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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Talx Corporation v. Husam Abboud
Case No. D2007-0186
1. The Parties
The Complainant is Talx Corporation, Saint Louis, Missouri, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Husam Abboud, Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <taxl.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2007. On February 13, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same date, Go Daddy Software transmitted by email to the Center its verification response confirming that the 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, the Complainant filed an amendment to the Complaint on February 21, 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 February 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2007.
The Center appointed David Perkins as the sole panelist in this matter on March 28, 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.
On April 3, 2007, pursuant to Rules paragraph 12, the Panel issued an Interim Order in the following terms:
“The Panel notes that in Section 5E of the Complaint reference is made to a Reverse Whois Search against the Respondent’s name which has produced a number of domain names registered in the Respondent’s name. Those domain names are listed in Annex 8 to the Complaint. The Complainant states that many of those domain names ‘... appear to infringe upon the rights of legitimate trade mark owners.’
The Panel hereby requests the Complainant to identify which of the domain names in Annex 8 infringe third party trademarks. Complainant’s Response is requested by Wednesday April 5, 2007.”
Complainant’s Response to that Interim Order was duly received on April 5, 2007.
4. Factual Background
4.A.1 The Complainant’s Business
4.A.1.1 The Complainant describes itself as a leading provider of a broad portfolio of payroll and human resources services for commercial entities, which services it has provided since at least 1994 under the TALX mark. For more than 10 years the Complainant has provided under and by reference to the TALX mark a variety of such services, including employment verification services, unemployment tax management services, tax credit and incentives consultation, electronic payroll services and automated tax form services.
4.A.1.2 On its website, the Complainant says that it is the market leader in two of its chosen fields, namely (1) outsourced employment and income verifications, and (2) outsourced unemployment cost control. The Complainant’s TALX paperless pay solutions claim to provide employees with universal and secure access to pay data via intranets, portals, phone, and web.
4.A.1.3 The Complainant is a publicly traded company with over 1000 employees and more than 10,000 clients. Its stock trades on NASDAQ under the symbol TALX.
4.A.2 The Complainant’s TALX Trademark
4.A.2.1 The Complainant is the proprietor of US registered trademark No. 2,816,829 for TALX in Class 35. That registration was filed on April 8, 2003, registered on February 24, 2004 and claims first use in commerce on May 12, 1994.
4.A.2.2 The Complainant is also the proprietor of Canadian registered trademark No. 659,617 in Class 35. That registration claims priority from the US registration referred to in paragraph 4.A.2.1 above. The Canadian application was filed on October 1, 2003 and registered on February 22, 2006.
4.A.3 The TALX domain name
The Complainant operates and maintains its primary website under the domain name <talx.com>. That domain name was registered on May 4, 1995.
4.B The Respondent
4.B.1 In the absence of a Response, all that is known
of the Respondent is that he signs himself as Dr. Husam ABBOUD from the Qasr
Al-Aini Hospital, Cairo, Egypt. Apart from the domain name in issue, he is also
the registrant of some 228 other domain names.
5. Parties’ Contentions
5.A.1 Identical or Confusingly Similar
5.A.1.1 The Complainant is the proprietor of US and Canadian registrations for the mark TALX. Use of that mark dates from 1994. The US registration was filed in April 2003 and registered in February 2004. The Canadian registration was filed in October 2003 and granted in February 2006.
5.A.1.2 The Complainant also claims exclusive common law rights in the TALX trademark by virtue of its continuous and widespread use. The Complainant says that it has expended a substantial amount of resources, money, time and effort promoting, marketing, advertising and building consumers’ recognition and goodwill in its TALX brand services. As a consequence, the Complainant asserts that the TALX mark has acquired substantial notoriety, secondary meaning, and consumer recognition.
