Iron Mountain Incorporated v. Belize Domain Whois Service Lt
Case No. D2007-1651
1. The Parties
The Complainant is Iron Mountain Incorporated, Boston, Massachusetts, United States of America, represented by Wolf, Greenfield & Sacks, P.C., United States of America.
The Respondent is Belize Domain Whois Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name <ironmountaininc.com> registered with Intercosmos Media Group d/b/a directNIC.com. (herein the domain name in dispute).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2007. On November 12, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 12, 2007, Intercosmos Media Group d/b/a directNIC.com 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2007.
The Center appointed J. Nelson Landry as the sole panelist in this matter on December 19, 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
The Complainant is active in the business of information protection and storage services and helps organizations around the world to reduce their costs and risks associated with these services, in offering records management, data protection and information destruction solutions to about 90 000 corporate clients in North America, Europe, Latin America and Asia Pacific.
Since 1951, the Complainant has rendered its services in association with the trademark IRON MOUNTAIN which is registered in the United States under four registrations for different services and products and owned by the Complainant along with several similar trademarks registered in Europe and 37 other countries of the world, including the same terms IRON MOUNTAIN (herein “the Trademark”). Furthermore the Complainant owns the domain name <ironmountain.com> along with 180 other domain names incorporating the Trademark IRON MOUNTAIN.
The Complainant has promoted its Trademark in investing millions of dollars in promotion and advertising, in particular over 100 millions in 2006. Thereby the Complainant has generated over US $ 6,5 billions of revenues in the past five fiscal years, in particular 2,35 billions in 2006.
The domain name in dispute was first created on November 26, 2005.
The Complainant, on June 6, 2007, sent a cease and desist letter to the Respondent and requested the transfer of the domain name in dispute. The Respondent did not respond.
The Complainant has never authorized or licensed the use of its Trademark by the Respondent in registering the domain name in dispute or otherwise.
5. Parties’ Contentions
A. Complainant
In respect of the first criterion, the Complainant represents what it is a global leader of information, protection and storage services and through its services rendered under the Trademark IRON MOUNTAIN helps organizations in the world to reduce their costs and risks in relation to information, protection and storage. According to the Complainant, it markets its products and services to more than 90 000 corporate clients in North America, Latin America, Europe and Asia Pacific. As the result of its substantial sales and expenses in advertising and promoting its registered Trademark, the Complainant submits that significant goodwill has been established in the Trademark.
The Complainant represents that it has rights in the IRON MOUNTAIN Trademark resulting from its numerous registrations in the United States and other countries. See SDC Media, Inc. v. SCMedia, NAF Case No. FA 960250 and Victoria’s Secret Stores Brand Mgmt, Inc. v. Machuszed, NAF Case No. FA 945052. The Complainant submits that the domain name in dispute is confusingly similar to the IRON MOUNTAIN Trademark since the word “inc.” and the generic top level domain name “.com” can be properly ignored upon determining similarity. These additional terms do not distinguish the domain name in dispute from the Trademark. See PG&E Corp. v. Anderson,
WIPO Case No. D2000-1264; Marriott Int’l, Inc. v. Wayne L. Nicewarner, NAF Case No. FA 99692; Nokia Corporation v. Nokiagirls.com a.k.a IBCC,
WIPO Case No. D2000-0102; EAuto, L.L.C. v. EAuto Parts,
WIPO Case No. D2000-0096; College Summit, Inc. v. Yarmouth Educational Consultants, Inc.
WIPO Case No. D2000-1575; Bradford & Binley Plc v. Registrant [email protected] 987654321,
WIPO Case No. D2002-0499.
The Complainant contends that when the Respondent registered the domain name in dispute, the latter was aware of the Complainant’s rights in the said Trademark, either by virtue of constructive notice thereof pursuant to the prior registrations of the Trademark in the United States and in other countries in the world or by the 50 years of Complainant’s business under the name IRON MOUNTAIN, and that it is inconceivable that the Respondent did not have actual notice of its rights. It is unquestionable for the Complainant that the Respondent registered the domain name in dispute with full knowledge of Complainant’s rights and interests. See eBay Inc. v. SGR Enterprises,WIPO Case No. D2001-0259.
