WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sol Moscot, Inc. v. Web Master

Case No. D2007-0036

1. The Parties

The Complainant is Sol Moscot, Inc., New York, New York, United States of America, represented by Lewis & Hand, LLP, United States of America.

The Respondent is Web Master, Georgetown, Grand Cayman, Cayman Islands.

2. The Domain Name and Registrar

The disputed domain name <moscot.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2007. On January 12, 2007, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On January 15, 2007, BulkRegister.com 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, the Complainant filed an amendment to the Complaint on January 30, 2007. 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 on February 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2007.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 9, 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 family run business that has sold eyeglasses, eyeglass frames and optical services in New York City over the span of four generations. In 1900, Hyman Moscot began selling eyeglasses from a pushcart, and in 1920, he established his first retail location. Three subsequent generations of Moscots have operated the business since then under the names “Moscot’s”, “Sol Moscot” or “Sol Moscot Opticians”.

The Complainant has an active database of more than 100,000 customers and has served more than one million customers in its history. Annually, the Complainant has approximately $4 million in sales. The reputation of the Complainant and its products and services has been enhanced through media attention resulting from the long history of the business.

The Complainant owns a United States Trademark Registration for the trademark MOSCOT ORIGINALS Design under Registration Number 2,936,703.

The Complainant registered the domain name <moscot.com> on December 12, 2001 and maintained an active website at this address from early 2002 through mid-2004. At that point, the Complainant appears to have inadvertently allowed this domain name registration to expire. Prior to expiration, the website was receiving a volume of Internet visitors comparable to the traffic experienced by its current website located at “www.moscots.com”. The “www.moscots.com” site received roughly 62,000 visitors from August 2005 until January 2007.

On July 10, 2004, soon after the Complainant’s registration for <moscot.com> had expired, the Respondent registered the domain.

In September 2005, the Complainant contacted the Respondent to advise that the domain name had been inadvertently allowed to expire and to request its return. The Respondent did not take any action in response.

At the date of the Complaint, the Respondent was operating a website providing links to other parties’ websites.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar – The domain name <moscot.com> is virtually identical to or confusingly similar to the Complainant’s registered trademark MOSCOT ORIGINALS and its common law trademarks SOL MOSCOT, MOSCOT.COM and MOSCOTS.COM. The dominant element in each of the Complainant’s trademarks is the word “moscot”. The deletion of the descriptive word “original”, the first name “sol”, or the letter “s” does not serve to distinguish the domain name from the Complainant’s trademarks in any meaningful way.

(b) Rights or Legitimate Interest – The Respondent has never been known by the name Moscot and has no rights or legitimate interest in respect of the domain name <moscot.com>. The Respondent has made no use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. The Complainant has not licensed, transferred, assigned or otherwise authorized the Respondent to use any of its MOSCOT trademarks, or any variation thereof, as domain names on the Internet. The Respondent has engaged in a pattern and practice of registering, as domain names, well-known and famous trademarks and pointing them to websites featuring pay-per-click advertising with links to competitors and other commercial websites. Numerous UDRP decisions have been issued against the Respondent, and other aliases of the individual controlling the Respondent, in these types of situations. In this case, the Respondent has again registered the domain name for the sole purpose of profiting off of the commercial notoriety of the Complainant and its MOSCOT trademarks. At the time this complaint was filed, the Respondent’s website displayed a search page with links to various other websites.

(c) Registered and Used in Bad Faith – The Respondent’s domain name was registered and is being used in bad faith based on the following factors: (i) Respondent had knowledge of the Complainant’s long and continuous use of the MOSCOT trademarks at the time of registration; (ii) Respondent had no right, title or interest, whatsoever, in the MOSCOT trademark or the <moscot.com> domain name; (iii) Respondent registered the domain name shortly after the Complainant inadvertently allowed it to expire; (iv) Respondent has a history of registering domain names with false Whois information and has used false Whois information in this instance; (v) Respondent diverts traffic through confusion for monetary gain by offering links to other commercial websites; (vi) Respondent has a history of registering domain names that have lapsed in order to divert traffic; and (vii) Respondent has been put on actual notice in other UDRP proceedings that the registration of domain names containing other party’s trademarks is not permissible.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent 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

The first issue in this matter is whether the domain name <moscot.com> is confusingly similar to the Complainant’s trademark. There are two elements that must be satisfied: (a) the Complainant has rights in the particular mark; and (b) the domain name in question is identical or confusingly similar to that mark.

