Gateway U.S. Retail, Inc. v. Texas International Property Associates Case No. D2008-1821
1. The Parties The Complainant is Gateway U.S. Retail, Inc., Irvine, California, United States of America (“United States” or “U.S.”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States.
The Respondent is Texas International Property Associates, Dallas, Texas, United States, represented by Law Office of Gary Wayne Tucker, United States.
2. The Domain Names and Registrar The disputed domain names , , , and are registered with Compana LLC d/b/a Budgetnames.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2008. On November 26, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain names. On November 26, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. The Response was filed with the Center on December 30, 2008.
On February 13, 2009, the proceeding was suspended. On February 19, 2009, Complainant requested the immediate lifting of the suspension and establishment of a panel. On February 24, 2009, the proceeding was recommenced.
The Center appointed Howard E. Poliner as the sole panelist in this matter on March 10, 2009. 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 Complainant asserted, and provided evidence in support of, and the Adminstrative Panel finds established, the following facts.
The Complainant is a publicly traded manufacturer and distributor of personal computers and related products and services, operating in several countries with annual sales exceeding hundreds of millions of dollars (US). In addition, Complainant maintains a significant Internet presence through its web site at . Complainant has been operating this web site since at least 2001 and has continually marketed products and services under the brand EMACHINES since at least 1998.
Complainant owns the following United States trademark registrations:
U.S. Registration Nos. 1,758,158 for E-MACHINES in international class 9. The mark was registered on March 16, 1993 and first use was indicated as of August 5, 1986.
U.S. Registration Nos. 2,655,372 for EMACHINES in international class 9. The mark was registered on December 3, 2002 and first use was indicated as of 1998.
Respondent registered the disputed domain names on December 23, 2004 on January 4, 2005, on November 27, 2004, on January 10, 2005 and on December 10, 2004.
5. Parties’ Contentions A. Complainant The Complainant alleges that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute and requests that the disputed domain names be transferred to Complainant. In relation to element (i), the Complaint asserts that the disputed domain names are confusingly similar to its EMACHINES and
E-MACHINES registered marks and to its domain name in so far as they are deliberate simulations, by way of slight misspellings (i.e. “typo-squatting”) of Complainant’s marks and domain name.
In relation to element (ii), Complainant asserts that Respondent has asserted no rights or legitimate interest in the disputed domain names, nor has Complainant licensed or otherwise permitted Respondent to use its aforesaid marks or to apply for or use any domain name incorporating said marks. Respondent does not deal in goods or services that bear the mark, but rather uses misspelling of the marks in order to divert web traffic to its landing pages. Additionally, Complainant alleges that Respondent had constructive and actual notice of its marks and domain at the time it registered the disputed domain names due to the then extant renown of Complainant’s mark, the existence of its trademark registrations which predate the disputed domain names by several years and that Respondent’s web pages make reference to products bearing the Complainant’s marks.
In relation to element (iii), Complainant asserts that the disputed domain names were registered and are being used in bad faith in so far as the disputed domain names resolve to landing pages containing links to websites belonging to Complainant’s competitors for the purpose of diverting unsuspecting web traffic from Complainant’s web site to those of its competitors. Complainant further asserts that Respondent is a serial typo-squatter with numerous past panels having determined that Respondent has registered domain names which were intentional misspellings of others’ trademarks in an effort to unfairly divert legitimate web traffic.
B. Respondent Respondent through its Response stated that it “agrees to the relief requested by the Complainant” and requests the Panel to “order the immediate transfer of the disputed domain name.” Respondent, however, asserts that the offer to transfer the disputed domain names is not an admission to the three elements of Section 4(a) of the Policy, but rather a “unilateral consent to transfer.” Respondent requests “the opportunity to prepare a more formal response” should the Panel determine to proceed to the merits.
6. Discussion and Findings The Panel must first address Respondent’s request to issue an immediate transfer of the domain names without reaching the merits of the Complaint or in the alternative to provide Respondent further opportunity to respond on the merits if the request to issue an immediate transfer is denied. The Panel declines both requests.
