WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Knot, Inc. v. In Knot We Trust LTD
Case No. D2006-0340
1. The Parties
Complainant is The Knot, Inc., New York, New York, United States of America, represented by James Rosini, Kenyon & Kenyon, New York, New York, United States of America.
The Respondent is In Knot We Trust LTD, c/o WhoisArmor Privacy Services, Midwest, Illinois, United States of America, represented by John Berryhill, Media, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <knot.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com (“Dotregistrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2006. On March 21, 2006, the Center transmitted by email to Dotregistrar a request for registrar verification in connection with the domain name at issue. On March 22, 2006, Dotregistrar 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 24, 2006. 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 March 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 13, 2006. The Response was filed with the Center on April 13, 2006.
On May 15, 2006, the Center accidentally sent a premature notification of appointment of panel. The notice was premature because the parties had not yet had an opportunity to rank their preferences for the presiding panelist. The following day, after notice from the Respondent concerning the mistake, the Center withdrew its notice of panel appointment and circulated a Presiding Panelist Selection List. The parties thereafter submitted their preferences to the Center; coincidentally, they chose the same potential panelist as their first choice and the Center was able to accommodate that request. On May 29, 2006, the Center appointed David H. Bernstein, David W. Quinto and David E. Sorkin as Panelists in this matter. The Panel finds that it was properly constituted. Each member of 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, a Delaware corporation, owns a number of United States trademark or service mark registrations, including THE KNOT (Reg. No. 2,136,948; issued February 17, 1998); THE KNOT ULTIMATE WEDDING CHECKLIST (Reg. No. 2,318,967; issued February 15, 2000); THE KNOT WEDDING GIFT REGISTRY (Reg. No. 2,323,832; issued February 29, 2000); THE KNOT REGISTRY (Reg. No. 2,357,622; issued June 13, 2000); THE KNOT WEDDING BOX (Reg. No. 2,495,909; issued October 9, 2001); THE KNOT (Reg. No. 2,494,405; issued October 2, 2001); THE KNOT REAL WEDDINGS (Reg. No. 2,803,754; issued January 6, 2004); and. THE KNOT (Reg. No. 2,889,317; issued September 28, 2004). Complainant registered the domain name theknot.com on June 25, 1996, and, since then, has used it to provide wedding planning services.
Respondent purchased the <domain name knot.com> (the “Domain Name”) for $5,000 on September 17, 2004, from a Japanese company that had been using the site in connection with its business. Since registration of the Domain Name in 2004, Respondent has used the Domain Name as an online directory or portal page that provides links including a number of links related to weddings including “honeymoons,” “bridal registry,” “grooms,” “invitations,” “wedding dress,” “wedding favors,” “wedding gifts,” and “wedding gowns.” Some of these links provide further links providers of wedding-related services, that provide services in competition with Complainant. For example, when a user clicks “bridal gowns” on knot.com’s main page, she is directed to a site with links to David’s Bridal and other online wedding gown retailers.
5. Parties’ Contentions
A. Complainant
Complainant asserts that the Domain Name is identical, or virtually identical, and confusingly similar to Complainant’s trade name, The Knot, its domain name, <theknot.com>, and its trademark and service mark registrations, because the Domain Name is simply Complainant’s mark without the word “the.”
Complainant further alleges that Respondent has no legitimate rights or interests with respect to the Domain Name. Complainant states that Respondent owns no trademark registration for, and has no common law rights in, “Knot” or <knot.com>. Complainant argues that Respondent is making neither a non-commercial fair use of the site nor a bona fide commercial use. Complainant argues that Respondent’s website provides links to Complainant’s competitors’ websites.
Complainant alleges that that Respondent engaged in typo-squatting and registered and used the Domain Name in bad faith. Complainant claims that Respondent’s website provides links to Complainant’s competitors’ websites, such as “macys.com” and “crateandbarrel.com”, which offer competing wedding registry services. Complainant further states that Respondent’s website contains sponsored links to Complainant’s competitors. Complainant infers that advertisers compensate Respondent for the advertisements on its website through click-through arrangements. Complainant argues that Respondent’s sole purpose for registering the Domain Name is to divert Complainant’s customers to the Respondent’s website.
Finally, Complainant alleges that its website and its wedding planning services are well-known. Complainant states that its website, <theknot.com>, is the most trafficked wedding-related website on the Internet, with over 2.1 million visitors each month, that it is the leading wedding-related content provider to AOL, MSN, and Comcast, that it publishes several wedding-related magazines, and that it is the leading retailer of wedding favors and supplies on the Internet.
B. Respondent
Respondent alleges that the word “knot” is associated with matrimony and that there is a difference between the ordinary use of the word, which is just one component of Complainant’s mark, and the commercial impression created by Complainant’s compound mark. Indeed, Respondent states that numerous other registered marks incorporate the word “knot.” Further, Respondent states that Complainant has no rights in the word “knot” alone. Respondent denies any allegation of typo-squatting because the Domain Name correctly spells the word “knot.”
