Complainant is TRS Quality, Inc of United States of America represented by Haynes and Boone, LLP of United States of America.
Respondent is Privacy Protect of Netherlands Antilles.
2. The Domain Names and Registrar
The disputed domain names <radioshacj.com> and <wwradioshack.com> are registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2010. On March 16, 2010, the Center transmitted by email to Dynadot, LLC. a request for registrar verification in connection with the disputed domain names. On March 16, 2010, Dynadot, LLC transmitted by email to the Center its verification response confirming that 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”).
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. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 13, 2010.
The Center appointed Eduardo Machado 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
Complainant TRS Quality, Inc., a wholly-owned subsidiary of New York Stock Exchange publicly traded RadioShack Corporation, is the entity within the RadioShack Corporation corporate family that owns the RADIOSHACK brand.
RadioShack Corporation sells technology products through a variety of channels, including through its website at “www.radioshack.com” where consumers can shop online.
Complainant, through its predecessors-in-interest, have obtained numerous trademark registrations covering the RADIOSHACK mark throughout the world. Since 1923, Complainant and RadioShack Corporation, through their respective predecessors-in-interest, have actively promoted the RADIOSHACK trademark through advertising, publications, white papers, and other means in both traditional media and on the Internet.
The disputed domain name <wwradioshack.com> was registered on August 11, 2009 and the disputed domain name <radioshacj.com> was registered on February 15, 2010.
5. Parties' Contentions
A. Complainant
The Complainant contends that it is the owner of the trademark RADIOSHACK and that it owns many registrations for this mark worldwide, some of which were filed as long ago as 1956 and that it has started its activities using the mark RADIOSHACK since at least 1923. It contends that the trademark RADIOSHACK is famous through considerable use that has been made of it around the world. The Complainant also informs that it has registered the domain names <radioshack.com>, which hosts Complainant's online store and <radioshackcorporation.com>, which hosts a website with information about the structure of Complainant.
Complainant asserts that it has never authorized Respondent to use the RADIOSHACK mark, nor has Respondent ever sought Complainant's permission or authorization to use the RADIOSHACK mark as a trade or service mark or URL. Complainant further asserts that, upon information and belief, Respondent is a participant in RadioShack Corporation's online affiliate marketing program. Complainant informs that its Online Affiliate Agreement explicitly forbids use of Complainant's trademarks in any domain name registered by the participant.
Complainant contends that visitors to the websites hosted under the disputed domain names are automatically and instantaneously redirected to Complainant's website at “www.radioshack.com”, via “invisible” redirect instructions at “www.rboasoi.com”. Complainant states that Respondent gets a financial benefit for each of Complainant's sales to an Internet user who reaches Complainant's website from the domain name via <rboasoi.com>.
Complainant contends that the disputed domain name <wwradioshack.com> differs from Complainant's well-known RADIOSHACK mark by the mere addition of “ww” in the domain name. Complainant further argues that the noticeable part of the disputed domain name <wwradioshack.com> is “radioshack,” which is still identical to Complainant's RADIOSHACK mark. Therefore, Complainant concludes that the addition of “ww” does not distinguish the disputed domain name <wwradioshack.com> from the Complainant's RADIOSHACK mark.
Complainant contends that the disputed domain name <radioshacj.com> differs from Complainant's well-known RADIOSHACK mark only by the letter “j” in the domain name. Complainant further argues that the noticeable part of the domain name is “radioshac,” which is still phonetically identical to Complainant's RADIOSHACK mark. Therefore, Complainant concludes that the replacement of “k” in RADIOSHACK with the letter “j” in <radioshacj.com> does not distinguish the disputed domain name from the Complainant's RADIOSHACK mark.
Complainant asserts that Respondent's registration of the disputed domain names <wwradioshack.com> and <radioshacj.com> constitutes typosquatting, which by definition, renders the disputed domain names confusingly similar to Complainant's RADIOSHACK mark. Complainant argues that the disputed domain names <wwradioshack.com> and <radioshacj.com> are common misspellings of Complainant's famous RADIOSHACK mark. In particular, the letter “j” is next to the letter “k” on standard QWERTY keyboards, making “radioshacj” a common typing error of RADIOSHACK. Complainant argues that UDRP panels have consistently recognized that taking advantage of a typing error that Internet users commonly make when searching on the Internet renders a domain name confusingly similar to the trademark.
Complainant asserts that the disputed domain names <wwradioshack.com> and <radioshacj.com> are virtually identical to Complainant's famous RADIOSHACK mark-differing only by addition of the letters “ww” in <wwradioshack.com> and replacement of the letter “k” with “j” in <radioshacj.com>. Complainant argues that several UDRP panels have held that virtual identity is sufficient for the purposes of satisfying the “confusingly similar” element of Policy, paragraph 4(a)(i). In addition, Complainant also asserts that the disputed domain names are visually similar to the RADIOSHACK mark, further heightening the likelihood of confusion.
Complainant contends that Respondent has absolutely no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent does not own a trademark registration for the RADIOSHACK or Wwradioshack or Radioshacj mark, that it is not known by the name RADIOSHACK or Wwradioshack or Radioshacj, does not operate a business or other organization under the name RADIOSHACK or Wwradioshack or Radioshacj, and is not otherwise authorized to use the RADIOSHACK mark by Complainant.
Complainant also asserts that, to the best of its knowledge, Respondent also has never used the disputed domain names for any bona fide, non-commercial use. Complainant contends that the use of a domain name that automatically redirects to complainant's website is not a bona fide offering of goods or services or legitimate use.
