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WIPO Arbitration and
Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan
Case No. D2004-0430
1. The Parties
The Complainant is Lowen Corporation d/b/a Lowen Sign Company, Hutchinson, Kansas, United States of America, represented by Martindell, Swearer & Shaffer, LLP, Hutchinson, Kansas, United States of America.
The Respondent is Henry Chan, Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <lowensigns.com> is registered with iHoldings.com
Inc. d/b/a DotRegistrar.com, Miami, Florida, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2004. On June 11, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On June 14, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com (hereinafter “Registrar”) transmitted by email to the Center its verification response confirming that the disputed domain name is registered with the Registrar. In this initial response, the Registrar stated that the Respondent is not the current registrant and provided the details of the registrant in its records (an entity called Horoshiy Inc.). In an email dated June 22, 2004, the Center informed the Registrar that, further to additional checks in the WHOIS database, it transpired that the registrant record was updated on June 14, 2004, three days after the filing of the Complaint. The Center reminded the Registrar of paragraph 8(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), by virtue of which a domain name registration may not be transferred during a pending administrative proceeding.
Further to this clarification, the Registrar proceeded to cancel the transfer to Horoshiy Inc, and confirmed in an email on June 22, 2004, that the Respondent is listed as the current registrant and provided the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2004.
The Center appointed Nasser A. Khasawneh as the sole
panelist in this matter on July 21, 2004. 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 producer of signs, metal yard signs, yard sign accessories, hardware for attaching rider signs to the main yard sign, and metal stakes for supporting yard signs. The Complainant, which does business as the Lowen Sign Company, has customers throughout the world and was incorporated in the State of Nevada in 1984, and in Kansas in 1986.
The word “lowen” is a registered trademark of the Complainant in the United States of America. LOWEN was registered as a word mark for goods and services in the United States, with the filing date being August 18, 2000, and the registration date, March 19, 2002. The mark has been used by the Complainant for a number of years.
The Complainant registered the domain name <lowensign.com> in 1996, and the website under this name has been operational since then.
It is therefore confirmed that the Complainant has been running a viable business under the trademark LOWEN for a number of years, and the sign is associated in the market with the Complainant.
The Respondent registered the domain name <lowensigns.com> on August 15, 2003. Visitors to <lowensigns.com> are automatically directed to the website “http://dp.information.com” which serves, and advertises itself, as a search engine. The first page that appears on this site, when the automatic redirection from <lowensigns.com> takes place, provides search results related to the real estate business. The search results include sites targeted at home buyers such as <homegain.com>, and those interested in signs such as <signssupercheap.com>.
This site also causes several pop-ups to appear on
the visitor’s screen. When the Panel accessed this site, the pop-ups that
sprung up included a search page operated by “http://search.domainsponsor.com”,
an advertisement for free emoticons, and a page promoting an anti-spam program.
<domainsponsor.com> operates a revenue program by virtue of which domain
name holders can “monetize their traffic in a more efficient, profitable
manner.” <domainsponsor.com> offers domain name owners a commission
of 50% of revenues generated from searches and pop-ups in respect of users directed
to its website through the concerned domain owners’ site.
5. Parties’ Contentions
The Complainant contends that:
- The domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant claims that <lowensigns.com>, the dispute domain name, is confusingly similar to “Lowen Sign” and that confusion between the domain name and “Lowen Sign” may occur, in particular due to mistyping or misspelling;
- The Respondent has no rights or legitimate interests in respect of the domain name. In making this assertion, the Complainant elaborates on the Respondent’s use of the disputed domain name to re-divert traffic to a commission-offering search engine. The Complainant also draws attention to the fact that the Respondent has been involved in numerous WIPO Administrative Panel Decisions;
- The website was registered and is being used in bad faith. In addition to the use of the website to obtain a commission from diverted traffic, the Complainant states that bad faith is evidenced further by the mention on the website that it is “Your source for the most popular Lowensigns info.”
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Pursuant to paragraph 4 of the Policy, the Complainant must convince the Panel that three cumulative conditions are met:
(a) That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
The Panel will now consider each of these three tests in turn.
A: Identical or Confusingly Similar
The Complainant has established to the satisfaction of the Panel that it has a valid registration of the LOWEN word mark in the United States of America; this was also confirmed by the Panel through an online trademark search through WIPO’s trademarks portal. The Panel also accepts the fact that the Complainant has used the said mark on a variety of signs for a number of years. The Complainant has established goodwill and a substantial business reputation under the trademark LOWEN and the name “Lowen Sign.” The average reasonable customer, who is familiar with the type of signs produced by the Complainant, would immediately associate this trademark with the Complainant.
The Panel also notes the fact that the Complainant has run the online arm of his business under the domain name <lowensign.com> for almost eight years. The registration of <lowensign.com> precedes that of the disputed domain name by seven years.
A simple comparison of the Complainant’s word mark and the disputed domain name reveals the extent of the similarity between the two. The protected word mark LOWEN appears in its entirety in the disputed domain name “<lowensigns.com>.” In fact, the word “Lowen” is the distinctive and defining part of the domain name, as the word “signs” is a generic term.
Furthermore, the disputed domain name is almost identical to that of the Complainant.
