The Complainant is Corcom, Inc. of Toronto, Canada, represented by Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, United States of America.
The Respondent is Jazette Enterprises Limited, of Gibraltar, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <donsbest.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2007. On August 20, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 20, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant rectified the administrative deficiency on September 10, 2007. 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 September 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2007.
The Center appointed John Swinson as the sole panelist in this matter on October 16, 2007. 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
In March 1997, the Complainant registered the domain name <donbest.com>. The website operated from this domain name provides real time sports information (such as information in relation to players, odds, injuries and scores) to its Internet subscribers.
The Complainant is a wholly-owned subsidiary of FUN Technologies Inc.
The Complainant has registered two trade marks over “DON BEST SPORTS” in the United States of America. These registrations disclaim the word “sports”.
The Respondent registered the disputed domain name <donsbest.com> on June 9, 1998. The disputed domain name currently does not resolve to a website.
The Respondent owns the domain name <sportsbook.com>, and the website at that domain name is a website that competes with the Complainant’s website at “www.donbest.com”.
5. Parties’ Contentions
A. Complainant
The Complainant filed a detailed and comprehensive Complaint, and makes the following submissions and arguments:
The disputed domain name comprises a name substantially similar to the trade name and service mark of the Complainant. The disputed domain name incorporates the dominant element of the Complainant’s DON BEST SPORTS mark (i.e. DON BEST), adding only an “s” between “don” and “best”.
The disputed domain name is so similar to the Complainant’s trademark that it is likely to cause confusion among the Complainant’s customers and the public.
The Respondent has no legitimate use for the domain name. The Respondent has not been authorised or licensed by the Complainant to use its DON BEST SPORTS mark. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the name “don best” or “dons best”.
The disputed domain name initially referred users to a site “www.sportsbook.com” which offered services related to sports and betting. The Complainant sent a letter to the Respondent on June 21, 2007, requesting that the Respondent discontinue its use of the disputed domain name and transfer it to the Complainant, and a follow up letter of July 19, 2007. No response to either letter was received, but since the first letter, the disputed domain name has no longer appeared as a live webpage.
The Respondent has chosen the disputed domain name in order to divert traffic from the Complainant’s business to its own.
It is inconceivable that the Respondent was not aware of the Complainant’s business when it chose the disputed domain name. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Respondent registered the disputed domain name in bad faith because the Respondent must have been aware of the goodwill in the DON BEST SPORTS mark.
The disputed domain name deliberately and misleadingly copies the main element of the Complainant’s mark and is substantially identical to it. The only inference available is that the disputed domain name was registered for the illegitimate purpose of attracting users to the Respondent’s site for financial gain through confusion with the Complainant’s mark. The public will be misled as to the origin, sponsorship or association of the information and services offered on the disputed domain name.
While the Respondent is not currently operating a website from the disputed domain name, such “passive holding” constitutes use of the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s submissions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant has registered the trademark and service mark of “DON BEST SPORTS” in the United States of America.
The Complainant has used the DON BEST name through its operation of the <donbest.com> website over the past 10 years. The branding on that website, at present, is “DONBEST.COM” in prominent strong bold letters.
The Panel finds that the Complainant has trademark rights in “DON BEST SPORTS” and “DONBEST”.
The next issue is whether the disputed domain name is identical, or confusingly similar, to the DON BEST SPORTS and DONBEST marks.
The differences between the Complainant’s DON BEST SPORTS mark and the disputed domain name are that an “s” has been added between “don” and “best” and the term “sports” has been omitted. It has previously been held that slight changes in name may be purposeful misspellings, ‘designed to take advantage of mistakes that consumers are likely to make when intending to enter Complaint’s web site address’ (see InfoSpace.com, Inc v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party WIPO Case No. D2000-1415).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s DON BEST SPORTS mark.
In addition, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s DONBEST mark. The addition of an “s” in the disputed domain name is a purposeful type of misspelling, particularly as an “s” is often added to words to denote a plural or ownership. This appears to be a case of “typo squatting” – conduct which creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark for the purposes of paragraph 4(a)(i) of the Policy.
The Panel finds that disputed domain name is therefore confusingly similar to the Complainant’s marks, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making a legitimate non-commercial 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.” (Policy, paragraph 4(c)).
For the purposes of paragraph 4(a)(ii) of the Policy, it is sufficient for the Complainant to show a prima facie case, after which the burden of proof is shifted onto the Respondent. However, as the Respondent has failed to respond to the Complaint or participate in these proceedings, the Panel has to decide the Complaint on the basis of the statements and documents submitted by the Complainant.
The Complainant has not granted the Respondent any license or other authorisation to use its trademarks in relation to the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent is not currently making any use, legitimate or otherwise, of the domain name for non-commercial activities.
The Complainant alleges that prior to June 21, 2007, the Respondent was using the disputed domain name to refer users to a website at “www.sportsbook.com”. The “www.sportsbook.com” website provides details on sports (such as odds, scores and statistics) and allows users to place bets on other gambling activities, such as horses, poker and other casino games. The <sportsbook.com> domain name is also currently registered in the name of the Respondent.
Thus, the Respondent operates a similar type of business to the Complainant, and was using the disputed domain name to deliberately take advantage of users’ confusion with the Complainant’s mark. In short, the Respondent was seeking to misleadingly divert customers who were looking for the Complainant’s website to its own competing website. This is not a legitimate use of the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent has, by not responding, failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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.
As discussed above, the disputed domain name is likely to be confused with the Complainant’s mark, due to the purposeful misspelling. As noted in Wachovia Corporation v. PeterCarrington,WIPO Case No. D2002-0775, “Misspellings alone are sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.”
It also appears likely that, at least at some stage, the Respondent was using the disputed domain name for commercial gain by referring users to its own “www.sportsbook.com” web site, which offers similar services to the Complainant. The Respondent is a competitor of the Complainant.
The Panel finds, based on the evidence presented, that the disputed domain name was registered with the intention of diverting users away from the Complainant’s business and to the Respondent’s competing business.
For the above reasons, the Panel finds that both paragraphs 4(b)(iii) and 4(b)(iv) are satisfied in this case and that the registration and use of the disputed domain name has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <donsbest.com> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: October 30, 2007
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