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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wolters Kluwer U.S. Corporation v. Transure Enterprise Ltd.
Case No. D2008-0384
1. The Parties
The Complainant is Wolters Kluwer U.S. Corporation, Illinois, United States of America, represented by McGuire Woods LLP, United States of America.
The Respondent is Transure Enterprise Ltd., Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <wolterkluwer.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2008. On March 11, 2008, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the domain name at issue. On March 17, 2008, Above.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. 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 March 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2008.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on April 11, 2008. 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’s ultimate parent company, Wolters Kluwer N.V., has existed and operated worldwide since 1836. Its immediate parent company, Wolters Kluwer North America, Inc., has existed and operated in the United States since June 1979. The Complainant was incorporated in April 2004. The Complainant and its parent corporations have been using and operating under the name “Wolters Kluwer” (described by the Complainant using the shorthand “WK Name”) since their inception.
The Complainant has continuously used and owned the trademark WOLTERS KLUWER (described by the Complainant as the “WK Mark”) in United States of America commerce since at least 2006 in connection with corporate services, specifically employment staffing services, management services to control filing dates, deadlines, meetings and key corporate events. The Complainant owns the United States Trademark Registration for WOLTERS KLUWER with Registration number 3,230,114, in connection with “corporate services, namely employment staffing services, management services to track ownership and corporate structure, and management services to control filing dates, deadlines, meetings, and key corporate events.” A copy of the Complainant’s WK Mark registration with the United States Patent and Trademark Office was attached as Annex 3 to the Complaint.
The Complainant asserts that it has consistently and prominently displayed and advertised the WK Mark in connection with its services. According to it, some 374 million Euros have been expended promoting and advertising the mark in connection with its services. It is also asserted that this has generated 2,035 million Euros in revenue under the mark.
5. Parties’ Contentions
The Complainant contended that as a result of its extensive sales, advertising and promotion of its services under the WK Name and WK Mark, and through favorable industry acceptance and recognition, the relevant market has come to recognize and identify the Complainant as the source of the high quality services offered in connection with the WK Name and the WK Mark. As a result, it was asserted that the WK Name and WK Mark have become distinctive and famous pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c).
It was contended further that the WK Name and WK Mark are assets of “incalculable value as identifiers of the Complainant and its high quality services and goodwill.”
The disputed domain name is said to be essentially identical to the WK Name and WK Mark, with only a single letter differentiating the two, i.e., the letter “s” present in the Complainant’s WK Name and WK Mark is omitted in the disputed domain name.
It is contended further that the Respondent is using the name to promote various websites and services in a commercial setting. Its use in this manner will create confusion in the marketplace regarding whether the Respondent’s goods and services are sponsored by, or affiliated with, the Complainant, and they are not. There is no connection between the Complainant and the Respondent, despite the obvious similarity between the WK Name and WK Mark, and the infringing domain name. Further, the Respondent has never been known by the name “Wolter Kluwer”.
Finally, it is asserted that by using the disputed domain name, 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 WK Name and WK Mark as to the source, sponsorship, affiliation, and /or endorsement of the Respondent’s website or of the products and services on the Respondent’s website. In so doing it is profiting from the use of the domain name, which is confusingly similar to the Complainant’s WK Name and WK Mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of the contested domain name, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In the Panel’s view, the Complainant has made out this first requirement of the Policy. The omission of the letter “s” from the Complainant’s mark by the disputed domain name does not serve to differentiate it from the trademark. This is an example of typo-squatting whereby a widely known mark is intentionally misspelled in order to create a domain name that is confusingly similar to the real name and thereby create doubt amongst Internet users who are seeking information about the Complainant.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights or legitimate interests in the disputed name. It has not seen fit to reply to the Complaint and the Complainant has affirmed that, there is no connection between the Complainant and the Respondent, despite the obvious similarity between the WK Name and WK Mark, and the domain name. It has pointed out further, that the Respondent has never been known by the name “Wolter Kluwer.” In these circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It must be shown that the domain name at issue has been registered and is being used in bad faith. The Respondent’s domain name serves to divert users to a website which contains sponsored links. A review of the site shows that it is offering goods and services that have nothing to do with the Complainant’s services. It is plainly a ”click farm” which is intended to lure Internet users who are seeing the Complainant’s website to its site where other unrelated links for goods and services are offered. The site also advertises that it may be for sale. The Respondent has misled consumers by diverting Internet traffic away from the Complainant’s website in an attempt to generate business by luring potential customers to the Respondent’s website. In these circumstances, the Panel concludes that the domain name has been registered and is being used in bad faith
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wolterkluwer.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Date: April 24, 2008