The Complainant is Wilmington Trust Company, Wilmington, Delaware, United States of America, represented by Cozen O’Connor, United States of America.
The Respondent is Joey PP, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name
<wilmingtotrust.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. On May 26, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 26, 2006, Go Daddy Software 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”).
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 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2006.
The Center appointed Daniel J. Gervais as the sole
panelist in this matter on June 27, 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
The Complainant owns the United States trademark WILMINGTON
TRUST, registered in the United States Patent and Trademark office since at
least 2003 in relation with banking and financial services. The domain name
consists of that mark followed by the top-level “.com” but without
the final “n” in “Wilmington.”
5. Parties’ Contentions
>A. Complainant
The Respondent’s domain name is effectively identical to the Complainant’s WILMINGTON TRUST trademark. The domain name is a one letter misspelling of the Complainant’s registered trademark, and is likely to cause confusion, mistake or deception among the trade and public. The Respondent registered the domain names after the Complainant received its U.S. federal registration for its WILMINGTON TRUST mark, and long after use of the mark by the Complainant by way of extensive sales of the Complainant’s services under the WILMINGTON TRUST mark. An Internet user that mistakenly types in the domain name is directed to a website that provides links to financial institutions in direct competition with the Complainant.
The Respondent has no legitimate commercial or private interest thereto in the WILMINGTON TRUST trademark or related domain names. The Respondent is not known by the domain name, nor is it known for any services it provides under this domain name.
It is clear that the Respondent is attempting to take commercial advantage of the Complainant’s trademark, goodwill and commercial reputation. The Respondent’s adoption and use of the domain name is in bad faith, has continued with full knowledge of the Complainant’s prior rights, and is a willful infringement of the Complainant’s prior rights. The Respondent is using the misspelling of the Complainant’s trademark for its own commercial gain, by diverting Internet users to its search engine web site featuring links to the websites of other financial institutions websites in direct competition with the Complainant’s business in order to receive compensation for directing a user to such a website. Accordingly, the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark and domain names.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.
On the first point, the record clearly shows that Complainant has rights in the WILMINGTON TRUST mark.
On the second point, the Panel agrees with the Complainant’s contention that a minor difference in spelling has no trademark significance and that this is most likely a case of typo-squatting.
Given the similarity between the services offered by the Complainant under the WILMINGTON TRUST mark and those offered on the site to which the Domain Name resolves, the Respondent’s registration and use of the Domain Name may create a likelihood of confusion among consumers.
The Panel thus finds that the Complainant has rights in the WILMINGTON TRUST mark, and that the Domain Name is confusingly similar to such mark.
6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name?
The Complainants submits that the Respondent has no rights or legitimate interests in the Domain Name based on the Complainant’s prior use of the WILMINGTON TRUST marks and was never authorized to use Respondent’s marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the Domain Name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There is no evidence that
the Respondent has made any bona fide offering of goods or services under the
name WILMINGTON TRUST, and the Complainant contends that the Respondent is not
commonly known by the Domain Name. There is no evidence that the Respondent
is making a legitimate noncommercial or fair use of the Domain Name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Is There Evidence of Registration and Use of the Domain Name 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 a domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name 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) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site 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 the Respondent’s web site or location or of a product.
The Complainant must prove that the Domain Name was both registered and used in bad faith. This is a case of typo-squatting.
The Respondent’s use of the Domain Name clearly demonstrates an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship affiliation or endorsement of the registrant’s website. According to Paragraph 4(b)(iv) of the Policy, that in itself constitutes evidence of bad faith registration and bad faith use.
In light of the above,
the Panel finds that the Domain Name was registered and is being 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 <wilmingtotrust.com> be transferred to the Complainant.
Daniel J. Gervais
Sole Panelist
Dated: July 5, 2006
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