1.1 The Complainant is TRS Quality, Inc of United States of America represented by Haynes and Boone, LLP of United States of America.
1.2 The Respondent is Namespro.ca Private WHOIS of Canada.
2. The Domain Name and Registrar
2.1 The disputed domain name <wradioshack.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 15, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2010, the Registrar 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” 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”).
3.2 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 March 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2010.
3.3 On March 26, 2010 the Center received an email which read as follows:
“I am one of the directors at Namespro.ca. We have received your letter regarding the situation with the domain <wradioshack.com>. We appreciate you bringing this matter to our attention. Upon investigation, we found that the domain is NOT currently registered with us:
It is located at the registrar “# 1 HOST CHINA, INC.”, which points to the website “moniker.com”. What this user did is try to imitate our private WHOIS protection (http://www.namespro.ca/privateWHOIS.asp), which we are NOT providing for this user. The user has entered our company's privacy WHOIS contact name phone number and address as his own WITHOUT our permission whatsoever. This is the only set of information available to anyone publicly, since this user has not provided any real information to the registrar. As you may know, there is no control over what contact information a user entered as their address and phone number when they register a domain. In this case, this user has stolen our address and phone number and passes them as his/her own. We are a victim in this situation and have no knowledge of this matter until after receiving your letter.
That being said, the current domain registrar should be able to assist you with this matter. […] Please let us know if you require any assistance from us. It is our intention to do so to prevent further malicious activities being performed by this user, who remains unknown to any party except for the current registrar.”
3.4 On April 4, 2010 the Center also received the following email:
“We will be glad to assist you and your organization to resolve this matter. In addition to our last reply, we would like to point you to our official private WHOIS page: http://www.namespro.ca/PrivateWhois.asp
Please notice that our privatized email address is in the format of ‘[]@namesproprivacy.ca'. This user has used the email ‘[email protected]' to imitate what our product is offering. We again state that this is no relationship between us and this domain and the registrant information used was without our consent and permission. We have no knowledge of this matter until your letter brought it to our attention. Please keep us updated in this matter.
3.5 On April 14, 2010 the Center noticed that notwithstanding a previous reassurance from the Registrar that the Domain Name had been placed on lock, the publically available WhoIs details for the Domain Name had been changed so as to record the following registration details:
Domain Admin
PrivacyProtect
[ ]
P.O. Box 97
All Postal Mails Rejected, email only
[ ]
Moergestel, Morgestel 5066 NL
3.6 The Center therefore sent an email to the Registrar pointing out this change and asked that it “explain the circumstances of this apparent transfer of the domain name”. The Registrar responded that day with a single line email to the Center that read as follows:
“The information has been restored and the domain locked to prevent any changes.”
No explanation was offered for the change in registration details.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 19, 2010. 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
4.1 The Complainant is a company within the Radio Shack group and is a wholly owned subsidiary of the Radio Shack Corporation, a company that is publically listed on the New York Stock Exchange. The Radio Shack group RadioShack Corporation sells products through a variety of channels, including through its website at “www.radioshack.com” and through over 6,000 outlets and stores in the United States (“US”) and Mexico.
4.2 The Radioshack name has been used by the RadioShack group and its predecessors in business since 1926. The Complainant licenses the use of that name to other companies within the group. It is the owner of numerous registered trade marks around the world that incorporate or include the words “radio” and “shack”, and these include:
(i) US registered trade mark No. 0796908 for the words RADIO SHACK in class 42 and with a filing date of August 4, 1964.
(ii) US registered trade mark No. 2,019,438 for the word RADIOSHACK in class 35 and with a filing date of July 20, 1995.
4.3 The Domain Name was registered on August 8, 2009.
4.4 Who the underlying registrant of the Domain Name is, is not known. The Domain Name purports to be registered in the name of the “Namespro.ca” WhoIs Privacy service. Namespro.ca is the trading name of Namespro Solutions Inc, a Canadian domain services provider. However, correspondence sent to the Center by Namespro and which is described in the Procedural History section of this decision, suggests that the registration may have no connection with that service or entity
4.5 According to the Complainant, at the date of the Complaint, internet users using the Domain Name were automatically and instantaneously redirected to Complainant's website at “www.radioshack.com”. However, by the date of the decision the use of the Domain Name had changed. In particular, it is now being used for a page that bears all the hallmarks of being generated by a domain name parking or pay-per-click service. When seen from the United Kingdom it displays a picture of a remote control and various “related searches” and “sponsored listings”. The related searches are mostly (but not exclusively) mobile phone related. The sponsored listings are dominated by computer game and advertisements for computer game “cheats”.