Complainant alleges that Respondent's apparent purpose and use of the disputed domain names is to confuse and divert consumers through Respondent's sites in order to get advertising revenue from Complainant's affiliate marketing program, thereby exploiting the RADIOSHACK mark for Respondent's own profit. Complainant asserts that such use does not give Respondent any rights or legitimate interests in the disputed domain names. Moreover, Complainant alleges that it has never consented to Respondent's use of the RADIOSHACK mark, and indeed, Respondent never requested Complainant's permission to use the RADIOSHACK mark.
Complainant contends that Respondent's registration and use of the disputed domain names is in bad faith because the disputed domain names unlawfully trade on the name recognition and goodwill associated with Complainant's famous RADIOSHACK mark to automatically redirect Internet traffic to Complainant's website at <radioshack.com> from Respondent's websites at <wwradioshack.com> and <radioshacj.com>.
Complainant alleges that, by intentionally creating a likelihood of confusion with the RADIOSHACK mark, Respondent has registered and is using the disputed domain names in bad faith. Complainant contends that Respondent is trading off on the worldwide fame of the RADIOSHACK mark in the disputed domain names to aggregate advertising revenue.
Complainant asserts that the RADIOSHACK mark is not a generic or descriptive term. Rather, Complainant's distinctive and unique RADIOSHACK mark was coined by Complainant's predecessors; it has been used by Complainant and its predecessors and licensees for more than 85 years; and it has achieved a high level of global fame before Respondent registered the disputed domain names. Complainant contends tt is inconceivable in the case at hand that Respondent did not have knowledge of Complainant's RADIOSHACK mark before Respondent registered the disputed domain names.
Complainant asserts that Respondent's actual and constructive knowledge of Complainant's rights and his willingness and desire to profit therefrom underscore Respondent's bad faith use and registration.
Complainant alleges that Respondent's violation of its Registration Agreement with the registrar also evidences bad faith, as it falsely represented that the registration of the disputed domain names did not infringe the legal rights of any third party, Respondent breached the Registration Agreement.
Complainant requests that the disputed domain names be transferred to it.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain names; and (iii) the domain names have been registered and are being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to Complainant's RADIOSHACK trademark.
The disputed domain name <wwradioshack.com> differs from Complainant's registered RADIOSHACK marks only in the addition of the “ww”, which is not enough to characterize it as distinct from Complainant's trademarks. The disputed domain name <radioshacj.com> differs from Complainant's registered RADIOSHACK marks only in the substitution of the letter “k” for the letter “j”, which is not enough to characterize it as distinct from Complainant's trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,
WIPO Case No.2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel finds that adding letters or substituting isolated letters to a domain name such as the addition of “ww” and the alteration of “k” to “j” in this case, is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant. In this case the letters added and altered do not serve any distinguishing function.
Furthermore, the Panel concludes that Respondent's registration of the disputed domain names <wwradioshack.com> and <radioshacj.com> constitutes typosquatting, which not only renders the disputed domain names confusingly similar to Complainant's RADIOSHACK mark, but is also an evidence of bad faith as further discussed below. It is clear that the disputed domain names <wwradioshack.com> and <radioshacj.com> are common mistypings of Complainant's RADIOSHACK mark. In particular, the letter “j” is next to the letter “k” on standard QWERTY keyboards, making “radioshacj” a common typing error of RADIOSHACK.
The Panel finds that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,
WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
Complainant informed that Respondent is a participant in its online affiliate marketing program and that visitors to the websites hosted under the disputed domain names are automatically and instantaneously redirected to Complainant's website at “www.radioshack.com”, via “invisible” redirect instructions at “www.rboasoi.com”. Complainant alleged that Respondent gets a financial benefit for each of Complainant's sales to an Internet user who reaches Complainant's website from the domain name via <rboasoi.com>. The Panel finds that this is not a bona fide offering of goods or services. Respondent was well aware of Complainant's rights on the RADIOSHACK mark and on the disputed domain names and knowingly infringed such rights.
The Panel finds that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent's website or other online location by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's site or of a product or service offered on the respondent's site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the disputed domain name in bad faith.
Complainant's allegations of bad faith are not contested. The trademark registrations of record confirm Complainant's allegations that it had long been using its RADIOSHACK mark when the disputed domain names were registered. Moreover, Complainant submitted consistent evidence that the trademark RADIOSHACK constitutes a well-known trademark. Complainant informed that Respondent is a participant in its online affiliate marketing program. The Panel finds persuasive Complainant's allegation that the Respondent must have been aware of the Complainant's rights in the mark and, further that Respondent knowingly infringed the Complainant's trademark when it registered the subject domain names.
Respondent registered the disputed domain names, which intentionally reflect typing mistakes of Complainant's known trademark. It has been held by several UDRP WIPO panels that typosquatting itself maybe evidence of bad faith.
Complainant informed that Respondent is a participant in its online affiliate marketing program and that visitors to the websites hosted under the disputed domain names are automatically and instantaneously redirected to Complainant's website at “www.radioshack.com”, via “invisible” redirect instructions at “www.rboasoi.com”. Complainant alleged that Respondent gets a financial benefit for each of Complainant's sales to an Internet user who reaches Complainant's website from the domain name via <rboasoi.com>. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website.
Accordingly the Panel finds that Complainant has made out bad faith registration and use of the disputed domain names by Respondent.
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 names <radioshacj.com> and <wwradioshack.com> be transferred to Complainant.
Eduardo Machado Sole Panelist
Dated: May 3, 2010
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