In respect of the second criterion, the Complainant further submits, on the basis of four grounds, that the Respondent has no rights or legitimate interests with respect to the domain name in dispute in that (1) it does not own any trademark containing the terms “iron mountain”, (2) has not been commonly known by the said Trademark, (3) is presently not making any legitimate non commercial or fair use of the domain name in dispute and( 4) further more is not licensed by the Complainant to use the Trademark IRON MOUNTAIN.
In respect of the absence of a bona fide offering of services, according to the Complainant, the Respondent is using the domain name in dispute which is identical to the Complainant’s Trademark, solely to benefit from Complainant’s reputation and goodwill in order to attract and redirect Internet users to the domain name in dispute website featuring a generic search engine and directory of links to unrelated third party website whereby the Respondent received click-through fees, said use not being one in connection with a bona fide offering of goods or services under Paragraph 4(c) of the Policy. See WeddingChannel.com Inc. v. Vasiliev, NAF Case No. 156716; Black & Decker Corp. v. Clinical Evaluations, NAF Case No. 112629; Seiko Kabushiki Kaisha v. CS into Tech, NAF Case No. 198795.
According to the Complainant, the Respondent is not commonly known by the domain name in dispute but rather as “Belize Domain Whois Service Lt” and there is no other evidence associating the Respondent with the name Iron Mountain or Iron Mountain Incorporated or Inc. See M. Shanken Communications, Inc. v. Worldtravelersonline.com, NAF Case No. 740335; Compagnie de Saint Gobain v. Com-Union Corp.,
WIPO Case No. D2000-0020 and Tercent Inc. v. Lee Yi, NAF Case No. 139720.
In respect of the third criterion, the Complainant contends that the Respondent registered and used the domain name in bad faith which bad faith is inferred and established by the fact that with knowledge of Complainant’s Trademark rights, the Respondent acquired a domain name incorporating Complainant’s entire Trademark, to intentionally tradeoff the substantial goodwill of the Complainant well known Trademark. See Red Bull GmbH v. Gutch,
WIPO Case No. D2000-0766; Cellular One Group v. Brien,
WIPO Case No. D2000-0028. Further evidence of bad faith resides in the use of confusion with the Complainant’s affiliation to misrepresent and to divert for commercial gain internet users to Respondent’s website which displays links to third-party websites by creating a likelihood of confusion with Complainant’s Trademark as to source, sponsorship or endorsement. See State Fair of Tex. v. Granbury.com, NAF Case No. 95288; Drs. Foster & Smith, Inc. v. Lalli, NAF Case No. 95284; Perot Sys. Corp. v. Perot.net, NAF Case No. 9531; Kmart v. Khan, NAF Case No. 127708 and Consitex S.A. v. Kiamen Jiyang’s Farm of Zoology Breed Aquatics,
WIPO Case No. D2006-1443.
According to the Complainant, the Respondent, by its activities, intends to disrupt the business of the Complainant, which constitutes another act of bad faith.
Finally the Complainant alleges that the Respondent had constructive notice of Complainant’s rights in the Trademark and the registration of a confusingly similar domain name is further evidence of bad faith and the Respondent has no plausible legitimate reason for its choice of such domain name. See eBay, Inc. v. SGR Enterprises,
WIPO Case No. D2001-0259; Telstra Co. Ltd v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Digi Int’l v. DDI Sys., NAF Case No. 124506 and Orange Glo Int’l v. Blume, NAF Case No. 118313.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Comments on the evidence
Prior to engaging in the consideration of the three criteria under the Policy, the Panel wishes to acknowledge not only the documentary evidence but also the corroborating statements in the Declaration of Gary Watzke, Senior Vice-President and General Counsel of the Complainant in respect of the rights of the Complainant in its Trademark, its period of extensive use, advertising and promotion, which evidence remains unchallenged by reason of the absence of any response or evidence from the Respondent, a fact that is not surprising when one considers that this Respondent has been involved in eleven (11) prior unfavorable panel decisions as cited by the Complainant. Since the Respondent has not filed any response in this proceeding, the Panel therefore may accept all facts so declared as well as reasonable inferences and allegations included in the Complaint as true.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly established by documentary evidence and the sworn declaration of its Senior Vice-President and General Counsel that through its more than fifty years of using and promoting the Trademark and registering it in the United States, Europe and 37 other countries in the world, that it has substantial rights in its registered Trademark as well as considerable goodwill associated therewith.
