WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Atos IT Services UK Limited v. Above.com Domain Privacy / Nish Patel

Case No. D2013-0655

1. The Parties

Complainant is Atos IT Services UK Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Wright Hassall LLP, UK.

Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Nish Patel of Xiamen, China.

2. The Domain Name and Registrar

The disputed domain name <redspottedhankie.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2013. On April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 29, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 3, 2013.

The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on May 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 28, 2013.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 4, 2013. 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

Complainant is part of an international information technology services group whose ultimate parent is Atos SA, a company incorporated in France with annual revenues in 2010 of approximately EUR 8,6 billion, and 74,000 employees located in 42 countries around the world.

Complainant is the registered owner of Community Trade Mark No. 009170911 in the word mark, RED SPOTTED HANKY (“Complainant’s trademark). Complainant filed its application on June 11, 2010, and its mark was registered on April 1, 2011. At the time of filing and registration of the mark, Complainant was known as Atos Origin IT Services UK Limited and subsequently changed its name on June 28, 2011.

Complainant registered the domain name <redspottedhanky.com> on March 12, 2010, followed by registration of numerous close variations of this domain name (e.g., with changes in spelling) on May 26, 2010.

The Domain Name, <redspottedhankie.com>, was registered by Respondent on September 14, 2010.

5. Parties’ Contentions

A. Complainant

Complainant has provided a comprehensive and well-supported Complaint, which is summarized below in regards to those elements relevant to be considered under the Policy.

Identical or Confusingly Similar to a Trademark in which Complainant has Rights

Within the UK, Complainant is a supplier of information technology services and has, since July 2010, operated an online travel ticket sales and information service under the brand RED SPOTTED HANKY and through a website located at “www.redspottedhanky.com”. Complainant’s website receives an average of 20,000 unique daily visitors and handles over 3,000 transactions per day, resulting in an average daily turnover of over GBP 110,000. Expressed annually, this amounts to a turnover of approximately GBP 40 million. Complainant invests about GBP 1 million per annum in marketing its RED SPOTTED HANKY brand.

In addition to Complainant’s trademark RED SPOTTED HANKY, Complainant also relies on its common law rights in the RED SPOTTED HANKY brand, which are protected under the law of passing off in the UK.

Complainant asserts that the Domain Name, <redspottedhankie.com>, is confusingly similar to Complainant’s trademark, RED SPOTTED HANKY. The fact that the Domain Name contains an alternative informal spelling of the word “handkerchief” does not preclude a finding of confusing similarity. Complainant refers to the visual and phonetic similarities between the Domain Name and its RED SPOTTED HANKY trademark. The Domain Name incorporates identical elements of Complainant’s trademark, specifically “red spotted”, as well as the term “hankie”, which is an alternative informal spelling of the word “handkerchief” that shares the same meaning and pronunciation as “hanky” used in Complainant’s trademark.

Complainant contends that Respondent has engaged in typosquatting because the Domain Name is intended to capture Internet users who might accidentally type in an alternative spelling in seeking to locate Complainant’s website. Further, Complainant urges that the Domain Name is being used to host a pay-per-click domain parking site and, on account of such use, members of the public will be confused and misled into believing that the Domain Name and the business carried out on the website linked to it, is that of Complainant or associated with Complainant.

No Rights or Legitimate Interests in Respect of the Domain Name

Complainant has not authorized the registration or use of the Domain Name. Moreover, Complainant states that there is no evidence that Respondent has been commonly known by the Domain Name, nor is there any evidence to suggest that Respondent has acquired any trademark rights in relation to the Domain Name. As such, Respondent has no rights to use the Domain Name.

Similarly, Complainant argues that Respondent has no legitimate interests in respect of the Domain Name. The Domain Name is not being used in connection with either a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the Domain Name is being used to host a domain parking site. Complainant infers that the website is being used for advertising by way of parked domain monetization. The website hosts search links that direct Internet users to websites of Complainant’s competitors. Complainant expects that Respondent is compensated as a result of click-through arrangements.

Complainant relies on the following points to support its contention that Respondent has engaged in abusive cybersquatting and therefore has no rights or legitimate interests in respect of the Domain Name:

a. Respondent was aware of Complainant’s rights at the time the Domain Name was registered. The Panel is invited to infer Respondent’s knowledge from the following facts: (i) Complainant filed its application for the RED SPOTTED HANKY trademark on June 11, 2010, and registered the domain names <redspottedhanky.com> and <redspottedhanky.co.uk> on March 12, 2010. Complainant also registered many other similar domain names (detailed in the Complaint) on May 26, 2010; (ii) Complainant subsequently launched its website at “www.redspottedhanky.com” in July 2010. Prior to this launch, Complainant spent approximately GBP 650,000 in relation to its business, including brand creation, website build and deployment, digital display advertising, pay-per-click activity, and search engine optimization; and (iii) on September 14, 2010, Respondent registered the Domain Name following the launch and success of Complainant’s RED SPOTTED HANKY brand. Complainant asserts that its RED SPOTTED HANKY brand was well known and in wide use at the time the Domain Name was registered.

b. Respondent has engaged in typosquatting and the Domain Name is currently used to host a pay-per-click parking page, which directs Internet users to websites of Complainant’s competitors. Complainant explains that while some UDRP decisions have permitted use of a domain name for landing pages or pay-per-click links, when the links on the landing page are based on the trademark value of the domain name, the trend in UDRP decisions is to recognize that such practices generally constitute abusive cybersquatting. The links that appear on the website linked to the Domain Name are related to the trademark value of Complainant’s RED SPOTTED HANKY mark and direct Internet users to competitors’ websites.

c. The Domain Name is being used for in a manner that confuses and misleads Internet users. In addition to being used to direct web traffic to competitors’ websites, the Domain Name intentionally attracts, for commercial gain, Internet users to the website linked to the Domain Name. These users are misled into believing that the Domain Name and the business on the linked website is Complainant’s business or associated with Complainant.