Respondent claims that it has legitimate rights or interests in the Domain Name. Respondent states that it does not operate as an online planning service. Instead, it provides search links responsive to the dictionary definition of the word knot as relating to matrimony. Respondent states that its use of the word knot to provide paid advertising links according to the word’s dictionary meaning is a legitimate use of the Domain Name. Respondent also notes that its use of the Domain Name preceded notification of the dispute.
Finally, Respondent claims that the Domain Name was registered in good faith. Respondent notes that the Domain Name was originally registered (by its prior owner) before Complainant registered its website and that Complainant chose its mark and domain name knowing that the Domain Name <knot.com> was registered to another party and, therefore, might never be available to Complainant. Indeed, Respondent claims that Complainant created any confusion that may exist. Respondent argues that it bought the Domain Name because it desired a short, dictionary word name. Respondent asserts that, when it did so, it did not imagine that another party could assert a proprietary interest in a domain name comprised of a dictionary word. Respondent states that it does not provide competing services with those of Complainant and that Respondent had no knowledge of Complainant until being contacted by Complainant this year. Respondent argues that, because the Policy was intended to combat clearly abusive bad faith cybersquatting, any theory of constructive notice is not appropriate for these proceedings. Lastly, Respondent cites the Latham Act and claims that, even if Complainant were to argue that it is entitled to have the subject matter of the Domain Name changed, Complainant would not be entitled to a transfer of the Domain Name.
6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
For the reasons discussed below, the Panel concludes that Complainant has satisfied its burden of proving all three of these factors by a preponderance of the evidence. See Bootie Brewing Co. v. Deanna D. Ward, WIPO Case No. D2003-0185 (May 28, 2003) (acknowledging consensus on use of preponderance of the evidence standard).
A. Identical or Confusingly Similar
There is no dispute over Complainant’s trademark rights in THE KNOT and various permutations thereof (such as THE KNOT REGISTRY and THE KNOT WEDDING BOX). These and other related marks are registered with the U.S. Patent and Trademark Office and, therefore, are entitled to a presumption of validity. See Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at § 1.1 (“If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.”) (available at https://www.wipo.int/amc/en/domains/search/overview/index.html).1
Nor can there be any legitimate dispute as to whether the domain name is confusingly similar to Complainant’s trademark. Except for the lack of the definite article “the,” the Domain Name consists entirely of the distinctive portion of Complainant’s mark: KNOT. The addition or deletion of a definite article is irrelevant to a determination of confusing similarity. Telstra Corp. v. Heaydon Enters., WIPO Case No. D2000-1672 (January 21, 2001). Because the Domain Name incorporates in its entirety the distinctive portion of Complainant’s trademark, the Domain Name is confusingly similar to Complainant’s trademark for purposes of the Policy. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000) (“[A] domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.”); See also Decision Overview §§ 1.2 and 1.3.
The Panel thus finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent does not claim that it has been commonly known by the name “knot” (Policy paragraph 4(c)(ii)), nor does it claim to be making a noncommercial or fair use of the domain name, without intent for commercial gain (Policy paragraph 4(c)(iii)). In fact, although the record is silent on this point, it appears to the Panel that Respondent profits from click-through revenues generated from its website’s offering of advertising and hyperlinks, which are generated through an advertising aggregation service.
Respondent does, however, claim rights in the domain name under paragraph 4(c)(i) of the Policy, which provides that a respondent can demonstrate rights or a legitimate interest in a domain name if it can show that, “before any notice to [respondent] of the dispute, [respondent made] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.
Respondent correctly asserts that it may be legitimate for a respondent to register a domain name consisting of a dictionary word that is not a well-known trademark and use that website to post links that are relevant to the common meaning of the dictionary word. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF File No. 285459 (August 6, 2004); see also National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (August 10, 2005); WIPO Decision Overview § 2.2. As the Panel explained in the Landmark Group case, though, this business model is legitimate only if “the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks.”
In this case, it strains credulity to believe that Respondent acquired this domain name for $5,000 because of its attraction as a dictionary word. If that were the case, one would expect to see links and advertisements related to the kinds of knots made from rope and string, which is the primary meaning of the word “knot” in the dictionary reference Respondent submitted with its Response. Instead, Respondent uses its website primarily to post links and advertising about marriage – the same topic that is covered at Complainant’s theknot.com website, which receives more than 2 million hits each month – which leads to the inference that Respondent registered the Domain Name because of its value as a source of information about weddings based on the fame built up through Complainant’s trademark and website, and not because “knot” is a good dictionary word for a site providing information about weddings.2 That use is neither legitimate nor does it constitute a “bona fide offering of goods or services.” See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (February 24, 2006); Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (March 20, 2006); Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231 (May 10, 2005); See also Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000) (no bona fide use if use appears to be infringing).