5. Parties' Contentions
A. Complainant
5.1 The Complainant refers to its registered trade mark rights and claims that (leaving aside the “.com” TLD) that the Domain Name is simply its RADIOSHACK mark with the letter “w” added to the front. It claims that the case is similar to that of Gorstew Limited v. Global Access/Moniker Privacy Services,
WIPO Case No. D2008-0546 and DHL Operations B.V v. Net Marketing Group,
WIPO Case No. D2005-0868 in which domain names that comprised the letters “www” together with a trade mark were held to be confusingly similar to that trade mark.
5.2 It also asserts that this is a case of typosquatting with the purpose of trading off the goodwill associated with its RADIOSHACK mark. It, therefore, contends that the Domain Name is confusingly similar to a trade mark in which it has rights.
5.3 The Complainant also contends that the Respondent does not own a trade mark registration for the RADIOSHACK or WRADIOSHACK mark, is not known by the name Radioshack or Wradioshack, and to the best of its knowledge has not used the Domain Name for any bona fide non-commercial purpose. It instead contends that the Domain Name was being used without the Complainant's consent to redirect Internet users to the Complainant's own website with a view to generating advertising revenue for the Respondent from the Complainant's own affiliate marketing program. Various cases are cited (including PC Mall, Inc. v. Admin Billing, WIPO Case No. D2004-0692) that are said to show that such use does not provide a right or legitimate interest.
5.4 The Complainant also contends that the Domain Name has been registered and used with the intention of creating a likelihood of confusion with its RADIOSHACK mark, in order to divert Internet users to the Complainant's own website so as to generate affiliate revenues for the Respondent. This is said to involve registration and use in bad faith.
5.5 The Complainant further contends that the notoriety of the RADIOSHACK mark and the fact that “Radioshack” is not a descriptive term each point to a finding of bad faith. It further contends that Respondent had actual and constructive knowledge of Complainant's rights.
5.6 Lastly, the Complainant contends that the Respondent has breached the terms of its registration agreement with the Registrar in that it falsely represented to the Registrar that the Domain Name did not breach the rights of any third party. This is also said to indicate bad faith and the Complainant cites Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain,
WIPO Case No. D2000-1240 in this respect.
B. Respondent
5.7 No formal response was filed by the Respondent in these proceedings.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will consider each of these issues in turn, but before it does so it will briefly comment on the registration issues that have arisen in this case.
A. Registration Issues
6.5 If the emails sent to the Center following the commencement of these proceedings are to be believed, the registration details recorded in the WhoIs details for the Domain Name are false and someone has sought to impersonate a Canadian WhoIs privacy service.
6.6 If this is a case of impersonation, this will be a matter of concern to both to Namespro.ca and ought to be a matter of concern to the Registrar.
6.7 There is also the fact that the recorded registration details of the Domain Name changed after the Registrar has been notified of these proceedings. This appears to have involved a breach by the Registrar of paragraph 8(a) of the Policy. To be fair to the Registrar, it would seem that as soon as this was brought to its attention it immediately took steps to rectify the position. However, no explanation was offered by the Registrar as to how this had happened and it is a matter of concern that the Registrar's systems allowed this to occur. Also, it is curious that the change made purported to name yet another domain name privacy service.
6.8 Clearly something is amiss. It is to be hoped that following this decision the Registrar will investigate exactly what happened in this case and take reasonable steps to ensure that the misuse of the WhoIs details that has occurred in this case is not repeated.
B. Identical or Confusingly Similar
6.9 It is clear that the Complainant owns various registered trade marks that comprise or incorporate the term “radio shack” and that it is the owner of US registered trade marks for both RADIO SHACK and RADIOSHACK. The Domain Name can only be sensibly read as the letter “w” in front of the words “Radio Shack” or “RadioShack” together with the “.com” TLD. It is, therefore, clear and obvious that the Domain Name is confusingly similar to at least two marks in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.10 In coming to that conclusion on this aspect of the Policy, it is not necessary to consider whether this is case of “typosquatting” (i.e. the deliberate registration of a domain name that contains a misspelling or mistyping of another person's mark). For reasons that are described later on in this decision, the Panel is of the view that the Complainant is right when it claims this is a case of “typosquatting”. However, there is no need to bring in questions of the intent of the registrant when assessing confusing similarity under paragraph 4(a)(i). The test is simply a comparison between the claimed mark and the domain name.
6.11 The Panel does not reject the possibility that the fact that domain names are commonly prefixed by the letters “www” is something that might in an appropriate case be relevant to the assessment of confusing similarity. In a borderline case if the differences between the mark and domain name include the use of one or a number of “w”s at the beginning of the domain name, then this may be important. But, this is not a borderline case. There is obvious confusing similarity.