5.A.1.3 The Complainant’s case is that the domain
name in issue is identical to the TALX trademark, save that the L and X have
been transposed to <taxl.com>. As such, it is confusingly similar to the
TALX trademark, both in appearance and phonetically. For example, where –
as in this case – the domain name incorporates the registered TALX mark,
such is sufficient to establish identity or confusing similarity for the purposes
of the Policy. The Complainant cites in this connection Magnum Piering, Inc.
v. The Mudjackers and Garwood S. Wilson, Sr., WIPO
Case No. D2000-1525.
5.A.1.4 In further support of its case on confusing similarity, the Complainant relies on three propositions. First, that Internet Users commonly mis-type domain names. If the Complainant’s TALX mark and domain name is mistyped, transposing the “L” and “X”, the Internet user will be taken to the Respondent’s website at “www.taxl.com”, which offers inter alia services that compete with its business. For example, clicking on to “Pay Stubbs” on the Respondent’s website to which the domain name in issue resolves, directs the user to a page containing links to third-party vendors offering services directly competitive to those which the Complainant provides under the TALX mark. This, the Complainant says, is illustrative of confusing similarity between the domain name in issue and the TALX trademark.
5.A.1.5 Second, case law developed under the Policy
has condemned what has become known as “typo-squatting” or “typo-piracy”,
which occurs where the domain name in issue is – as it is in this case
– a minor misspelling of the Complainant’s trademark. The Complainant
cites Dell Computer Corp .v. Clinical Evaluation, WIPO
Case No. D2002-0423; Six Continents Hotels Inc .v. John Zuccarini, WIPO
Case No. D2003-0161, and Hobson, Inc .v. Carrington, WIPO
Case No. D2003-0317.
“Domain names which constitute typo-squatting
are confusingly similar by definition; it is this similarity which makes them
attractive.” Dell Computer Corp .v. Clinical Evaluation, WIPO
Case No. D2002-0423.
5.A.1.6 Third, minor misspellings and typographical errors are far more likely to impact on Internet users than on would-be purchasers in a traditional retail context where they purchase goods and/or services at a particular physical location. For example, cases decided under the Policy have found confusing similarity in the following:
Respondent’s Domain Name
American Home Products Corp .v. Privateer Ltd,
WIPO Case No. D2000-0455
ESPN .v. West Coast Entertainment Inc, NAF Case No. FA95047
Gorstew Ltd & Unique Vacations Inc .v. JJ Domains,
NAF Case No. FA96872
CEC Entertainment Inc .v. Momm Amed 1a, NAF Case No. FA95740
CHUCK E CHEESE
CHUCK E CHEESE’S
Phone-N-Phone Services (Bermuda) Ltd .v. Shlomi
(Salomon) Levi, WIPO Case No. D2000-0040
Briefing.com Inc .v. Cost Net Domain Manager,
WIPO Case No. D2001-0970
5.A.2 Rights or Legitimate Interests
5.A.2.1 The domain in issue was registered in May 2005 by which time the Complainant had been trading for over a decade, was very well – known in its fields of business and was also the proprietor of the US registered TALX trademark. Accordingly, it is to be assumed (the Complainant says) that the Respondent registered the domain name in issue in the knowledge of the Complainant and its businesses carried out under the TALX trademark. Further, the Complainant has not licensed or otherwise authorized the Respondent to use the TALX trademark.
5.A.2.2 It is not, the Complainant says, a bona
fide offering of goods or services to use a domain name which is confusingly
similar to the TALX trademark in the knowledge that the domain name will likely
divert consumers to a website offering services directly competitive with those
of the Complainant. In this respect, the Complainant cites the decision in Madonna
Ciccone, p/k/a Madonna .v. Dan Parisi, WIPO
Case No. D2000-0847. In that case, the domain name in issue <madonna.com>
resolved to an adult entertainment site. Held, no rights or legitimate interest,
since the Respondent had registered and had used that domain name to trade on
the fame of the singer’s trademark and, consequently, use of the domain
name could not amount to a bona fide offering of goods or services.
5.A.2.3 For the same reason, the Respondent’s
use of the domain name in issue cannot qualify as a legitimate or fair use.
