WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Funix B.V. v. S.S Services / Privacy Protect.org

Case No. D2009-1049

1. The Parties

Complainant is Funix B.V. of Driebergen-Rijsenburg, Netherlands represented by Holland Van Gijzen Advocaten & Notarissen LLP of Netherlands.

Respondent is S.S Services of India.

2. The Domain Name and Registrar

The disputed domain name <freeonse.com> (the “Domain Name”) is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2009. On August 5, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On August 6, 2009, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 10, 2009. 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” or “UDRP”), 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 August 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2009.

The Center appointed Michael A. Albert as the sole panelist in this matter on September 14, 2009. 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 operates a website attached to the domain name <freeones.com> that provides free samples of pornographic images, links to other pornographic websites, and links to the official websites of actresses. Complainant or its legal predecessors have operated this website since 1998. The viewers of Complainant's website come from all over the world, but primarily from the United States of America and Europe.

The Complainant is the owner of the following registered trademarks:

The Domain Name <freeonse.com> appears to have first been registered on August 24, 2000. Respondent did not file a response in these proceedings and was notified of its default by the Center on September 1, 2009.

5. Parties' Contentions

A. Complainant

Complainant contends that:

(a) in accord with Policy, paragraph 4(a)(i) and Rules, paragraphs 3(b)(viii), (b)(ix)(1), the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights;

(b) in accord with Policy, paragraph 4(a)(ii) and Rules, paragraph (3)(b)(ix)(2), Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c) in accord with Policy, paragraphs 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3), Respondent registered and used the Domain Name in bad faith.

Complainant contends that the Domain Name is identical to its registered trademarks except that the final two letters are transposed, and is therefore confusingly similar to its registered trademarks. Complainant also contends that the Domain Name is a foreseeable mistyping of Complainants registered trademarks, and that Respondent chose the domain name in anticipation of Internet users making such a typographical error.

Complainant states that it substantially invests in its website through marketing and merchandising, including providing pictures of its website at a stand at an erotic trade fair and appearing in articles in Penthouse magazine.

Complainant contends that it has conducted thorough searches for enterprises that trade under the name FREEONES or FREEONSE and has not found any enterprise other than itself. Complainant also contends that it has searched trademark databases for FREEONES and has not found any enterprise other than itself with rights in that name. Complainant states that it has not licensed its trademarks to third parties and contends that there is no reason for Respondent to have registered the Domain Name other than to benefit from the goodwill and reputation of Complainant.

Complainant states that Respondent has used the Domain Name in connection with a website that competes with Complainant's goods and services. For example, Respondent's website contains links to other adult entertainment websites, such as “www.adultfriendfinder.com”. Complainant argues that Respondent chose the Domain Name to capitalize on the fame of its registered trademarks and to gain commercial benefit by misleading and diverting consumers from its website. Complainant further argues that Respondent's attempts to gain commercial benefit from confusing consumers is not a bona fide commercial use.

Complainant contends that its website is famous and well known to the relevant public. Complainant states that its website had nearly 60 million visitors a month for the first four months of 2009, that its website has rank 8 in the adult entertainment industry, and that in 2007 it had a top-5 ranking in the most visited adult website index. Complainant argues that Respondent must have had actual knowledge of its trademarks.

Complainant argues that Respondent registered and uses the Domain Name in bad faith. Respondent's bad faith is evidenced by its apparent intentional diversion of consumers from Complainant's website and the apparent typosquatting of Complainant's domain name.

In accordance with paragraph 4(i) of the Policy, Complainant requests that the administrative panel issue a decision transferring to Complainant the <freeeonse.com> domain name.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Procedural Matters

Respondent has not provided an answer to the Complaint. In accordance with the Rules, paragraphs 5(e) and 14, Respondent's failure to deny Complainant's allegations and proffer evidence in rebuttal of such allegations allows the Panel to draw appropriate inferences. Nonetheless, Complainant retains the burden of proving the three requisite elements of Policy, paragraph 4(a).

Substantive Matters

Paragraph 4 of the Policy requires that Complainant prove each of the following elements in order for the Domain Name to be transferred:

a) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

b) Respondent has no rights or legitimate interests in respect of the Domain Name;

c) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has shown that it has rights in its FREEONES mark. Complainant owns several registrations for this mark, which creates a rebuttable presumption of ownership and validity. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Panel also concludes that the Domain Name is confusingly similar to Complainant's mark. The relevant portion of the Domain Name differs from Complainant's mark only in that the last two letters are transposed. Numerous panels have found that a slightly misspelled version of a trademark gives rise to confusing similarity. The Gap, Inc. v Domain, Administration, Moniker Privacy Services/ Registrant [1726026]: Domain Names, Administration St Kitts Registry, WIPO Case No. D2009-0122 (“[T]he transposition of the letter “P” for “B”, is immaterial to and does not serve either to distinguish the Domain Name from the Complainant's … trade mark.”); Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094 (“This is a typical case of ‘typo-squatting' where the infringing name is one letter less than or different from the Complainant's mark. These attempts have been disapproved of by various WIPO Panelists.”). The relevant portion of the Domain Name is a slightly misspelled version and a foreseeable mistyping of Complainant's mark. For the foregoing reasons, the Domain Name is confusingly similar to Complainant's mark.

B. Rights or Legitimate Interests

The Panel finds that Complainant has satisfied its burden to show that Respondent has no rights or legitimate interests in the Domain Name.

Respondent uses the Domain Name to provide links to other web sites that compete directly with Complainant's website. Therefore, Respondent's site acts as a referral service. AT&T Corp. v. ATandT.net, WIPO Case No. D2005-1006. That Respondent is using Complainant's mark to attract Internet users seeking Complainant's site “cannot be the basis for a bona fide offering of goods or services,” regardless of whether Respondent receives commissions for such referrals. Id. In doing so, Respondent is taking advantage of Complainant's reputation and goodwill to attract Internet users and then divert them to Complainant's competitors. Id.'

Complainant also asserts that it has never authorized Respondent to use the mark, that it has not authorized Respondent to register or use the disputed domain name, and that it has no business relationship with Respondent. There is no contrary evidence.

For the foregoing reasons, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and used the Domain Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may be used to demonstrate bad faith. Paragraph 4(b)(iv) of the Policy provides that bad faith can be found where Respondent registered and used a domain name to intentionally attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of Respondent's web site, or the product or service on its web site.

The Panel finds that the registration and use of the Domain Name by Respondent intentionally diverted Internet users from Complainant's site and towards competitor sites. The Panel finds that it did so by exploiting the confusing similarity between the Domain Name and Complainant's FREEONES trademark.

Reasonable and un-rebutted inferences suggest that Respondent did the above-mentioned activities in order to gain financially, and that it did indeed profit from diverting traffic away from Complainant's site and towards those of Complainant's competitors. FHG Holdings Pty LTD d/b/a Click Business Cards v. Jim Smith, WIPO Case No. D2006-0670; AT&T Corp. v. ATandT.net, WIPO Case No. D2005-1006.

Further, as explained above, the Domain Name is a foreseeable mistyping of Complainant's mark, and typosquatting itself is evidence of bad faith. 1st Auto Transport Directory, Inc. v. i Planet Consulting, Inc., D2006-1212; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (June 28, 2005); PC Mall, Inc. v. Admin Billing, WIPO Case No. D2004-0692 (October 27, 2004).

For the foregoing reasons, the Panel finds that Complainant has satisfied its burden of showing that Respondent registered and used the Domain Name 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 <freeonse.com> be transferred to the Complainant.

Michael A. Albert
Sole Panelist

Dated: September 26, 2009