C. Rights or Legitimate Interests
6.12 In the absence of any evidence to the contrary (and also in light of the factors identified under the heading of bad faith below) the Panel accepts the Complainant's evidence that the Domain Name is registered and has been used because of its confusing similarity with the Complainant's marks for the purpose of generating revenue from the Complainant's affiliation programme. In the absence of consent of the rights holder to such activity, the Panel accepts that this does not provide a right or legitimate interest for the purposes of the Policy. The Complainant has cited a number of cases in support of that proposition. The Panel also refers to its recent decision in Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, WIPO Case No. D2009-1684.
6.13 There is clearly no consent in this case. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.14 The Panel accepts the Complainant's contention that the RADIOSHACK and RADIO SHACK marks are well known, at least in North America. Further, the combination of the words “radio” and “shack” are unusual. It is unlikely that someone would have come up with that combination without intending some sort of reference to the Complainant's business or marks.
6.15 These conclusions are reinforced by the fact that the addition of the letter “w” at the beginning of the mark suggests that “typosquatting” was intended. The letter “w” has no obvious purpose in the Domain Name and the Panel accepts that the most likely explanation is that this letter has been chosen in order to catch those who make mistakes when they intend to type “www.radioshack.com” into an Internet browser.
6.16 In the circumstances, the Panel has little difficulty in concluding that the Domain Name was registered because of its similarity to the Complainant's marks and with the intention of taking some form of unfair advantage of the Complainant's marks. The Panel also accepts, in the absence of any evidence from the Respondent to the contrary, the Complainant's evidence (although it takes the form of little more than an assertion in the Complaint) that the intended purpose and use of the Domain Name in this case was in connection with the Complainant's own affiliation programme. It also accepts that this registration and use was without the Complainant's consent. It, therefore, agrees that such activity falls within the scope of paragraph 4(b)(iv) of the Policy.
6.17 This is more than sufficient to decide the issue of bad faith in the Complainant's favour. However, there is also the fact that in this case there appears to have been impersonation and the use of false contact details by the underlying registrant.
6.18 In the circumstances, the Complainant has satisfied the Panel that there has in this case been both bad faith registration and bad faith use
6.19 In coming to these conclusions the Panel has been un-persuaded by two aspects of the Complainant's case. First, there is an allegation that the Respondent had “constructive notice” of the Complainant's marks. The doctrine of constructive notice is problematic under the UDRP and if it applies at all, it does not appear to be relevant to the circumstances of this case (see the critique of the application of that doctrine in the context of the Policy in ServiceMaster Brands LLC v. Riel Roussopoulos,WIPO Case No. D2007-0346 and footnote no. 2 to the decision of the Panel in Henkel KGaA v. Mr. Augustin Sbinta,
WIPO Case No. DRO2008-0003.)
6.20 Second, there is the Complainant's claim that there has been some form of misrepresentation that the domain name does not infringe another's rights that was made to the Registrar. This is a reference to the ongoing warranty that a registrant provides to a registrar and which is to be found in paragraph 2 of the Policy.
6.21 The Complainant cites an early case under the Policy that appears in part to have adopted this misrepresentation argument. On the narrow point of the paragraph 2 warranty, the Panel is un-persuaded that this warranty provides any significant guidance as to what does and does not constitute bad faith use.
6.22 The reason for this is that the warranty in question is very broad. It extends not only to infringement of intellectual property rights but any use of a domain name that “infringe[s] upon or otherwise violates[s] the rights of any third party”. It also covers registration of a domain name “for an unlawful purpose” as well as “knowingly” using a domain name for “an unlawful purpose”. If the warranty is understood as simply providing a contractual protection to a registrar, then this wide ranging language makes sense. Registrars may wish to have some recourse against registrants registering domain names through them for unlawful purposes. However, that very breadth suggests that the provision is of limited or no relevance to a bad faith assessment . If it were of relevance, it would potentially bring within the scope of the Policy activities that historically have been considered outside its ambit and which have little or nothing in common with the types activities listed as evidencing bad faith in 4(b) of the Policy.
6.23 Further, it would necessarily involve panels having to consider questions of local law. For the reasons set out in detail by this Panel in 1066 Housing Association Ltd. v. Mr. D. Morgan,
WIPO Case No. D2007 1461 that would be undesirable.
6.24 That still leaves the possibility the warranty is relevant because it warrants compliance with the UDRP. But if this so, ultimately the point becomes circular. There is bad faith because there is a breach of warranty and there is a breach of the warranty because there is bad faith. Ultimately, therefore, any argument based upon a breach of this warranty is likely to be of little assistance to a panel in determining whether or not in a particular case there has been bad faith.
6.25 Nevertheless, the rejection of these two small aspects of the Complainant's case does not matter. The Complainant has shown this to be a clear cut case of bad faith registration and use without the need to rely upon such arguments. The Complainant has made out 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 <wradioshack.com> be transferred to the Complainant.
Matthew S. Harris Sole Panelist
Dated: April 21, 2010
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