There is no disclaimer or equivalent explanation on the Respondent’s website
and, given the notoriety of the TALX trademark, it is plain that the Respondent
is merely trading-off the reputation of that trademark and thereby tarnishing
the mark. The Complainant cites Oki Data Americas, Inc .v. Albert Jackson,
WIPO Case No. D2004-0087, where use of
the OKI trademark as a domain name, <okidataprinter.com> was found neither
to be a bona fide use of that domain name, nor a legitimate or fair use
of the domain name either.
5.A.2.4 The Complainant also points to the absence of any evidence that the Respondent has himself been commonly known by the <taxl.com> domain name.
5.A.3 Registered and Used in Bad Faith
5.A.3.1 Here, the Complainant asserts that circumstances
within paragraphs 4(b)(ii), (iii) and (iv) of the Policy apply. As to paragraph 4(b)(iv),
the Complainant relies on typo-squatting as demonstrating bad faith, citing
the Dell Computer, WIPO Case
No. D2002-0423, referred to in paragraph 5.A.5 above. Using the domain name
in issue to divert Internet users to the Respondent’s website which offers
services directly competing with those of the Complainant and deriving click-thru
revenue benefit thereby has – the Complainant says – been found
to constitute bad faith. As examples, the Complaint cites:
Respondent’s Domain Name
Gow-Mac Instrument Co .v. Gow Mac Instrument Co,
NAF Case No. FA95166
Labrada Bodybuilding Nutrition, Inc .v. Bob Garrett
NAF Case No. FA94293
<Leelabrada.com> and 3 variations <labrasports.com> and 6 variations
Wellness International Network, LTD .v. Apostolics.com,
NAF Case No. FA96189
WELLNESS INTERNATIONAL NETWORK, LTD
Net2phone .v. Dynasty System Sdn Bhn, WIPO
Case No. D2000-0679
5.A.3.2 As to paragraph 4(b)(iii) of the Policy, the Complainant points to the Respondent’s bad faith registration of a domain name confusingly similar to the TALX trademark, from which it is to be inferred that the domain name registration was primarily for the purpose of disrupting the Complainant’s business. That disruption will occur by reason of consumer confusion, lost sales and goodwill.
5.A.3.3 The Complainant says that the Respondent’s
lack of rights or legitimate interests in the domain name in issue indicates
bad faith registration and use. Where the domain name is obviously related to
a well – known product or service, absence of connection of the Respondent
to such product or service indicates opportunistic bad faith for the
purpose of paragraph 4(a)(iii) of the Policy. In this respect, the Complainant
cites Veuve Clicquot Ponsardin etc .v. The Polygenix Group Co., WIPO
Case No. D2000-0163, and Parfums Christian Dior .v. Javier Garcia Quintas,
WIPO Case No. D2000-0226. In the former,
the Respondent was held to be a trafficker in domain names having no connection
with the famous VEUVE CLICQUOT brand, which demonstrated that registration and
use in bad faith of the domain name <veuve-clicquot.org> was “opportunistic
bad faith”. In the latter, the domain names were <christiandior.com>
and <christiandior.net>, which resolved to “under construction”
websites. Following the decision in WIPO Case
No. D2000-0163, the panelist held that lack of connection of the respondent
with such a well – known mark as CHRISTIAN DIOR indicated opportunistic
bad faith registration and use of the domain names.
5.A.3.4 The Complainant also asserts that registration in bad faith follows from the fact that by the time the domain name in issue was registered (May 2005) the Complainant’s TALX trademark had been in use for over 10 years and had acquired widespread consumer and industry recognition in its fields of business.
5.A.3.5 As to paragraph 4(b)(ii) of the Policy, the Complainant refers to the 228 other domain names of which the Respondent is the registrant and asserts that many of them “… appear to infringe upon the rights of legitimate trademark owners”. Hence, there is a “pattern of conduct” as required by that paragraph of the Policy. In that respect, note the Interim Order of April 3, 2007 set out in paragraph 3 above. In the Complainant’s Response to that Interim Order, the Complainant has listed 689 domain names of which the Respondent is either the registrant, or administrative or other contact. Of those, the Complainant identifies the following 6 domain name registrations as infringing third party trademark rights.
