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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wilmington Trust Company v. Domaincar

Case No. D2006-0045

 

1. The Parties

The Complainant is Wilmington Trust Company, Wilmington, Delaware, United States of America, represented by Cozen O’Connor, Philadelphia, Pennsylvania, United States of America.

The Respondent is Domaincar, Panama, Panama.

 

2. The Domain Names and Registrar

The disputed domain names <wilmigntontrust.com>, <wilmingotntrust.com>, <wilmingtntrust.com>, <wilmingtontrustbank.com>, <wlmingtontrust.com>, <wwwwilmingtontrust.com> are registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2006. On January 12, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain names at issue. On January 18, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 16, 2006. The Center verified that the Complaint, together with the amendment to 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 February 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2006.

The Center appointed Ian Blackshaw as the Sole Panelist in this matter on March 21, 2006. 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 financial services company providing banking, wealth management and specialized corporate services to clients throughout the United States and in more than 50 other countries. The Complainant was founded in 1903, and is the 15th largest personal trust provider in the United States, as well as the leading retail and commercial bank in Delaware, United States. The Complainant and its affiliates have offices in California, Delaware, Florida, Georgia, Maryland, Nevada, New York, Pennsylvania, South Carolina, Vermont, all in the United States; and the Cayman Islands, the Channel Islands, London, and Dublin. During its one hundred years of use of the WILMINGTON TRUST trademark, the Complainant has been building long-term relationships with its clients, and creating long-term value for its shareholders.

The Complainant has conducted extensive advertising, marketing and promotion of its WILMINGTON TRUST trademark, trade name and service mark. The Complainant manages over US$38 billion worth of assets for its customers.

In accordance with the Complainant’s common law rights, the Complainant filed with the United States Patent and Trademark Office (USPTO) an application to register the WILMINGTON TRUST mark on October 3, 2000. The USPTO granted the Complainant registration for the mark WILMINGTON TRUST on December 17, 2002, under Registration No. 2661570 for banking services; financial services, namely, mortgage lending; commercial, retail and consumer investment services, namely trust administration; investment consultation; and stock brokerage services in International Class 36. The registration clearly identifies the first use date of 1903. A copy of the TARR page of the USPTO has been provided to the Panel.

As a result of the Complainant’s more than 100 years of business, offering of services, and promotional activities, and, in view of the thousands of customers that have utilized the Complainant’s goods and services, the Complainant’s WILMINGTON TRUST trademark, trade name and service mark are famous.

The Complainant is the owner of the domain name <wilmingtontrust.com>, used in connection with on-line banking services and financial services. This domain name was registered with Network Solutions, LLC on July 4, 1996. A copy of the Complainant’s registration of this domain name from the Whois database of Betterwhois.com has been provided to the Panel.

The Complainant promotes its goods and services, prominently displaying and emphasizing the WILMINGTON TRUST trademark, trade name and service mark, through its <wilmingtontrust.com> domain name. As evidence thereof, the Panel has been provided with printouts of pages from the Complainant’s website at “www.wilmingtontrust.com”.

The Complainant has attempted to protect its interests in its trademark and domain name by owning the domain names of misspellings of its WILMINGTON TRUST trademark. Accordingly, the Complainant owns domain names including but not limited to the following:

<wilmngtontrust.com>

<wilmingtintrust.com>

<wilmimgtontrust.com>

<wilningtontrust.com>

<wilmongtontrust.com>

When an Internet user mistakenly types in any of the above domain names, the user is directed to the Complainant’s “www.wilmingtontrust.com” website.

The Respondent owns, at least, the following domain names:

<wlmingtontrust.com>

<wilmingtontrustbank.com>

<wilmingtntrust.com>

<wwwwilmingtontrust.com>

<wilmigntontrust.com>

<wilmingotntrust.com>

(collectively hereinafter referred to as the “disputed domain names”).

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain names are confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Respondent’s disputed domain names are effectively identical to the Complainant’s WILMINGTON TRUST trademark and its <wilmingtontrust.com> domain name.

Each of the Respondent’s disputed domain names are one- or two-letter misspellings of the Complainant’s registered trademark and domain names, and are likely to cause confusion, mistake or deception among the trade and public.

The Respondent registered the disputed domain names after the Complainant received its United States Federal registration for its WILMINGTON TRUST trademark, and long after extensive sales of the Complainant’s goods and services under the WILMINGTON TRUST trademark.

A2. The Respondent has no rights or legitimate interests in respect of the domain names;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent has no legitimate commercial or private interest in the Complainant’s WILMINGTON TRUST trademark or its related domain names.

The Respondent is not known by the disputed domain names in the industry, nor is it known for any services it provides under the disputed domain names. In fact, the Respondent’s websites associated with the disputed domain names do not provide any services to the public, only links to financial institutions that compete with the Complainant.

An Internet user who mistakenly types in one of the disputed domain names registered by the Respondent is directed to a website that provides links to financial institutions that are in direct competition with the Complainant. For example, when an Internet user mistakenly types in the domain name <wilmingtntrust.com>, the Internet user is displayed several links to financial institutions. A copy of the website associated with this domain name has been provided to the Panel. The Internet user may then select one of the links, which directs them to the selected financial institution’s on-line website. Examples of some of the websites that the Internet user is directed to when selecting one of the financial institutions from the Respondent’s website have also been provided to the Panel.

