Bits & Pieces Inc. d/b/a Bits and Pieces v. LaPorte Holdings, Inc.
Case No. D2006-0244
1. The Parties
The Complainant is Bits & Pieces Inc. d/b/a Bits and Pieces, Allston, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is LaPorte Holdings, Inc., Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bitesandpieces.com> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2006. On February 28, 2006, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the Domain Name at issue. On February 28 and March 15, 2006, NameKing.com transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On March 15, 2006, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 20, 2006. The Center verified that the Complaint together with the amendment to 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 March 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2006.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 24, 2006. 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
Complainant is the owner of United States Federal Trademark Registration No. 1707502 issued August 11, 1992, for the mark BITS AND PIECES with an alleged date of first use in commerce of October 3, 1983.
Complainant alleges that it has substantially, continuously and exclusively used the mark BITS AND PIECES, or a slight variation thereof such as BITS & PIECES, in connection with its business.
Complainant registered its <bitsandpieces.com> domain name on or about December 27, 1995, and has operated a website at “www.bitsandpieces.com” since at least as early as January 1999, in order to advertise, promote and sell its jigsaw puzzles, toys, brain teasers, games, gift items, dolls, coin banks, novelties, novelty lighting and related items, to allow consumers to order its catalog, and to communicate special events and promotions to its customers, provide customer service information and permit customers to sign-up for Complainant’s e-mail newsletter.
Respondent registered the Domain Name at issue on December 15, 2003.
Respondent’s website as of February 15, 2006 (the date appearing on a printout of the website in Complainant’s Exhibit G) was a portal website providing links to competing third party websites.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Domain Name is virtually identical to, and is confusingly similar to, Complainant’s BITS AND PIECES registered mark and Complainant’s <bitsandpieces.com> Domain Name except for the addition of the letter “e” to the word “bits” in Complainant’s registered mark BITS AND PIECES. Respondent has engaged in “typosquatting.”
Rights or Legitimate Interests
Respondent has no rights or legitimate interest with respect to Complainant’s registered mark BITS AND PIECES or the <bitesandpieces.com> Domain Name. The Domain Name does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent. Respondent did not, prior to notice of this dispute, use the Domain Name or a trademark corresponding to the Domain Name, in connection with a bona fide offering of goods or services. Respondent has not made a bona fide non-commercial or fair use of the Domain Name.
Respondent is using the Domain Name to divert Internet traffic to its portal website that provides hyperlinks to websites of Complainant’s competitors or websites which provide advertisements for or links to Complainant’s competitors. The use of a confusingly similar domain name to divert Internet users to competitor’s websites is neither a use in connection with a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
Numerous Panels have found that Respondent’s registration and use of domain names containing the well known trademarks or mispellings of trademarks of others for similar purposes does not constitute a bona fide offering of goods or services nor is it a legitimate non-commercial or fair use.
Complainant has not authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainant’s registered mark BITS AND PIECES or any confusingly similar variation thereof.
Registered and Used in Bad Faith
Respondent registered and is using the Domain Name in bad faith primarily for the purpose of intentionally attracting, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s web site.
At Respondent’s “www.bitesandpieces.com” website consumers looking for Complainant and its BITS AND PIECES branded puzzles, brain teasers and related products are faced with hyperlinks to several third party websites that offer competing products. This re-direction is solely for the purpose of achieving commercial gain which has been found by many other Panels to constitute bad faith registration and use.
Further evidence of Respondent’s bad faith use and registration of the Domain Name is Respondent’s registration of over one hundred and fifty domain names containing the famous or well known trademarks, or misspelling of trademarks, of others. Respondent used these domain names in the same manner as Complainant’s domain name -- to link consumers looking for the trademark owner to the websites of their competitors -- all for financial gain. Respondent’s pattern of registering domain names containing the trademarks of third parties and then using such domain names to direct Internet traffic to competing websites from which he derives a financial benefit, has been well documented by several other WIPO Panels.
Since Respondent’s Domain Name contains a common misspelling of Complainant’s BITS AND PIECES registered mark and provides links to Complainant’s competitors, it can be inferred that Respondent had actual knowledge of Complainant’s rights in its BITS AND PIECES registered mark when it registered its <bitesandpieces.com> Domain Name.
The mere act of “typosquatting,” or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of bad faith registration and use.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Respondent did not timely respond to Complainant’s contentions.
Even though the Center gave Respondent sufficient notice under Rules, paragraph 2(a), Respondent has not responded to the Complaint. Where Respondent does not respond to the complaint, the Panel shall decide the dispute based upon the complaint. Policy, paragraph 4(a); Rules, paragraph 5(e), paragraph 14(a). The complaint is to be decided on the basis of the statements and documents submitted. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate.” See Brown Thomas & Company Limited v. Domain Reservations, WIPO Case No. D2001-0592 (Lack of response could be enough to find for Complainant.).
A. Identical or Confusingly Similar
Complainant is the owner of United States Federal Trademark Registration No. 1707502 issued August 11, 1992, for the mark BITS AND PIECES which Complainant states has been used continuously since 1983. The Panel finds that Complainant has rights in the trademark BITS AND PIECES.
As to whether the Domain Name is identical or confusingly similar to Complainant’s trademark, the Panel finds that the Domain Name at issue is confusingly similar to Complainant’s registered trademark because it incorporates Complainant’s entire trademark with only the addition of the single letter “e” and the generic top-level domain “.com”. The addition of the generic top-level domain “.com” is without legal significance when comparing the domain name at issue to Complainant’s registered trademark. The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance”.) Further, the addition of the letter “e” in the disputed Domain Name <bitesandpieces.com> represents typosquatting. This close misspelling renders the Domain Name confusingly similar to Complainant’s trademark. Alta Vista Company. v. Yomtobian, WIPO Case No. D2000-0937 (domain names <altabista.com> and <altaista.com> are confusingly similar to the trademark ALTA VISTA).
B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent has no rights or legitimate interest in the Domain Name. Respondent did not respond to the Complaint. Based on the case file, the Panel finds that Respondent has no rights or legitimate interest in respect of the challenged Domain Name as there is no evidence to the contrary.
Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the challenged Domain Name in bad faith. Complainant’s allegations of bad faith are not contested. Respondent was on notice of Complainant’s trademark rights when it registered the Domain Name that is the subject of this Complaint. The Panel accepts Complainant’s uncontradicted assertion that Respondent intentionally attempted (for commercial gain) to attract Internet users to the Respondent’s web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of the products or services on Respondent’s web site. Manifest typosquatting is sufficient to support and inference of bad faith shifting the burden to respondent to offer contrary evidence. “The act of ‘typosquatting’ or registering a domain name that is a common misspelling of a mark in which the party has rights has often been recognized as evidence of bad faith registration and use.” RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190; Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107; National Association ofProfessional Baseball Leagues, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.
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, <bitesandpieces.com> be transferred to the Complainant.
Lawrence K. Nodine Sole Panelist
Dated: May 8, 2006
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