Respondent’s Domain Name
Legitimate Mark or Website
CENTRAL BANK OF SYRIA
BANK OF SYRIA AND OVERSEAS
COMMERCIAL BANK F SYRIA
As stated, no Response was filed.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
6.2 Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 Paragraph 4(b) of the Policy sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
The Complainant has established that it has rights in the TALX trademark. Whether deliberate or not, the <talx.com> domain name is confusingly similar to that TALX trademark. Merely the letters L and X have been transposed. Visually and phonetically there is similarity and the case law developed under the Policy, a selection of which is cited in Section 5.A above, is replete with examples of where minor misspellings, typographical errors and deliberate typo-squatting have all been held to give rise to confusing similarity. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.5 Rights or Legitimate Interests
6.5.1 On the evidence set out in Section 5.B above, there is nothing to suggest that the Respondent could have brought himself within any of the circumstances set out in paragraph 4(c) of the Policy as indicative of rights or legitimate interests in the <taxl.com> domain name.
6.5.2 Where, as in this case, the domain name in issue resolves to a website which links to sites offering services which compete directly with those offered by the Complainant under its TALX trademark, it is powerful evidence that such use of that domain name is neither a bona fide offering of services nor a legitimate or fair use.
6.5.3 Furthermore, there is no disclaimer or equivalent explanation on the Respondent’s “www.taxl.com” website.
6.5.4 Still further, the Complainant has neither licensed nor otherwise authorized use of the TALX trademark.
6.5.5 In all the circumstances, the Panel finds that the Complaint satisfies paragraph 4(a)(ii) of the Policy.
6.6 Registered and Used in Bad Faith
6.6.1 In the absence of a convincing case to the contrary, a finding that a
Respondent has failed to establish rights or legitimate interests in a domain
name, likely leads to a similar finding under paragraph 4(a)(iii) of the Policy.
Furthermore, the practice of typo-squatting, of itself, has been found to be
evidence of bad faith registration of a domain name. The Panel refers, in that
respect, to ESPN, Inc .v. XC2, WIPO
Case No. D2005-0444, and to the four other decisions under the Policy cited
in that decision where typo-squatting was found to be presumptive of bad faith.
6.6.2 Has there been typo-squatting in this case? The absence of a Response, coupled with the widely – known status of the TALX trademark and linkage from the Respondent’s website to direct competitors of the Complainant, indicates to the Panel that a finding of typo-squatting is justified on the facts of this case.
6.6.3 But, even were that not to be the case, the Panel is satisfied on the evidence that the Complainant has produced evidence of bad faith registration and use of the domain name in issue under paragraph 4(b)(iv) of the Policy. The case outlined in paragraph 5.A.3.2 to 5.A.3.4 is also strongly indicative of such bad faith registration and use.
6.6.4 However, the Panel does not regard the Complainant’s case under paragraph 4(b)(ii) of the Policy as made out, since – despite the Complainant’s Response to the Procedural Order referred to in paragraph 3 above) – the Panel does not regard the evidence of infringement of third party trademarks (set out in paragraph 5.A.3.5 above) constitutes a pattern of conduct in this case. All but a very few of the Respondent’s 689 domain name registrations do not appear to infringe third party trademarks.
6.6.5 Does this suggest a general absence of bad faith? Were it not for the
other circumstances set out in paragraphs 5.A.2 and 5.A.3 above, the Panel might
take such a view. However, in its totality the evidence advanced by the Complainant,
coupled with the Respondent’s failure to submit a Response, is sufficient
to justify a finding that the Complaint satisfies the twin requirements of paragraph 4(a)(iii)
of the Policy.
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 <taxl.com> be transferred to the Complainant.
Dated: April 11, 2007