The Complainant is TechInsights Inc., Canada, represented by Merizzi Ramsbottom & Forster, Canada.
The Respondent is Umer Malik, Student, Pakistan.
The disputed domain name <techoinsights.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2019. On October 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2019, 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 26, 2019. 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.
The Complainant is a Canadian company that operates for over 30 years internationally providing, among others, patent and technology analysis products and services. Since 2007, the Complainant has continuously operated under the name “techinsights”, and, since 2004, it has used this term to describe a division of its business as well as a number of its products and services
The Complainant holds registered trademark rights in the mark TECHINSIGHTS in various jurisdictions, alone or in combination with other figurative elements, being exclusive licensee or owning a substantial trademark portfolio, of which the following are sufficiently representative for the present proceeding:
United States of America “United States” Trademark No. 3,748,339 TECHINSIGHTS, word mark, registered February 16, 2010, in class 35;
United States Trademark No. 3,812,621 TECHINSIGHTS, word mark, registered July 6, 2010, in classes 38, 42, and 45;
Canada Trademark No. TMA831468 TECHINSIGHTS, word mark, registered September 7, 2012, in classes 16, 35, 38, 42, and 45;
European Union Trademark No. 006707616 TECHINSIGHTS, word mark, registered February 16, 2009, in classes 9, 16, 35, 38, 41, 42, and 45.
The Complainant further owns <techinsights.com>, registered on July 18, 2002, which is linked to its corporate website in connection with its products and services.
The disputed domain name was registered on September 29, 2019. At the date of this decision, the disputed domain name is linked to a website, under the title “Say What” with an image of an orangutan, of a newspaper, related to entertainment, music and fashion, which links are not workable, except a link to an Instagram account under the name “enews”.
Key contentions of the Complaint may be summarized as follows:
The disputed domain name is confusingly similar to the trademark TECHINSIGHTS. It adds a single letter “o” to the mark, being this mark the dominant term in the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been granted any license or authorization to use the Complainant’s trademark, and none of the criteria set forth in paragraph 4(c) of the Policy are met in this case. The Respondent’s website purports to provide a “news, entertainment, music & fashion website”, but, in fact, does not provide any content except a link to an apparent third-party Instagram account. The title of this website does not relate to the apparent theme of the site. Given the inconsistences in its title, the lack of any substantive content, and the incongruity between the disputed domain name and the purported offerings of this site, it is clear that the purpose of this site is to occupy the disputed domain name blocking its use by the Complainant. Therefore, there is not real use of the disputed domain name in connection with a bona fide offering of goods and services. Further, there is no evidence that the Respondent has used the term “techoinsights” to refer to itself, its business, or its offerings, and there is an intent for commercial gain, as the site purports to provide a service.
The disputed domain name was registered and is being used in bad faith. The Respondent has intentionally attempted 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 trademark. The Respondent’s use of the disputed domain name, which appears incongruous with the purported purpose of the website, is a strong indicator that the Respondent is simply using the disputed domain name to attract attention. Further, the Respondent’s site does not appear to provide any significant content, and the Respondent has provided incomplete contact information in the disputed domain name registration making contact with the Respondent impossible (only includes “student” as organization name, and the location “Punjab, Pakistan”). The said use, which constitutes a passive holding, and the incomplete, confusing, or incorrect contact information in the disputed domain name registration, corroborates the Respondent bad faith.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material, and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, a domain name consisting of a common, obvious, or intentional misspelling of a trademark (containing sufficiently recognizable aspects of that mark), is considered confusingly similar to the relevant mark for the purposes of the first element, and employing a misspelling in this way normally signals an intention to confuse users seeking or expecting the complainant. See sections 1.7 and 1.9 of the WIPO Overview 3.0.
Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered trademark TECHINSIGHTS. The disputed domain name incorporates the mark TECHINSIGHTS in its entirety adding a middle letter “o” (“techoinsights”), which may be considered a common misspelling not avoiding the direct perception of the mark. The Complainant’s mark TECHINSIGHTS is therefore recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has alleged that the Respondent is not a licensee nor have him been otherwise authorized to use the trademark TECHINSIGHTS. Furthermore, as the Complainant has asserted the disputed domain name resolves to a website with no real content and unrelated to the term “techoinsights” (or “techo insights”) and to the mark TECHINSIGHTS, which suggests an attempt to use a name materially identical to the mark in an effort to divert Internet users or potential customers to alternative businesses for commercial gain.
This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has chosen not to reply to the Complaint, not providing any explanation and evidence of rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety with a sole common misspelling (adding a middle letter “o”). The Panel considers that this common misspelling may point to an intention to confuse Internet users seeking for or expecting the Complainant, existing a risk of implied affiliation and confusion.
The Panel further considers that the passive holding of the disputed domain name or its use to host a website with no real content (except a link to an Instagram account), does not represent a bona fide offering of goods or services.
The Panel further notes the quite high presence over the Internet of the trademark TECHINSIGHTS in connection to patent and technology analysis and publications.
It is further remarkable the Respondent has chosen not to reply to the Complaint, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interests in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
At the time of the registration of the disputed domain name, this Panel considers it unlikely that the Respondent did not know about TECHINSIGHTS mark, and did not have it in mind. Several factors in this case lead to this conclusion. Particularly, the nature of the disputed domain name as a common misspelling of the mark TECHINSIGHTS, and the high presence of this mark over the Internet, which may lead to consider this mark notorious within its market sector.
The Panel further considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainant’s trademark TECHINSIGHTS in its entirety, introducing a common misspelling (adding a middle letter “o”), which intrinsically creates a likelihood of confusion and affiliation; (ii) the Complainant’s trademark highly presence over the Internet; (iii) the Complainant operates internationally; (iv) the disputed domain name has been inactive, and subsequently used to host a website unrelated to the term “techoinsights” and to the technology field, which does not include any real content except a link to an Instagram account; (v) the trademark TECHINSIGHTS predates in about 20 years the registration of the disputed domain name; (vi) the Complainant owns the domain name <techinsights.com> corresponding to the trademark TECHINSIGHTS under the gTLD “.com” (which is also similar to the disputed domain name), and it has been continuously used in connection to the Complainant’s goods and services, at least, since 2004 (as the Panel has corroborated consulting the WayBack Machine Internet Archive); and (vii) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name, deliberately choosing not to reply to the Complaint.
All these circumstances lead the Panel to conclude that the Respondent registered the disputed domain name targeting the Complainant’s trademark with the intention to attract Internet users to its website for a commercial gain or any other sort of benefit derived from the link to an Instagram account included in the website associated to the disputed domain name.
It is important to note that the Respondent cannot deny responsibility for the content that appears on the website linked to the disputed domain name. The fact that such content or any links included in the disputed domain name have been generated by a third party, such as a registrar, or that the Respondent has not directly benefited, is not sufficient to prevent a declaration of bad faith. See section 3.5, WIPO Overview 3.0.
All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith, targeting the Complainant’s trademark and creating a likelihood of confusion with the Complainant and its mark to misleadingly attract Internet users, possibly disrupting the Complainant’s business. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <techoinsights.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: December 4, 2019
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