Finally, Respondent asserts that it cannot be characterized as a typosquatter because it has not misspelled the word “KNOT.” Although that argument is besides the point – the Panel finds that Complainant has satisfied its burden under the second factor based on the facts alleged and inferences that can be drawn from those facts, rather than how Complainant characterizes the Respondent – the Panel believes it appropriate to note that Respondent’s argument reflects an overly-restrictive interpretation of the practice known as “typosquatting.” Although one form of typosquatting is the registration of domain names that are common misspellings of well-known marks or domain names, See, e.g., e-Duction, Inc. v. John Zuccarini, WIPO Case No. D2000-1369 (February 5, 2001), the general category of typosquatting covers any domain name that is intended to capture Internet users who are likely to type in a different domain name than the one they are looking for. Thus, if Respondent’s intention was to divert consumers looking for theknot.com to its website, it would equally constitute typosquatting whether it did so through a misspelling (such as thenot.com) or by dropping the definite article “the” (as in its knot.com domain name).
C. Registered and Used in Bad Faith
The same facts that support an inference that Respondent lacks rights or a legitimate interest in the Domain Name also support an inference that Respondent registered and is using this specific Domain Name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source sponsorship or affiliation of Respondent’s website. That constitutes classic bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Respondent attempts to avoid this finding with two arguments. First, Respondent argues that the relevant date to consider is not Respondent’s acquisition of the Domain Name in 2004, but rather its predecessor’s registration of the Domain Name in 1996, which predates the creation of Complainant’s trademark rights. As Respondent argues, “it is absurd for the Complainant to assert that the domain name knot.com was registered for the purpose of ‘diverting’ customers from their own then-non-existent domain name and alleged trademark.”
Respondent’s argument reflects a misunderstanding of the relevant principles under the third factor. The issue is not whether Respondent’s predecessor registered and used the Domain Name in bad faith, but rather, whether Respondent itself registered and used the Domain Name in bad faith. That question can only be answered with reference to the Respondent’s conduct, and not any conduct by its predecessor (which is an unrelated company that was using the Domain Name in connection with an unrelated business). See Melbourne 2006 Commonwealth Games Corporation v. B & M Group Of Companies Pty Ltd, WIPO Case No. D2005-0366 (June 16, 2005). Judging by this standard, the Panel finds that, when Respondent acquired the Domain Name in 2004, Complainant’s theknot.com website was well-known and successful in the wedding-related field, and thus that Respondent’s registration of knot.com at that time was done to divert consumers looking for the theknot.com website to the knot.com website, and then to keep those consumers at the knot.com website by offering links and advertisements for competitive wedding-related services. Airbus Deutschland Gmbh v. DOMAIN-NAME-4-SALE, WIPO Case No. D2005-0092 (March 14, 2005).
Respondent’s second argument is that it could not possibly have registered the knot.com domain name in bad faith with the goal of diverting consumers from Complainant’s theknot.com website because, Respondent states, it had not heard of Complainant prior to the initiation of this dispute and had no prior knowledge of Complainant’s trademark rights.
The Panel finds that assertion not credible. The evidence Complainant has submitted without contradiction from Respondent – that theknot.com is the most trafficked wedding website, with over 2.1 million visitors a month, that it is the leading wedding-related content provider to AOL, MSN, and Comcast, that it publishes several wedding magazines, and that it is the leading retailer of wedding favors and supplies on the Internet – supports an inference that Respondent must have been aware of Complainant’s website at the time that it decided to purchase the knot.com domain name for $5,000 for use as a website for aggregated advertising related to weddings. Further supporting that inference are that both parties’ sites are in the same language (English), both parties are based in the same country (the United States), and Respondent offers links on its knot.com website that are directly related to Complainant’s industry rather than to other, more common dictionary meanings of the word “knot.” The Panel thus does not credit Respondent’s assertion that it had no knowledge of Complainant before the initiation of this dispute.
Another reason that the Panel doubts the veracity of Respondent’s claims is that its assertions – particularly, its claims regarding its motivation for acquiring the disputed domain name, and its lack of knowledge of Complainant and its mark at that time – were contained only in the Response submitted and signed on Respondent’s behalf by its counsel, and not in any sworn affidavit signed by an individual with personal knowledge. Although certifications by counsel do carry some weight, in this case, the absence of a sworn affidavit is relevant. Respondent is identified only by a fictitious and apparently unregistered name, “In Knot We Trust LTD,” and has registered the Domain Name in care of a mysterious proxy registration service with a post office box in a nonexistent town and an obviously invalid telephone number. Respondent is, of course, entitled to conceal its identity, but in the absence of any sworn statement, the Panel is left to weigh reasonable inferences supported by the evidence against the unsubstantiated claims of an anonymous entity.
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 <knot.com> be transferred to Complainant.
David H. Bernstein | |
David W. Quinto |
David E. Sorkin |
Dated: June 26, 2006
1 Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled by WIPO from the decisions of numerous WIPO panelists during the first five years of administration of the UDRP. See Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 (March 21, 2005). Accordingly, when such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004).
2 In support of this conclusion, the Panel notes that the United States Patent and Trademark Office (“PTO”) registered Complainant’s THE KNOT marks for marriage-related services without requiring a showing of acquired distinctiveness. This indicates that the PTO believed the marks to be inherently distinctive, and not descriptive of the services provided.