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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Woot, Inc. v. KA LUN KWOK
Case No. D2007-0167
1. The Parties
Complainant is Woot, Inc., Carollton, Texas, United States of America, represented by Munck Butrus, P.C., United States of America.
Respondent is KA LUN KWOK, Emeryville, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <woot1.com> is registered with Melbourne IT
trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2007. On February 9, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On February 13, 2007, the registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 28, 2007. 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 March 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 27, 2007.
The Center appointed John R. Keys, Jr. as the sole
panelist in this matter on April 5, 2007. 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
On November 8, 2005, Complainant obtained registration, No. 3,012,788, of the service mark WOOT on the Principal Register of the United States of America in connection with retail services for electrical items; namely, speaker, gaming personnel computer, travel cooler/warmer, surveillance system, remote control robot, mouse, automatic electric mower, video card, fan, multifunction unit of copying, faxing and printing, CRT monitor, hard drive, video recorder, home theater, drive and scanner.
Complainant registered the domain name <woot.com> on January 12, 2000, and maintains an online retail website at “www.woot.com”.
Respondent registered the Domain Name <woot1.com>
on October 31, 2006.
5. Parties’ Contentions
Complainant contends that the disputed Domain Name <woot1.com> is identical or confusingly similar to the registered service mark WOOT in which Complainant has rights.
Complainant contends that it operates an online retail store at “www.woot.com”, a name that it registered on June 12, 2000. It applied in September 2004 to register the trademark WOOT, alleging first use in commerce in July 2004, which predates Respondent’s registration of the Domain Name by more than two years.
Complainant states that its WOOT trademark has become famous as a result of Complainant’s significant investment in the mark and its continuous and exclusive use of the mark. The Woot website attracts thousands of consumer hits per day and a dedicated following of consumers who routinely check the site for news, sales items and general information.
Respondent has registered and used the Domain Name which incorporates Complainant’s trademark in its entirety, adding only the numeral “1”. This, Complainant contends, is insignificant to avoid confusing similarity its service mark and the Domain Name. Respondent is willfully and intentionally infringing Complainant’s intellectual property rights and is engaged in activity directly aimed at diluting and tarnishing Complainant’s trademark and unfairly competing with Complainant.
Complainant contends that Respondent has no right or legitimate interests in respect of the Domain Name. Respondent registered the Domain Name and launched its website well after Complainant commenced use of its mark and website and obtained registration of the WOOT service mark. Respondent was aware of Complainant’s mark and website and in fact makes reference to it on Respondent’s website, stating that it is not “the Woot”. Respondent’s website at “woot1.com” uses a virtually identical structure to that of Complainant’s site with similar pages.
Respondent is not a licensee of Complainant or otherwise authorized by Complainant to use the WOOT mark or the Domain Name. Complainant contends that Respondent is not commonly known by the name woot.com.
Complainant asserts that Respondent is not making a legitimate commercial or fair use of the Domain Name. Respondent’s intent is to mislead and divert consumers for Respondent’s own commercial gain and/or to tarnish the WOOT mark and name. Respondent is attempting to compete against Complainant by using Complainant’s unique business model and by using Complainant’s own name and goodwill against it.
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith. The Panel may consider U.S. trademark law which describes a number of factors demonstrating bad faith, including (1) a domain name holder’s attempt to attract for commercial gain, internet users to respondent’s website . . . 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 the site or location; (2) a domain holder’s lack of prior or bona fide use of the domain name or mark.
Complainant contends that Respondent positioned itself as a direct competitor of the Complainant. The Domain Name is so obviously connected with Complainant’s trademark and its services that its very use by someone with no connection with Complainant suggests “opportunistic bad faith”.
Complainant contends that Respondent attempts to divert consumers from Complainant’s website by using a confusingly similar domain name and providing similar content. The similarity of site content is relevant because there is deception of the consumer and an implied act of unfair competition.
Complainant contends that Respondent is “typosquatting” which is further evidence of bad faith.
Complainant contends that Respondent registered the Domain Name primarily for the purpose of disrupting the business of the Complainant with knowledge that the Complainant is the only entity that could lawfully own the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel first considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules and in hard copy by courier service to the address provided in Respondent’s registration information. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is 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 Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Complainant must first establish that the Domain Name is identical or confusingly similar to Complainant’s service mark.
The Panel finds that Complainant possesses well-established rights in the service mark WOOT, owning a registration on the Principal Register of the United States of America since November 2005 with claimed first use in commerce in July 2004. The Panel finds that the Domain Name, <woot1.com>, is confusingly similar to the WOOT mark in which the Complainant has rights.
“The intentional registration of a domain name knowing that the second
level domain is another company’s valuable trademark weighs in favor of
likelihood of confusion”. Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999). The
Domain Name incorporates Complainant’s WOOT mark in its entirety with
identical spelling. See SENSIS Pty Ltd., Research Resources Pty Ltd. v. Kevin
Goodall, WIPO Case No. D2006-0793.