The only difference is in the addition of the common plural signifier “s”
in the disputed domain name. In several previous WIPO Administrative Panel Decisions,
the addition of the common plural signifier was seen to be insignificant to
the determination of the existence of confusing similarity. One such case, Halcyon
Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336,
involved the same Respondent. In Medtronic, Inc. v. gotdomains4sale.com,
WIPO Case No. D2001-1033, the Panel
specifically noted that “adding or deleting the plural “s”
from a corporate name is a common mistake consumers make when referring to companies
and/or their marks.” In Superior Windmill Inc. v. JL Company/John Longenecker,
WIPO Case No. D2004-0295, the Panel held that
“suffixes such as the use of a plural word or a country designation do
not alter the fact that the domain names are essentially the same as the trademarks.”
Consequently, the Panel finds that the disputed domain is confusingly similar to the registered and used trademark of the Complainant.
B. Rights or Legitimate Interests
As described above, it is evident to the Panel that the Respondent uses the disputed domain name for the purpose of redirecting visitors to “http://dp.information.com”, a search engine operated by <domainsponsors.com>. The latter operates a revenue program by virtue of which domain name holders can “monetize their traffic” by earning a commission on revenues generated from searches and pop-ups in respect of users directed to its website through the domain owners’ site. In other words, the sole purpose behind the Respondent’s registration and operation of the disputed domain name is to make money from redirected Internet traffic.
There is no content that is specific to the disputed domain name. The only content of the site is links to other websites in the business of real estate and signs. The use of the domain in such a way does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest. This conclusion is supported by several WIPO Administrative Panel Decisions, including a number of cases involving the same respondent. We refer to the following precedent Panel decisions by way of example:
- Deloitte Touche Tohmatsu v. Henry Chan, WIPO
Case No. D2003-0584;
- Microcourt Limited v. Mr. Henry Chan, WIPO
Case No. D2004-0075;
- Cancer Treatment Centers of America, Inc. CTCA) v. Henry Chan,
WIPO Case No. D2003-0611
- Gannett Co., Inc. v. Henry Chan, WIPO Case
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. None of these circumstances apply to the Respondent in this case. There is nothing that suggests, even remotely, that the Respondent uses the domain name in connection with a “bona fide offering of goods or services,” or that the Respondent is commonly known by the domain name, or that the Respondent is “making a legitimate or non-commercial use of the domain name.” On the contrary, the record shows that the opposite is true.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name, and the second condition under paragraph 4(a) of the Policy is met.
C: Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which, if found by the Panel to be present, “shall be evidence of the registration and use of the domain name in bad faith.” One of these circumstances, as stipulated in paragraph 4(b)(iv), is the intentional attempt by the registrant of the disputed domain name “to attract, for commercial gain, internet users to [his/her] website or other on-line location, by creating a likelihood of confusion, with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [his/her] website or of a product or service on [his/her] website or location.”
The Panel finds that this illustration of bad faith in the Policy applies to the case at hand. As the undisputed record shows, the Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links for businesses in the same field as that of the Complainant, i.e. signs, real estate, etc. It is clear to the Panel that the Respondent aims to use the confusion of the disputed domain name with the registered trademark of the Complainant as a hook for customers who, once on his site, will be lured into visiting the sponsored links thereon in return for the aforementioned monetary commission.
There are other factors that further prove to the Panel that the Respondent’s
registration and use of the disputed domain name fall within the concept of
bad faith. Most importantly, it is clear that the Respondent’s registration
and use of the disputed domain name are part of a flagrant pattern of conduct.
The Panel notes the unusually high number of WIPO Administrative Panel Decisions
and other UDRP-based decisions involving the same Respondent, Mr. Henry Chan.
As was noted in Microcourt Limited v. Mr. Henry Chan, WIPO
Case No. D2004-0075, the Respondent was involved in a large number of cases
under the UDRP, including:
Royal bank of Canada v. Henry Chan, WIPO
Case No. D2003-0031; Federated Western Properties, Inc. v. Henry Chan,
WIPO Case No. D2003-0472; Deloitte
Touche Tohmatsu v. Henry Chan, WIPO Case
No. D2003-0584; Cancer Treatment Centers of America, Inc. v. Henry Chan,
WIPO Case No. D2003-0611; LTD Commodities
LLC v. Henry Chan, NAF Case No. FA00152617; Pioneer Hi-Bred International
Inc. v. Henry Chan, NAF Case No. FA00154119; Bedford Fair Apparel, Inc.
v. Henry Chan, NAF Case No. FA00157322; Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Henry Chan, NAF Case No. FA00161468; American Stores
Company v. Henry Chan, NAF Case No. FA00161567; Yahoo! Inc., GeoCities,
HotJobs.com Ltd., and Launch, NAF Case No. FA00162050; Media, Inc. v.
Henry Chan; Rock Financial, A Quicken Loans Company v. Henry Chan, NAF Case
No. FA00167917, The Sports Authority Michigan Inc. v. Henry Chan, NAF
Case No. FA00176552, Popular, Inc. v. Henry Chan, NAF Case No. FA00183739.
As noted by the Panel in Microcourt Limited v. Mr. Henry Chan, WIPO
Case No. D2004-0075, in each of the above cases, the Respondent was found
to have registered and used the disputed domain names in bad faith.
One of the Complainant’s contentions is that that the Respondent’s site refers to itself as “your source for the most popular Lowensigns info.” When the Panel visited the Respondent’s site, it seemed that this particular statement has been removed. While the Panel took note of this fact, it considers it of little value compared to the other overwhelming evidence that the registration and use of the disputed domain name are in bad faith.
The Panel is left in no doubt that the third test under paragraph 4(b) is met.
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 <lowensigns.com> be transferred to the Complainant.
Nasser A. Khasawneh
Dated: August 5, 2004