The Complainant owns a United States Trademark Registration for the trademark MOSCOT ORIGINALS Design. The Complainant claims that it holds common law rights in the United States in the trademarks SOL MOSCOT, MOSCOTS.COM and MOSCOT.COM.

The Complainant has produced a copy of the particulars of its United States Trademark Registration No. 2,926,703. The particulars of the registration may be independently verified by reference to the applicable Trademarks Register.

The Complainant has produced evidence to establish use of its MOSCOT trademarks for more than eighty years in the United States. The Complainant has an active database of more than 100,000 customers and has served more than one million customers in its history. Annually, the Complainant has approximately $4 million in sales. The Complainant and its products and services have received media attention resulting from the extensive family history of the business.

The Complainant owned and operated its own website at the domain name <moscot.com> before it appears inadvertently allowing the domain name to expire. The Complainant now operates its website at the domain name <moscots.com>.

A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered. (Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575). A complainant may have rights in the distinctive component of a mark notwithstanding the fact that the complainant only registered a mark that consisted of the distinctive component with other descriptive words. (Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575; Finter Bank Zurich v. Gianluca Olivieri, WIPO Case No. D2000-0091).

The Panel accepts the Complainant’s contention that it holds rights in the MOSCOT ORIGINALS and SOL MOSCOT trademarks.

The dominant and distinctive element in each of the Complainant’s trademarks is the word “moscot”. The Respondent has used this distinctive element, in its entirety, as the sole element of the domain name <moscot.com>. Consequently, the Panel accepts the Complainant’s contention that the domain name <moscot.com> is confusingly similar with marks in which the Complainant has rights.

The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has ever been known by the name Moscot, or that it has any rights or legitimate interest in respect of the domain name <moscot.com>.

The Respondent is not affiliated with the Complainant, nor has the Complainant authorized, licensed or permitted the Respondent to use its MOSCOT trademarks.

There is no indication that the Respondent is using the domain name in connection with a bona fide offering of goods or services. Instead, the Respondent apparently uses the domain name as a way to attract Internet users to its website which consists entirely of links to other commercial websites in what appears to be a “click through” site. (Society for Human Resource Management v. Local Services ICN, WIPO Case No. D2004-0127).

The Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the domain name <moscot.com>. The Respondent has failed to rebut this presumption.

The Panel therefore finds that the Complainant has satisfied the second requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the record provided, the following factors lead the Panel to infer and conclude that the Respondent registered and used the domain name <moscot.com> in bad faith.

(1) The Complainant had used its MOSCOT trademarks for more than 80 years before the Respondent registered the domain name;

(2) The MOSCOT trademarks are distinctive, and there is no obvious reason to adopt MOSCOT as a primary element in a domain name except to take advantage of that distinctiveness;

(3) The Complainant registered the domain name on December 12, 2001 and maintained an active website at this address from early 2002 through mid-2004. It would appear that the Respondent opportunistically registered the domain name shortly after the Complainant inadvertently allowed it to expire;

(4) The Respondent, by using the domain name, has in all likelihood intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks. The Respondent is clearly trading on the Complainant’s goodwill and reputation in its trademark and business; (Viacom International Inc., and MTV Networks Europe v. Web Master, WIPO Case No. D2005-0321).

(5) The Respondent has engaged in a pattern of registering domain names confusingly similar to the trademarks of others and has previously been instructed by Panels in other UDRP proceedings that such conduct constitutes evidence of bad faith; (The Belo Company, Belo Investments II, Belo Corp. v. Web Master, WIPO Case No. D2006-0787; Eveready Battery Company, Inc. v. Web Master, WIPO Case No. D2006-1483; Viacom International Inc., and MTV Networks Europe v. Web Master, WIPO Case No. D2005-0321).

(6) The Respondent apparently used false Whois information; (Verio Inc. v. Sunshinehh, WIPO Case No. D2003-0255; Carfax, Inc. d/b/a Carfax v. Auto Check USA, WIPO Case No. D2001-0929).

(7) The Respondent did not reply to the Complainant’s contentions. (Viacom International Inc., and MTV Networks Europe v. Web Master, WIPO Case No. D2005-0321; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633).

All of these factors lead to the conclusion that the Respondent registered and used the domain name <moscot.com> in bad faith under paragraph 4(b) of the Policy. The Panel therefore finds that the Complainant has satisfied the third requirement of paragraph 4(a)(iii) of the Policy.

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 <moscot.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Dated: March 19, 2007