It is now well acknowledged in numerous UDRP Panel decisions including those cited by the Complainant that the addition of a suffix such as “inc”, “corporation” or “corp.” and/or a top level domain name “.com” does not alter in any way the likelihood of confusion particularly when in other respect the whole of the Trademark, as in the present case, is incorporated in the domain name in dispute.
The Panel therefore finds that the domain name in dispute is confusingly similar to the Trademark of the Complainant.
The first criterion has been met.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name “Iron Mountain” or the domain name in dispute, is not engaged in any legitimate non-commercial or fair use of the domain name in dispute. Furthermore, as declared by Mr. Watzke, the Complainant has never given to the Respondent a license to use Complainant’s Trademark.
There is no evidence that the Respondent has ever engaged in any legitimate business under the Complainant’s Trademark. To the contrary, the evidence is that the Respondent engaged in objectionable activities in deliberately capitalizing on Internet users’ confusion created by the Respondent to make improper referral fees, as held by the panel in the Consitex S.A. v. Xiamen Jivang’s Fram of Zoology Breed Aquatics, decision cited by the Complainant which this Panel adopts. It is certainly fair to conclude that the holding and use of the domain name in dispute denies the Complainant access to the use of another domain name corresponding to its Trademark and corporate name and is intended to cause damage to the Complainant and in no way constitute an engagement in any legitimate non-commercial or fair use of the domain name in dispute.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith and this has also been clearly established. Considering the long period of use and promotion of the Trademark, the substantial sales associated therewith and the several registrations in the United States, Europe and many other countries in the world on the one hand, and the incorporation of the distinctive terms IRON MOUNTAIN of the Trademark in the domain name in dispute does not leave any other conclusion to this Panel that the Respondent was, in all likelihood, well aware of the rights of the Complainant in the Trademark upon registering the domain name in dispute. The evidence shows that the Respondent intended to and in fact did capitalize and benefit from the goodwill and sponsorship associated therewith in setting up a scheme to divert Internet users who in visiting the website under the domain name in dispute believed that they were visiting the website of the Complainant and were, as anticipated by Respondent, diverted to other websites which visit generated each time a commercial gain for the Respondent.
This deemed knowledge of the Respondent is further corroborated by the course of action of the Respondent as revealed by the (11) earlier UDRP decisions cited by the Complainant, wherein the same Respondent was ordered to transfer the disputed domain name.
As it has been alleged by the Complainant and supported by earlier panel decisions Consistex S.A. v. Xiamen Jiyang’s Farm of Zoology Breed Aquatics, supra, bad faith upon registration, can be inferred when the domain in dispute includes the Complainant’s entire Trademark and constitute misrepresentation to the public that the website of the Respondent is associated or connected to the Complainant.
There is further evidence that the domain name in dispute is currently parked with Parked.com, a domain name parking service website which generates remuneration for the Respondent whenever internet users are mislead and diverted to other third party websites as the result of deliberate confusion created by the Respondent upon using the domain name in dispute in this fashion which, in this Panel’s view demonstrates use of the domain name in dispute in bad faith.
This Panel finds that the domain name in dispute has been registered in bad faith and also used in bad faith.
The third criterion has been met.
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, <ironmountaininc.com> be transferred to the Complainant.
J. Nelson Landry Sole Panelist
Dated: January 7, 2008
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