are identical and that they are not identical (presumably to Complainant’s mark).

5.11 Respondent further contends that it is using disputed domain names for fair and legitimate purposes; has a right to run its business which is the design of networks and hardware; that Respondent does not compete with Complainant; and that Complainant is a multimillion-dollar corporation trying to strong arm a small business owner, and that Complainant’s claims are not factual and have no legal grounds.

5.12 The remainder of the Response appears to be a copy of the model response and no other evidence, assertions, or arguments are put forth by Respondent.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain names; and

(c) the domain names have been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element of Paragraph 6.1.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.3 There are small differences between each of the disputed domain names and Complainant’s mark. In one case, the difference is the addition of the letter “i” in the domain name, and in the other the addition of the letter “i” and the omission of the letter “s”. The WIPO files contain a plethora of cases in which one or two letters have been added to, or deleted from, a mark in which another has rights. These cases are usually lumped under the heading of “typo squatting”, a practice where a known mark is intentionally misspelled for the purpose of attracting unwary Internet users (and poor typists) to a particular website for pecuniary gain.

6.4 Whether Respondent’s actions in registering the disputed domain names meet the definition of typo squatting depends on the evidence adduced in these proceedings, since one can rarely know the mind of another. Here, however, the disputed domain names differ only slightly, i.e., one or two letters added or deleted, an earlier registered service mark of Complainant that brings, at the least, constructive notice of the mark, a claim of first use of Complainant’s mark in 1979, the registration by Complainant of <networksolutions.com> in 1998, Respondent’s later registration of the disputed domain names, and the fact that Respondent offers computer related services regarding network and hardware design (in the same area as Complainant’s services).

6.5 Respondent’s argument that the disputed domain names are not identical is true. But that is not the issue: the issue under Paragraph 4(a)(i) of the Policy is whether the disputed domain names are identical or confusingly similar to a mark in which Complainant has rights. Complainant has rights in its mark NETWORK SOLUTIONS, and the differences between the disputed domain names and Complainant’s mark are insufficient to render the disputed domain names sufficiently different so that they are not confusingly similar to Complainant’s mark.

6.6 This Panel finds that the disputed domain names are confusingly similar to Complainant’s well known mark. The differences do not change the overall impression of the mark and make the disputed domain names confusingly similar to Complainant’s mark. See Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675; the Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492, and United Airlines, Inc. v. UnitedAirline Dot Com, WIPO Case No. D2002-0835.

6.7 The preponderance of the evidence suggests that Respondent, in registering the disputed domain names, is typo squatting and has intentionally registered the disputed domain names for the purpose of disrupting Complainant’s business, or at the least, diverting Internet users to Respondent’s website for Respondent’s pecuniary gain.

6.8 The only evidence in Respondent’s favor is the elapsed time between Respondent’s registration of the disputed domain names and Complainant’s first cease and desist letter. While a complainant needs to be vigilant in protecting its mark, this time lapse is not sufficient to outweigh the evidence presented by Complainant.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.9 Paragraph 4 (c) of the Policy lists three non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name. To do so requires a respondent to come forward with evidence supporting its rights or legitimate interests. Respondent has failed to present any evidence regarding rights or legitimate interests it may have in the disputed domain names and Respondent has failed to rebut any evidence or assertions made by Complainant.

6.10 Complainant asserts that Respondent has not been authorized to use Complainant’s mark in any way, shape, or form. This assertion is uncontested by Respondent and, therefore, is deemed true and factual. Further, Respondent has shown no evidence that it was commonly known by either of the disputed domain names, and Respondent made no use of the disputed domain names prior to Complainant’s registration of its mark or Complainant’s registration of its domain name.

6.11 Respondent’s use of the disputed domain names prior to institution of these proceeding does not amount to a bona fide or fair use of those names. Respondent’s use of the disputed domain names is for its financial gain. Further, typo squatting does not constitute a bona fide offering of goods or services, whatever the goods or services may be, since it is a means of redirecting Internet users against their will to another site. See National Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccariui, WIPO Case No. D2002-1011; Matchnet plc. V. MacTrading, WIPO Case No. D2000-0205.

6.12 This Panel finds that Respondent has no rights or legitimate interest in either of the disputed domain names.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.13 Paragraph 4(b) of the Policy indicates several non-exclusive indicia of bad faith registration and use of domain names. Paragraphs 4(b)(iii) and 4(b)(iv) are pertinent to these proceedings. To the extent that the disputed domain names did not resolve to an active website, the only conclusion that can be drawn by this Panel is that the disputed domain names were registered for the purpose of disrupting Complainant’s business. To the extent the disputed domain names resolved to Respondent’s website, it was for the purpose of confusing the Internet user into believing that Respondent was somehow related to, associated with, or endorsed by Complainant, for the commercial gain of Respondent. Further, typo squatting has been recognized in and of itself as registration and use in bad faith. See Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675, National Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

6.14 Respondent argues that it has the right to conduct business under its own name, and Respondent has that right except when the name chosen by Respondent is confusingly similar to a federally registered and well known mark in which Complainant has rights, Respondent cannot show it has rights in either of the disputed domain names, and when Respondent is seeking commercial gain by intentionally attempting to attract Internet users to a website that has no disclaimer and for all intents and purposes suggests some relationship, association with, or endorsement by Complainant.

7. Decision

7.1 For all of the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain names <networksoluition.com> and <networksoluitions.com> be transferred to the Complainant.

Jay Simon
Sole Panelist

Dated: June 6, 2005