WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WagJag Ltd. v. Roy Beuthling Beuthling

Case No. DCO2011-0047

1. The Parties

The Complainant is WagJag Ltd. of Toronto, Ontario, Canada, represented by Deeth Williams Wall, LLP, Canada.

The Respondent is Roy Beuthling Beuthling of Burlington, Wisconsin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wagjag.co> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On August 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 2, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 4, 2011, the Center sent to the Complainant a complaint deficiency notification concerning the mutual jurisdiction issue, since the Complaint did not include a submission to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, which must be expressly identified, as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the”Rules”), paragraph 3(b)(xiii). On August 8, 2011, the Complainant filed an amended Complaint but did not elect the submission to at least one specified Mutual Jurisdiction. On August 11, 2011, the Center sent an email communication to the Complainant, inviting it to amend the Complaint with the submission to at least one specified Mutual Jurisdiction. On August 16, 2011, the Complainant filed an amended Complaint.

The Center verified that the Complaint together with the amended to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2011.

The Center appointed Jonathan Agmon as the sole panelist in this matter on September 13, 2011. 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 a Canadian company, which provides an online service that offers, among others, group discount vouchers for third parties products and services, price comparison information, product and service reviews, links to the retail websites of others and discount information.

The Complainant currently offers its service on its websites at the domain names <wagjag.com> and <wagjag.ca>.

The domain <wagjag.com> was registered on August 19, 2003. From 2003 to 2009 this domain name was used to market the Complainant’s and its affiliates’ digital publishing business. The <wagjag.com> domain name has been in active use in its current form, to promote the goods and services of others, since at least December 20, 2009.

The domain name <wagjag.ca> was registered October 6, 2009, and has been in active use since at least December 20, 2009.

The Complainant has filed Canadian trademark application number 1502323 for WAGJAG, on November 3, 2010. The application is pending.

The disputed domain name was formerly registered under the name of “Maria Beuthling”, who resides in Barrie, Ontario, Canada. The Complainant sent Ms. Beuthling a cease and desist letter on February 15, 2011, demanding to cease from infringing the Complainant's mark and that the disputed domain name be transferred to the Complainant. The Complainant received no response.

A subsequent WhoIs search of the disputed domain name by the Complainant indicated that the registration was updated on February 20, 2011. Roy Beuthling Beuthling, the current Respondent, is now shown as the registrant.

The disputed domain name resolves to a mirror site of the website under the domain name <itemtrader.ca>. The disputed domain name incorporates a link titled "coupon deals – save more", which leads to a webpage containing various pay-per-click links.

The disputed domain name used to resolve to a website displaying advertisements containing the Complainant’s mark, links to websites, operated by the Complainant’s competitors and links to other domain names whose registrant of record identity is “Maria Beuthling”.

The disputed domain name was created on December 1, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Complainant argues that the WAGJAG mark has been widely promoted among the public and exclusively identifies the Complainant. The Complainant contends that it acquired common law rights in the WAGJAG mark.

The Complainant further argues that the disputed domain name is identical to the Complainant's WAGJAG mark, except for the country code extension “.co”, which is not distinguishing. The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s domain names <wagjag.com> and <wagjag.ca>, the difference being only one letter off in each case.

The Complainant further argues that the Respondent has no rights or legitimate interest in the disputed domain name, as the website under the disputed domain name used the Complainant's logo in the title, and in the body of the website itself, which linked to the Complainant's website via a banner advertisement.

The Complainant further argues that the Respondent has registered the disputed domain name in an attempt to attract for commercial gain Internet users to the website, by intentionally misleading them and creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.

The Complainant further contends that the Respondent is using Google Ads in order to generate revenue from the disputed domain name.

The Complainant further contends that the Respondent is not known by the disputed domain name.

The Complainant further contends that the Respondent is not using the website under the disputed domain name for any noncommercial or fair use purposes.

The Complainant further contends that transferring the registration of the disputed domain name to the Respondent, shortly after receiving the Complainant's cease and desist letter, while continuing to display links to a series of at least five other websites owned by “Maria Beuthling”, clearly demonstrates that both the previous registrant and the current Respondent’s infringement of the Complainant’s rights was and continues to be willful and in bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submitted evidence showing that it filed Canadian trademark application number 1502323 for WAGJAG, on November 3, 2010. This submission of an application for registration of the trademark does not establish rights in a trademark.

Nevertheless, the absence of a trademark registration at the time of the registration of the disputed domain name does not necessarily preclude a finding by the Panel that the Complainant has the requisite rights in that mark for purposes of paragraph 4(a)(i) of the Policy. Many previous UDRP panels have found complainants with common law trademark rights sufficient to satisfy the degree of trademark or service mark ownership required under paragraph 4(a)(i). (see, for example, Pilgrim Films and Television Inc. v. Brandon Bator, NAF Case No. FA909831 and Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000, WIPO Case No. D2006-0431).

In order to prove that the Complainant acquired common law rights, the Complainant needs to demonstrate that the mark is distinctive or has achieved "secondary meaning". Previous UDRP panels have considered various factors, such as longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition to determine such a result (see Fairview Commercial Lending, Inc. v. Aleksandra Pesal,jWIPO Case No. D2007-0123, Control Techniques Limited v. Lektronix Ltd; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083).

The Complainant's WAGJAG mark itself is not a generic or descriptive English term. Also, the Complainant has provided evidence demonstrating its prior use of the WAGJAG mark since at least October 2009, as well as extensive online advertisements and marketing campaigns.

Taking into account the distinctiveness of the Complainant's mark and the extent which the Complainant had been using and promoting it, the Panel determines that the Complainant has demonstrated it achieved common law trademark rights in the WAGJAG mark for purposes of the Policy.

It should be noted that the addition of the country code “.co” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The gTLD “.co” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its WAGJAG mark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).) .

Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name is resolved to.

The disputed domain name leads Internet users to a website that incorporates a link titled "coupon deals – save more", which leads to a webpage containing various pay-per-click links. Also, the disputed domain name used to resolve to a website displaying advertisements containing the Complainant’s logo, as it appears on the Complainant's websites and links to websites of the Complainant’s competitors.

Using the website under the disputed domain name, which incorporates the Complainant trademark, for services that are regularly provided by the Complainant, is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its WAGJAG mark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of the Complainant’s mark. The former use of the Complainant's logo further supports this fact. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith".

In addition, the Panel notes that the similarity in the names of the former registrant and the Respondent, as well as the timing in which the registration of the disputed domain name was changed, imply that there is a connection between them. Taking this into account, it can be inferred that the Respondent's failure to reply to the Complainant's cease and desist letter constitutes additional evidence of the Respondent's bad faith (ALSTOM v. STOCKMARKET DOMAINS, WIPO Case No. D2008-1542).

Based on the evidence presented to the Panel, including the use of the disputed domain name in order to promote services that are regularly provided by the Complainant, the use of the Complainant’s trademark and logo on the website under the disputed domain name, and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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, <wagjag.co>, be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: September 27, 2011