WIPO Domain Name Decision: D2007-0245

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alliance & Leicester PLC v. Keyword Marketing, Inc.

Case No. D2007-0245

1. The Parties

The Complainant is Alliance & Leicester PLC, Leicester, United Kingdom of Great Britain and Northern Ireland, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Keyword Marketing, Inc., West Indies, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <alliance-leicster.com> is registered with Capitoldomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2007. On February 21, 2007, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On February 21, 2007, Capitoldomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant 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 February 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2007.

The Center appointed Michael C. Pryles as the sole panelist in this matter on March 30, 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

The Complainant is a company registered in the United Kingdom which provides financial services to personal and commercial customers. The Complainant owns the domain names <alliance-leicester.com>, <allianceandleicester.com> and over 130 other domain names containing the words “alliance” and “leicester” together, as well as variations and misspellings of those words together.

The Complainant holds numerous trademark registrations for ALLIANCE & LEICESTER and ALLIANCE LEICESTER and other marks containing these marks in the United Kingdom and other countries.

The Respondent registered the domain name in dispute <alliance-leicster.com> on August 14, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant’s complaint is based on the following grounds:

(i) The domain name is confusingly similar to a trademark or service mark in which Complainant has rights:

- The Complainant is the owner of numerous trademark rights in the words ALLIANCE & LEICESTER and ALLIANCE LEICESTER;

- The Complainant owns substantial rights in the marks which are enforceable in the United Kingdom, in other countries where it has trademark rights and generally anywhere in the world where its marks are well-known under the Paris Convention and the WTO agreement;

- The Complainant’s trademarks are nearly identical to the domain name <alliance-leicster.com>.

(ii) Respondent has no rights or legitimate interests in respect of the domain name:

- Respondent registered the domain name without the Complainant’s consent, 20 years after the Complainant’s rights were acquired;

- Respondent must have been aware of Complainant’s rights in the marks when the domain name was registered;

- The website contains links which are described as “Sponsored Links” so it should be inferred that the Respondent receives money for each listing or earns “click-through” revenue;

- None of the circumstances in paragraph 4(c) of the Policy apply.

(iii) The domain name has been registered and is being used in bad faith:

- The matters set out in section 5A(ii) above demonstrate that the domain name was registered and is being used in bad faith;

- While the Respondent has not yet solicited a potential sale of the domain name to the Complainant, the only credible motive for its actions is that it is hoping to realize a profitable sale to the Complainant or one of its competitors;

- The Respondent registered the domain name to prevent the Complainant from reflecting its trademarks in the domain name. This is part of a pattern of serial “typo-squatting” which is evident from other WIPO cases in which the Respondent has been held to have registered and used a domain name in bad faith (Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; La Societé des Autoroutes Paris Rhin Rhône v. Keyword Marketing Inc., WIPO Case No. D2006-1270; Edmunds.com, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc., WIPO Case No. D2006-1380);

- The Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainant by redirecting Internet users who have misspelled the word “leicester” in the Complainant’s domain name. While the Respondent is not strictly a “competitor” of the Complainant, it has been held in other WIPO cases that a competitive relationship is not required for this ground to apply where, for example, the respondent has registered multiple domain names corresponding to a famous name (e.g. Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869);

- The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website;

- The Respondent is using the domain name at the expense of, and free-riding on, the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint the Complainant must prove each element within paragraph 4(a) of the Policy. These are as follows:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) the domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The question under paragraph 4(a)(i) of the Policy is whether the domain name <alliance-leicster.com> is identical or confusingly similar to the trademarks in which Complainant has rights.

The Complainant has rights in numerous trademarks consisting of the words ALLIANCE & LEICESTER and ALLIANCE LEICESTER and other marks containing these marks.

The domain name <alliance-leicster.com> is identical to these marks but for the omission of the second “e” in “leicester” and the addition of “.com”. It is well established that the addition of “.com” does not affect identity or confusing similarity. While the omission of the letter “e” means that the domain name is not identical to the Complainant’s trademarks, it clearly is confusingly similar to the Complainant’s marks.

Therefore the Panel concludes that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The question under paragraph 4(a)(ii) of the Policy is whether the Respondent has rights in respect of the domain name <alliance-leicster.com>. Under this limb the Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel accepts that the Complainant has not authorized the Respondent to use the domain name <alliance-leicster.com>.

The Panel notes that neither the Respondent’s company name nor the content of the website at the domain name in dispute indicate that the Respondent is known by the name “alliance-leicster” or any variations thereon.

The Complainant’s trademarks are widely-known in the United Kingdom. Further, the combination of the words ALLIANCE and LEICSTER is particularly unique. The uniqueness of the combination of words and the similarity between the domain name and the Complainant’s widely-known trademarks make it implausible that the Respondent came up with the domain name independently.

Therefore the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the domain name. The Respondent has chosen not to participate in the proceedings. As a result it has not demonstrated rights or legitimate interests in the domain name. As such the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The question under paragraph 4(a)(iii) of the Policy is whether the domain name <alliance-leicster.com> was registered and is being used by the Respondent in bad faith.

The similarity between the domain name and the Complainant’s widely-known trademark and the absence of evidence that the Respondent is known by the name make it clear that this is a case of “typo-squatting”, a practice the Respondent has been found to have engaged in previously (See La Societé des Autoroutes Paris Rhin Rhône v. Keyword Marketing Inc., supra).

The practice of “typo-squatting” has been found to constitute bad faith registration and use in numerous WIPO decisions, either in and of itself or under paragraph 4(b)(iv) of the Policy (See, e.g., Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444).

The Respondent’s website contains links to third party providers of banking and financial services. These links are listed under the heading “Sponsored links”. The Panel infers from this that the Respondent receives money for each listing or earns “click-through” revenue (See Scania CV AB (Publ) v. Unaci, Inc., supra citing Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911). Consequently the Panel concludes that this case falls within paragraph 4(b)(iv) of the Policy as the Respondent registered and is using the domain name for the purpose of attracting, for commercial gain, Internet users to the 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.

Accordingly the Panel concludes that the domain name was registered and is being used by the Respondent 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 name, <alliance-leicster.com> be transferred to the Complainant.

Michael C. Pryles
Sole Panelist

Dated: April 13, 2007