Specialized Bicycle Components, Inc. v. Nadeem Qadir
Case No. D2007-1500
1. The Parties
Complainant is Specialized Bicycle Components, Inc. of Morgan Hill, California, United States of America, represented by DLA Piper US LLP, United States of America.
Respondent is Nadeem Qadir of Dhaka, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <specilized.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2007. On October 12, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 12, 2007, eNom 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 12, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a Californian corporation which was founded in 1974 and designs and manufactures a complete line of high performance bicycles as well as bicycle components, accessories, clothing and shoes, all of which are well-known.
The Complainant owns rights in the trade name, trademark and service mark SPECIALIZED for bicycles as well as goods and services related to bicycles, used as early as 1974, inter alia:
- U.S. trademark no. 1,378,009 SPECIALIZED registered on January 14, 1986 for bicycle accessories; and
- U.S. trademark no. 1,529,532 SPECIALIZED registered on March 14, 1989 for bicycle helmets; and
- U.S. trademark no. 3,293,615 SPECIALIZED registered on September 18, 2007 for bicycles and bicycle accessories
(the “SPECIALIZED Marks”).
The disputed domain name was first registered on December 5, 2000. It was used to redirect users to the website of a company called Performance Bicycle, a mail order and retail company with shops located all over the United States of America that does not offer the Complainant’s products.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(1) The domain name <specilized.com> is confusingly similar to the famous SPECIALIZED Marks of the Complainant, as the Respondent simply uses a virtually identical misspelling and typographically incorrect version of the Complainant’s marks (merely dropping the letter “a” from its middle), thereby intending to confuse Internet users and to lure them to the Respondent’s website, where third parties’ products in direct competition with the Complainant’s products are sold.
(2) The Respondent has no relationship with or authorization by the Complainant to use the SPECIALIZED Marks, nor is the Respondent affiliated with the Complainant. Furthermore, the Respondent is not commonly known by the domain name and his use of the domain name does not constitute a bona fide offering of goods or services under the Policy as he does not offer any merchandise of his own under such domain name. Finally, the Respondent does not make any legitimate non-commercial or fair use of the domain name which is used to divert customers from the Complainant’s website to other commercial websites.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith, already through the act of typo-squatting.
With regard to bad faith registration, the Complainant contends that the Respondent must have been aware of the Complainant’s rights in the SPECIALIZED Marks at the time he registered the domain name in view of the redirection of the disputed domain name.
With regard to bad faith use, the Complainant further contends that the Respondent has used the domain name to divert Internet traffic in bad faith by creating a likelihood of confusion with the Complainant’s famous SPECIALIZED Marks and thereby trading on the goodwill, value and positive associations with these marks. Finally, the Complainant contends that the Respondent has a history of similar bad faith activities.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the 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.
A. Identical or Confusingly Similar
The Complainant’s argument in this regard is implying an assertion of typo-squatting. The Panel notes that the Complainant’s SPECIALIZED Marks consist of the per se generic term “specialized”, while the disputed second level domain name “specilized” is, as such, not descriptive or generic. The Panel believes, however, that – even without the letter “a” in its middle – the average person will readily identify the term “specialized” in this domain name which corresponds to the Complainant’s trademark. The resulting conclusion of confusing similarity is further reinforced (even if not required) by the Complainant’s assertion that its SPECIALIZED Marks are well-known.
Furthermore, it is well established that the specific top level domain is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 the 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 its website 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 website or location or of a product or service on its website or location.
It is well-settled that the practice of typo-squatting, of itself, is evidence of the bad faith registration of a domain name (cf. Longs Drug Stores Cal., Inc. v. Shep Dog,
WIPO Case No. D2004-1069; Lexar Media, Inc. v. Huang,
WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo,
WIPO Case No. D2004-0816).
Furthermore, the Respondent is using the domain name to wrongfully divert consumers looking for the Complainant’s products and services on the Internet to his website, where he is selling products in direct competition with the Complainant’s products, and thus in bad faith under paragraph 4(b)(iv) of the Policy (cf. ESPN, Inc. v. XC2,
WIPO Case No. D2005-0444). Finally, the Respondent’s involvement in previous UDRP proceedings, where identical practices were found to be in bad faith (cf. Symantec Corporation v. Nadeem Qadir,
WIPO Case No. D2005-1193; and PHE, Inc. v. Nadeem Qadir,
WIPO Case No. D2005-1315), results in a finding of bad faith under paragraph 4(b)(ii) of the Policy in this case.
As a result, for all the above-mentioned reasons, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) 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 name <specilized.com> be transferred to the Complainant.
Brigitte Joppich Sole Panelist
Date: November 16, 2007
Stay updated! Get new cases and decisions by daily email.
