WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Touraine, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master

Case No. D2010-1118

1. The Parties

The Complainant is La Touraine, Inc. of San Diego, California, United States of America, represented by Point Loma Law, United States of America.

The Respondent is Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, of Beaumaris, Victoria, Australia, and of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland respectively.

2. The Domain Names and Registrar

The disputed domain names <natghtyamerica.com>, <naughtyameriaca.com>, <naughtyamerixa.com>, <naughtyameroca.com>, <naughtyarmerica.com>, <nauhhtyamerica.com>, <nauthtyamerica.com>, <nnaughtyamerica.com> and <nuughtyamerica.com> are registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2010. On July 7, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 9, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 13, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on July 17, 2010. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2010.

The Center appointed Petter Rindforth as the sole panelist in this matter on August 11, 2010. 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.

The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant has submitted evidence that it is the owner of the following trademark registrations issued by the United States Patent and Trademark Office (“USPTO”):

- NAUGHTY AMERICA (Reg. No. 2,958,444, registered May 31, 2005), transferred to the Complainant on November 11, 2005, for services in Class 41;

- NAUGHTY AMERICA (Reg. No. 3,116,202, registered July 18, 2006), for services in Class 41;

- NAUGHTY AMERICA (Reg. No. 3,119,341, registered July 25, 2006), for goods in Class 9;

- NAUGHTY AMERICA (Reg. No. 3,144,310, registered September 19, 2006), for goods in Class 25; and

- NAUGHTY AMERICA (Reg. No. 3,755,195, registered March 2, 2010), for services in Class 35.

The Respondent registered <natghtyamerica.com> on April 23, 2008; <naughtyameriaca.com> on February 18, 2009; <naughtyamerixa.com> on May 7, 2009; <naughtyameroca.com> on October 24, 2008; <naughtyarmerica.com> on December 22, 2008; <nauhhtyamerica.com> on March 25, 2009; <nauthtyamerica.com> on December 12, 2009; <nnaughtyamerica.com> on February 14, 2008, and <nuughtyamerica.com> on June 23, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant informs that the mark NAUGHTY AMERICA was first used in commerce as early as September 2003. The Complainant is also the domain name holder and website administrator of <naughtyamerica.com>, which the Complainant describes as a leading adult entertainment website that ranks among the top 800 most-trafficked websites in the United States, and top 1,200 most-trafficked websites in the World (Annex 27 of the Complaint shows independent statistics from “www.alexa.com”). According to the Complainant, the mark has acquired distinctiveness and fame not just in the United States, but worldwide – 67% of the users of the Complainant’s website are from outside the United States (Annex 27 shows the statistics).

The Complainant argues that the Respondent’s disputed domain names are virtually identical and confusingly similar to the Complainants trademark, where each of the disputed domain names include an intentional misspelling of the trademark NAUGHTY AMERICA, and in each case vary the correct spelling by adding, removing or substituting only one letter. The Complainant draws the conclusion that the Respondent’s registrations of the disputed domain names were obviously intended to misdirect Internet users who misspell and/or mistype the words of the Complainant’s trademark to websites accessed by the disputed domain names.

The Complainant further states that the Respondent has no rights or legitimate interest in any of the disputed domain names, as 1) there is no bona fide offering of goods and services – the Respondent is using the disputed domain names to host what appears to be a search engine composed of sponsored links, 2) the Respondent has never been known by any of the disputed domain names, 3) the Respondent has no connection or affiliation with the Complainant, as the Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Complainant’s mark in a domain name or in any other manner, and 4) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain.

The Complainant concludes that the Respondent has registered and is using all the disputed domain names in bad faith, primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names.

On May 1, 2010, the Complainant, acting through its counsel, sent nine demand letters to the Respondent by e-mail, objecting to its use and registration of the disputed domain names (Annex 28, of the Complaint). The letters demanded that the Respondent transfer its infringing domain names to the Complainant. With the exception of <naughtyameriaca.com>, the Respondent did not reply to those e-mail communications. On May 7, 2010, a person by the name of “David Smith” responded to one of the Complainant’s e-mail communications from an e-mail address ending with “@gmail.com”, despite the fact the e-mail was sent to an e-mail address ending with “@privacy.above.com”. Mr. Smith demanded that the Complainant pay him USD 500 for “registration and administrative fees” in order to transfer the domain name <naughtyameriaca.com> to the Complainant. On May 11, 2010, the Complainant’s counsel sent a reply letter to Mr. Smith. The Complainant rejected his offer, and instead offered to pay his transfer fee. Mr. Smith did not respond.