It is clear that the Respondent is attempting to take commercial advantage of the Complainant’s trademark and commercial reputation and to trade off the Complainant’s goodwill.

A3. The domain names were registered and are being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Respondent’s adoption and use of the disputed domain names is in bad faith, has continued with full knowledge of Complainant’s prior rights, and is a willful infringement of Complainant’s prior rights.

The Respondent is using the misspelling of the Complainant’s trademark and domain name for its own commercial gain, by diverting Internet users to its search engine website featuring links to the websites of other financial institutions’ websites in direct competition with the Complainant’s business in order to receive compensation for directing a user to such a website.

Customers and prospective customers searching for Wilmington Trust on the Internet may mistakenly type in one of the disputed domain names when trying to reach the Complainant’s website. When one of the disputed domain names is typed in, the customer will not find the Complainant’s website as expected, but instead the customer will find a page that provides links to competing financial institutions. Such customers and prospective customers may stop searching for Wilmington Trust online, or visit a competing financial institution’s website instead, resulting in lost customers, lost business and loss of reputation of the Complainant.

Accordingly, the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark and domain names.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for transfer of the disputed domain names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain names incorporate the trademark WILMINGTON TRUST, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its services as a trademark for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark WILMINGTON TRUST is well-established and well-known to and has a good reputation in the financial services’ industry. Indeed, the Panel further accepts the Complainant’s assertion that its trademark WILMINGTON TRUST has become a famous mark.

The misspellings of this mark in the case of four of the disputed domain names is, in the view of the Panel, irrelevant in the present context (but see below). Likewise, the addition of the suffix ‘www’ in one of the other disputed domain names makes no material difference either. Also, the addition of the word ‘bank’ is immaterial being a descriptor; a fortiori, in view of the nature of the Complainant’s business, which is in the financial sector, including banking services. The addition of the word ‘bank’ adds to the confusion. Thus, the disputed domain names essentially incorporate the Complainant’s well-known trademark and also its business name.

In view of this, the Panel finds that the disputed domain names registered by the Respondent are confusingly similar to the trademark WILMINGTON TRUST, in which the Complainant has clearly demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration and also extensive exclusive commercial use in the financial services’ industry.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain names (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain names. In fact, the Respondent’s failure to answer the Complaint tends to show that the Respondent does not have any such rights or interests, otherwise the Respondent would have asserted them. In other words, the Respondent’s silence is tantamount to admitting the Complainant’s case (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). Indeed, in view of the worldwide notoriety and fame of the Complainant’s trademark WILMINGTON TRUST and the products and services which it identifies, the Respondent must have known that, when registering the disputed domain names, the Respondent could not have, or indeed, have claimed any such rights or interests.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain names for websites that direct Internet users not to the Complainant but to its competitors.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor is it making a legitimate non-commercial or fair use of the domain names; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trademark WILMINGTON TRUST as part of the disputed domain names.

Furthermore, the adoption by the Respondent of domain names confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website, to the Respondent’s websites (see further on this point below) and the links there to competitors of the Complainant, with the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading, for commercial gain, on the good name, worldwide notoriety and well-earned reputation of the Complainant’s business and its famous trademark and thereby unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years throughout the world in its name and mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so. Indeed, as was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites “shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”. Also, as was stated in Hoffman-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288: “Whether or not Respondent profits directly from the redirection of the disputed domain name to a commercial website is not determinative. The fact is that someone other than Complainant is profiting from the use of the disputed domain name – a name that is confusingly similar to Complainant’s mark. Consequently, the for-profit nature of the use of the disputed domain name may be imputed to Respondent. Also, it is simply not reasonable to assume that Respondent is merely providing a public service when redirecting Internet users to a particular commercial website”.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain names, is trading on the Complainant’s valuable goodwill established in its trademark WILMINGTON TRUST over many years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain names would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s renown in the financial services’ field. This is reinforced by the links on the websites of the Respondent (referred to above), which refer not to the Complainant or its products and services but to third parties and their products and services.

Again, by registering and using the disputed domain names incorporating the Complainant’s trademark WILMINGTON TRUST, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which is, in fact, the case.

The Respondent appears to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith.

Furthermore, the misspellings of the Complainant’s well-known trademark in four of the disputed domain names and the variations in the other two, coupled with the links to competitors of the Complainant, would not, as noted above, appear to be accidental, but deliberate on the part of the Respondent. Indeed, such ‘typosquatting’, defined in American Girl, LLC v. Nameview, Inc., 381 F.Supp.2d 876, 879 No. 1 as: “…. the bad faith act of using misspellings or variations of legitimate domain names in order to trick individuals into viewing ….unrelated websites” constitutes bad faith, because a website with a domain name consisting of a common misspelling, often the result of mistyping or, indeed, foreseeable typographical errors, of a famous trademark generates Internet traffic unfairly. See also Convergys Corporation v. Roshni Sohail, WIPO Case No. D2006-0043, involving the disputed domain name <convergs.com>. The present case, in the view of the Panel, is a classic example of so-called ‘typosquatting’ and constitutes bad faith on the part of the Respondent.

Finally, the failure of the Respondent to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also indicates bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.

 

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 <wilmigntontrust.com>, <wilmingotntrust.com>, <wilmingtntrust.com>, <wilmingtontrustbank.com>, <wlmingtontrust.com>, <wwwwilmingtontrust.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: March 22, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0045.html

 

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