The Panel has a duty to examine the record set before it to ensure the Complainant has established the three elements set forth in paragraph 4(a) of the Policy. Even in cases where a respondent fails to file a response, a panel may not blindly grant the relief requested by the complainant: “The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a).” The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002 1064.
Here, the Respondent did not default. It filed a Response. Though Respondent does not admit that Complainant has met its burden of proof, Respondent does consent to the Complainant’s requested relief. Complainant has not waived its right to a decision on the merits, nor consented to Respondent’s request for an order of transfer without a decision on the merits. The Panel has the discretion, in these circumstances, to either grant or deny the Respondent’s request to transfer the disputed domain name without engaging in any substantive analysis. See Rule 10(a) (“The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.”); Rule 15(a) (“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”). Despite an apparent consent by the Respondent to agree to transfer the disputed domain names prior to the establishment of a panel, that offer was never honored and the record reflects an email from Respondent’s counsel dated February 18, 2009 indicating that Respondent “would prefer that the proceeding follow through to the decision phase” effectively withdrawing an offer to transfer the disputed domain names prior to the establishment of a panel.
Had Respondent truly wished to avoid any adverse findings, it could have done what it said it would do namely transfer the disputed domain name to Complainant before this matter reached the Panel. See, Schering-Plough Corporation v. Texas International Property Associates, WIPO Case No. D2008-1557. Accordingly, Respondent’s request for an immediate transfer without deliberation on the merits is denied. Additionally, Respondent’s request for a further opportunity to respond on the merits is denied. Respondent has had its opportunity to contest the Complainant’s proofs and should have done so in its Response.
Turning to the merits, under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and is being used in bad faith.
Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003 0185.
A. Identical or Confusingly Similar
Each of the disputed domain names is nearly identical with Complainant’s marks
E-MACHINES and EMACHINES, but for slight misspellings such that each disputed domain name retains visual and phonetic elements that are nearly identical with the Complainant’s marks. Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks and that Complainant has established the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by respondent, shall be evidence of respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to respondent, respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is 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.
The Complainant has made a prima facie showing of a lack of Respondent’s rights or legitimate interests. The Response makes no effort to demonstrate any rights or legitimate interests in the disputed domain names. The disputed domain names were registered many years after Complainant had established its common law rights and registered trademark rights in the EMACHINE and E-MACHINE marks. The Panel accepts Complainant’s assertion that the Respondent had actual or constructive knowledge of Complainant’s marks at the time it registered the disputed domain names given the renown of the marks and the use of said marks many years prior to registration of the disputed domain names.
Accordingly, and also taking into account the use of the disputed domain names as explained below under Bad Faith, the Panel finds that Complainant has established the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line locations, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or locations or of a product.
The disputed domain names resolve to landing pages showing numerous links to websites offering personal computer products and services in competition with Complainant. The slight misspelling of Complainant’s marks in the disputed domain names evidences intent to trade upon the goodwill and reputation of Complainant’s mark through what is commonly known as “typosquatting” a practice involving the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on web surfers who make common typing errors. See, National Association of Professional Baseball Leagues, Inc., d/b/a/ Minor League Baseball v. John Zuccarini, WIPO Case No. D2002 1011; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444. Respondent has offered no justification for registration and use of domain names containing misspellings of the Complainant’s marks.
The Panel finds that Respondent is engaging in bad faith “typo-squatting” by using the disputed domain names to intentionally divert consumers looking for Complainant’s products and services to web sites containing competing products and services, presumably for its own benefit, in violation of paragraph 4(b)(iv) of the Policy. Such use is not bona fide and evidences Respondent’s bad faith attempt to trade on Complainant’s marks. See, Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003 0716 (holding that respondent’s use of typo in the domain name to attract complainaint’s consumers to his website for commercial gain was bad faith use).
Accordingly, the Panel finds that Complainant has established the third and final element in paragraph 4(a) 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 names, , , , and be transferred to the Complainant.