In addition, the Respondent is currently attempting to auction four of the disputed domain names (<naughtyameriaca.com>, <naughtyameroca.com>, <naughtyarmerica.com>, and <nauthtyamerica.com>) to the highest bidder on <Sedo.com>. (Annexes 36-39 of the Complaint). The Complainant concludes that this demonstrate the Respondent’s bad faith registration and use of the disputed domain names within the meaning of paragraph 4(b)(i) of the Policy, and refers to Wrenchead.com, Inc. v. Alison Hammersla, WIPO Case No. D2000-1222 (finding the offer of the domain name for sale at an auction site to be evidence of bad faith registration and use).

The Complainant states the Respondent had prior knowledge and notice of the NAUGHTY AMERICA trademark, as the Complainant’s domain name was registered in 2003, its first trademark was registered with the USPTO on May 21, 2005, and the earliest date of registration of the disputed domain names is February 14, 2008, meaning that the first disputed domain name was registered over four years after the Complainant began using the mark on the Internet, and nearly three years after the mark was registered in the United States. Even a cursory search of either the publicly available information on file with the USPTO or the Internet would have uncovered evidence of the Complainant’s ownership of the mark. A simple search on the Internet on NAUGHTY AMERICA produces over 3 million hits.

The Respondent is using the disputed domain names for commercial gain because the corresponding websites are being used in connection with pay-per-click (“PPC”) landing pages. For example, the website under the disputed domain name <nauthtyamerica.com> contains sponsored links, a search function, an automatically generated webpage, and an advertising pop-up page. With the exception of two disputed domain names (<natghtyamerica.com> and <nuughtyamerica.com>), the websites under the disputed domain names contain links to companies in direct competition with the Complainant. (Annexes 11-17 of the Complaint.)

Finally, the Complainant points to the fact that the Respondent is well-known as a typosquatter, referring to a number of previous domain name cases from WIPO (Annex 41 to the Complaint, showing 45 prior cases), and the National Arbitration Forum (Annex 42, showing 43 cases). The Complainant also states that the Respondent’s use of a domain name privacy service to conceal its identity is also evidence of bad faith.

The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Panel issue a decision that the disputed domain names be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent is Above.com Domain Privacy / Transure Enterprise Ltd, Host Master.

The Panel concludes that all the disputed domain names are owned by the Respondent, as the WhoIs information for the disputed domain names, the information provided by the Complainant and the registrant details confirmed by the registrar are identical to this entity. The case will accordingly be treated as having one and the same Respondent.

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) that the disputed domain name have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has obtained multiple trademark registrations for NAUGHTY AMERICA (e.g., Reg. No. 2,958,444 of May 31, 2005) with the USPTO.

The Panel finds that the Complainant has established rights in the NAUGHTY AMERICA mark for purposes of the Policy through its trademark registrations with the USPTO; see Koninklijke KPN N.V. v. Telepathy Inc., WIPO Case No. D2001-0217 (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Janus Interantional Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttal presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).

The relevant parts of the disputed domain names are “natghtyamerica”, “naughtyameriaca”, “naughtyamerixa”, “naughtyameroca”, “naughtyarmerica”, “nauhhtyamerica”, “nauthtyamerica”, “nnaughtyamerica”, and “nuughtyamerica” as the addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain names from the Complainant’s mark.

The Respondent’s disputed domain names each contain a misspelled version of the Complainant’s mark and in each case vary the correct spelling by adding, removing or substituting only one letter. Altering a mark by only one letter is not enough to escape a finding of similarity; see Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 [“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of [c]omplainant”];

Accordingly, the Panel finds that all the disputed domain names are at least confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant’s assertions and evidence submitted with the Complaint, indicating that the Respondent lacks rights or legitimate interests in the disputed domain names, is sufficient to establish a prima facie case under the Policy.