Moreover, Complainant contends that Respondent has committed an infringement of Complainant's Community trademark and common law rights in the UK. Thus, there is no bona fide use of the Domain Name in such circumstances.

Complainant additionally relies on Respondent’s lack of response to pre-Complaint correspondence in support of the contention that Respondent lacks rights or legitimate interests in the Domain Name. Moreover, the apparent instance of cyberflight (i.e., by changing registration details) during that period and the continued use of privacy services to conceal the identity of the Domain Name’s registrant further support Complainant’s inference that Respondent has no rights or legitimate interests in relation to the Domain Name.

Registered and Used in Bad Faith

Complainant asserts that all of the above facts and circumstances support the contention that the Domain Name was registered and is being used in bad faith. Respondent registered and is using the Domain Name to intentionally attract, for commercial gain, Internet users to the website linked to the Domain Name. Accordingly, Complainant contends that Respondent’s registration constitutes classic bad faith registration and use under paragraph 4(b)(iv) of the Policy.

Complainant further refers to paragraph 4(b) of the Policy and, specifically, the statement that in order to evidence bad faith, Complainant is not limited to the examples of circumstances set out under that paragraph. Complainant asserts that, in addition to the above facts and matters, the following circumstances evidence that the Domain Name was registered and is being used in bad faith:

a. Paragraph 2 of the Policy states: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that.... (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” As stated above, Respondent has infringed Complainant’s registered Community trademark and common law rights in the UK. Therefore, by using the Domain Name in such a manner, Respondent has breached the warranty it provided. As such, Respondent’s use in bad faith has also rendered the registration to be in bad faith.

b. Complainant has received no response to its pre-Complaint correspondence sent to Respondent. Complainant infers that cyberflight has occurred during the period of pre-Complaint correspondence and such conduct is itself indicative of bad faith on the part of a respondent in UDRP proceedings. The total failure to respond to pre-Complaint correspondence, the instance of cyberflight, and the continued use of privacy services to conceal the identity of the Domain Name’s registrant, further support Complainant’s contention that the Domain Name has been registered and is being used in bad faith.

Complainant states that the cumulative effect of all of the facts and matters set out above is that the Domain Name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has trademark rights in RED SPOTTED HANKY and that the Domain Name is confusingly similar to this mark.

The threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name. The Domain Name here incorporates identical elements of Complainant’s mark, specifically “RED SPOTTED”, as well as the term “hankie”, which is an alternative informal spelling of the word “handkerchief” that shares the same meaning and pronunciation as the term “hanky” used in Complainant’s trademark.

Accordingly, Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof on this element rests with Complainant. However, it is well established that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to respondent to rebut complainant’s contentions.

Here, Complainant’s prima facie showing included the following submissions: (i) confirming that Complainant has no relationship with Respondent, did not authorize Respondent to use the RED SPOTTED HANKY trademark, and that Respondent is not commonly referred to by the names “red spotted hanky” or “red spotted hankie”; (ii) evidence that Respondent is using the Domain Name commercially and thus, is not making legitimate noncommercial or fair use of it; (iii) circumstantial evidence that Respondent was aware of Complainant’s rights at the time the Domain Name was registered; (iv) evidence that Respondent engaged in typosquatting and the Domain Name is currently used to host a pay-per-click parking page, which directs Internet users to websites of Complainant’s competitors; (v) evidence that the Domain Name is being used, for commercial gain, in a manner that confuses and misleads Internet users into believing that the site linked to the Domain Name is associated with Complainant; and (vi) evidence of Respondent’s lack of response to pre-Complaint correspondence and apparent cyberflight during that period and use of privacy services to conceal the identity of the Domain Name’s registrant.

The Policy enumerates several ways in which a respondent may rebut a complainant’s prima facie showing and demonstrate rights or legitimate interests. In this case, however, Respondent has failed to submit a response to Complainant’s contentions.

This Panel accordingly finds that Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Finally, the Panel finds that Complainant has established bad faith registration and use under paragraph 4(b) of the Policy, based on several factors:

- The incorporation of Complainant’s RED SPOTTED HANKY mark into the Domain Name without any plausible explanation for doing so, causing confusing similarity. Moreover, Respondent registered the Domain Name on September 14, 2010, shortly after Complainant launched its RED SPOTTED HANKY brand and website at “www.redspottedhanky.com” in July 2010.

- Evidence that Respondent has engaged in typosquatting by using in the Domain Name the term “hankie”, which is a similar yet alternative informal spelling of the word “handkerchief” that shares the same meaning and pronunciation as the term “hanky” used in Complainant’s RED SPOTTED HANKY trademark.

- Evidence that Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to the website linked to Domain Name in a manner that confuses and misleads Internet users. In particular, Respondent has used the Domain Name to host a pay-per-click parking page, which directs Internet users to websites of Complainant’s competitors. The links appearing on the website linked to the Domain Name are related to the trademark value of Complainant’s RED SPOTTED HANKY mark.

- Evidence of Respondent’s lack of response to pre-Complaint correspondence from Complainant and apparent cyberflight during that period by changing registration details for the Domain Name and use of privacy services to conceal the identity of the Domain Name’s registrant.

This Panel accordingly finds that, for all the foregoing reasons, the Domain Name has been registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <redspottedhankie.com> be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: July 9, 2013