The Panel notes also that Respondent is likely to have had constructive knowledge
of Complainant’s registered trademark. Microsoft Corporation v. Cupcake
City, WIPO Case No. D2000-0818. There
is a strong inference that Respondent’s use of Complainant’s mark
in the Domain Name was in fact intentional. See Telstra Corp. Ltd. v. Nuclear
Marshmallows, WIPO Case No. D2000-0003.
The Domain Name adds the numeral “1” to
Complainant’s WOOT service mark. This addition has no significance in
terms of negating confusion with Complainant’s service mark. See Verio,
Inc. v. Sunshinehh, WIPO Case No. D2003-0255.
“Generally, a user of a mark may not avoid likely confusion by appropriating
another’s entire mark and adding descriptive or non-distinctive matter
to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition
§ 23:50 (4th ed. 2005). See General Electric Company v. CPIC NET and Hussain
Syed, WIPO Case No. D2001-0087. Respondent’s
addition of the number “1” to Complainant’s mark is not sufficient
to diminish the similarity between the two expressions or the confusing nature
of that similarity. See SENSIS Pty Ltd., Research Resources Pty Ltd. v. Kevin
Goodall, WIPO Case No. 2006-0793;
Viaccess v. Satoliver, WIPO Case No. D2003-0361.
The Panel does not agree with Complainant that this is a case of “typosquatting”, because it does not appear that the intent of the Domain Name is to take advantage of a common spelling or typing error, but this makes little difference here. There is still confusing similarity. In addition, an Internet user searching for Complainant’s company, products or services would likely be confused by Respondent’s Domain Name to think that he/she was being directed to Complainant’s website where he/she could obtain information about or possibly purchase Complainant’s products, which is completely untrue. The Domain Name suggests a sponsorship of, or affiliation with, Complainant’s company which does not in fact exist.
The Panel concludes that the Domain Name is confusingly similar to a service mark in which the Complainant has established rights.
B. Rights or Legitimate Interests
Complainant must establish that Respondent has no rights or legitimate interests in the domain name. See paragraph 4(a)(ii) of the Policy. As a practical matter, this element places some burden on Respondent to come forward with evidence demonstrating its rights and legitimate interests, if any, once Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests. Respondent, in default here, does nothing to assume this burden.
There is no evidence that Respondent is commonly known by the domain name, that Respondent was authorized or licensed by Complainant to use its service mark in the Domain Name or that Respondent is making a legitimate noncommercial or fair use of the Domain Name. See paragraphs 4(c)(ii) and (iii) of the Policy.
The evidence is sufficient for the Panel to infer that Respondent is not using
the Domain Name in connection with a bona fide offering of goods or services.
See paragraph 4(c)(i) of the Policy. The Panel considers that the Respondent
in all likelihood knew of the WOOT service mark before registering the Domain
Name and consciously chose to use that mark in the Domain Name. See Pfizer
Inc. v. NA, WIPO Case No. D2005-0072;
Cellular One Group v. Brien, WIPO Case
No. D2000-0028. The reasonable inference is that Respondent intentionally
used Complainant’s mark in the Domain Name in order to divert Complainant’s
customers to itself and to compete directly against Complainant in the same
type of business. The unlawful use of another’s trademark in this way
cannot be considered bona fide, i.e. in good faith, with respect to an
offering of goods or services. Alta Vista Company v. James A. Maggs,
NAF Case No. FA0095545 (2000).
The Panel concludes that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and that Respondent does not have rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Finally, Complainant must show that Respondent both registered and is using the Domain Name in bad faith. See paragraph 4(a)(iii) of the Policy.
There is substantial authority that registration of a domain name that is confusingly
similar to a famous trademark by any entity that has no relationship to that
mark is itself sufficient evidence of bad faith registration and use. Sporty’s
Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000);
Pfizer Inc. v. NA, WIPO Case No. D2005-0072;
Viaccess v. Satoliver, WIPO Case No. D2003-0361;
AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,
WIPO Case No. D2002-0440; America Online,
Inc. v. Anson Chan, WIPO Case No. D2001-0004;
Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163 (use of a name
connected with such a well-known product by someone with no connection with
the product suggests opportunistic bad faith). Respondent either knew or ought
to have known of Complainant’s service mark when he used it in registering
the Domain Name.
The evidence of bad faith is even more convincing where, as here, Respondent
appears to have intended to establish himself as a direct competitor of the
Complainant, not only using Complainant’s mark but also using it to conduct
the same type of business and in much the same manner as Complainant. See
Viaccess v. Satoliver, WIPO Case No. D2003-0361.
The content of Respondent’s website thus becomes relevant to establishing
the element of bad faith use of the domain name at issue. Edmunds.com, Inc.
v. Digi Real Estate Foundation, WIPO Case
No. D2006-1043. Where the consumer, having used a confusingly similar domain
name, reaches a website offering goods or services similar to those offered
on Complainant’s website, there may be not only consumer confusion but
actual deception as to the source of the goods or services. Id.
Accordingly, the Panel concludes that Respondent both registered and is using
the domain name <woot1.com> in bad faith. Complainant has established
the third and final element of its case.
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 <woot1.com> be transferred to Complainant.
John R. Keys, Jr.
Dated: April 19, 2007