Once a prima facie case has been established, the burden shifts to the Respondent to demonstrate that it does have rights or legitimate interests pursuant to paragraph 4(c) of the Policy. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, “where [the] complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion [because t]his information is uniquely within the knowledge and control of the respondent”).

The Respondent has apparently no rights to use the Complainant’s trademark, and is not an authorized agent or licensee of the Complainant’s products, services or trademarks.

By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interest in the disputed domain names.

As shown by the Annexes to the Complaint, the Respondent has used the disputed domain names for websites that are in connection with pay-per-click (“PPC”) landing pages providing links to third-party websites offering, inter alia, adult entertainment in competition with the Complainant.

As established in a number of UDRP cases under similar circumstances, such use cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy, see Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (“Bona fide use does not exist when the intended use is [a] deliberate infringement of another’s rights”).

Typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who make those typographical errors. In this case, all the disputed domain names take advantage of Internet users who mistype the Complainant’s NAUGHTY AMERICA trademark. The Panel concludes that the Respondent’s engagement in typosquatting is further evidence that the Respondent does not have rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in any of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant is based in the United States of America and, although the website connected with the trademark NAUGHTY AMERICA is used by people worldwide, has not claimed any registered trademark rights outside the United States of America. The Respondent is based in Australia and the United Kingdom.

However, the further circumstances are - collectively - clear indications that the Respondent registered all the disputed domain names with knowledge of the Complainant’s registered trademark NAUGHTY AMERICA.

The Panel has no reason to question the Complainant’s assertions that the NAUGHTY AMERICA trademark is well-known among the relevant public in many countries, including the United Kingdom and Australia. According to the independent statistics from “www.alexa.com”, 5.3% of the visitors to Complainant’s website are from the United Kingdom and 1.4% from Australia respectively.

The fact that the Respondent has registered no less than 9 domain names almost identical to the Complainant’s trademark is a clear indication of the Respondent’s knowledge of the Complainants trademark rights.

The Panel finds that all the disputed domain names are capable of creating a likelihood of confusion as to the Complainant’s affiliation with the disputed domain names and corresponding websites, and that this likelihood of confusion is deliberately created by the Respondent – thus acting in bad faith.

The Panel also finds that the Respondent’s use of the disputed domain names to display hyperlinks to various third-party websites, including some in direct competition with the Complainant, constitutes disruption under paragraph 4(b)(iii) of the Policy and is thus evidence of bad faith registration and use. See EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

As argued by the Complainant, the Panel agrees that the fact that the Respondent is currently attempting to auction four of the disputed domain names to the highest bidder on <Sedo.com>, further demonstrate the Respondent’s bad faith registration and use of the disputed domain names.

The Complainant points to the fact that the Respondent is well-known as a typosquatter, having been a respondent in a number of other UDRP proceedings, wherein the domain names were ordered to be transferred from the Respondent to the respective complainants in those cases. The Panel finds that the Respondent has therefore engaged in a pattern of bad faith registration and use under the parameters of paragraph 4(b)(ii) of the Policy. See Westcoast Contempo Fashions Limited v. Manila Industries, Inc., NAF Claim No. 814312 (finding bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy where the respondent had been the subject of numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).

The Complainant states that the Respondent’s use of a privacy service to conceal its identity is also evidence of bad faith. In this Panel’s view, however, the use of a privacy service as such does not indicate any bad faith registration or use. There may be many legitimate reasons for hiding the identity of the domain name holder, such as avoiding spam. Bad faith is only indicated when such use is connected with the registration and use of infringing domain names, such as in this present case.

The Panel concludes that all the domain names were both registered and used 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 disputed domain names <natghtyamerica.com>, <naughtyameriaca.com>, <naughtyamerixa.com>, <naughtyameroca.com>, <naughtyarmerica.com>, <nauhhtyamerica.com>, <nauthtyamerica.com>, <nnaughtyamerica.com> and <nuughtyamerica.com> be transferred to the Complainant.

Petter Rindforth
Sole Panelist
Dated: August 16, 2010