WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Myxer Inc. v. Marketing Total S.A., Domain Drop S.A., Keyword Marketing, Inc.
Case No. D2008-0169
1. The Parties
The Complainant is Myxer Inc., Deerfield Beach, United States of America, represented by Foley & Lardner, United States of America.
The Respondent is Marketing Total S.A., Domain Drop S.A., Keyword Marketing, Inc., Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Names and Registrars
The disputed domain names:
<mixxer.net>
<myxeretones.com>
<myxeringtone.com>
<myxertoens.com>
<myxerwallpaper.com>
<myxerz.com>
are registered with BelgiumDomains LLC and DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2008. On February 4, 2008, the Center transmitted by email to BelgiumDomains, LLC and DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On February 4, 2008, BelgiumDomains, LLC and DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2008.
On March 3, 2008, the Complainant filed an unsolicited Supplemental Filing stated to be based on new information not available to the Complainant at the time the original Complaint was filed. The Supplemental Filing sought the addition of twelve further domain names to the Complaint. The Center subsequently acknowledged the fact of receipt of this document, indicating that it would be brought to the Panel’s attention.
The Center appointed Ian Blackshaw as the sole panelist in this matter on March 7, 2008. 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.
On March 10, 2008, on the Panel’s instructions, the Center advised the parties that the Panel had considered the Complainant’s request to add twelve additional domain names, but that the Panel was not disposed to do so in this case. Rather, the Panel believed that in the interests of administrative efficiency the more appropriate course is for it to proceed to a Decision on the basis of the six domain names identified in the original Complaint, which the Panel has done. The Panel further refers here to the previous decision of Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. 2007-0547, in which the learned panel discussed the issue of an amendment to a complaint to include additional after formal commencement. The Panel in this case finds the reasoning in that decision similarly applicable to the circumstances of the present case. The Complainant is of course free to file a separate Complaint in relation to the additional twelve domain names should it choose to do so. The Panel further finds it unnecessary to consider any of the other matters raised in the Supplemental Filing in order to determine the merits of the present case.
4. Factual Background
The Complainant is the owner of a well-known family of “MYXER” service marks, including but not limited to the marks MYXER, MYXER TONES, MYXER TAGS and MYXER PICS (collectively, the “MYXER Marks”). The Complainant, under its current name and former corporate name (mVisible Technologies, Inc.), has used its MYXER Marks since at least as early as September 2005 in connection with telecommunication services, including but not limited to the dissemination of mobile content via the Internet and the transmission of data via mobile telephones. Several of the MYXER Marks are federally registered with the United States Patent and Trademark Office. True and correct copies of those Registrations have been provided to the Panel. The Complainant also owns Community Trade Mark registrations in the European Union for four of its MYXER Marks, copies of which have also been provided to the Panel.
The Complainant provides its above-referenced services through the Internet via a website accessible through the domain names <myxer.com>, <myxertones.com> and <myxertags.com>, amongst others. The Complainant has operated a commercial website through these domain names since at least as early as 2005 in connection with providing its above-referenced services offered under its MYXER Marks. Evidence of this has been provided to the Panel. Since the Complainant first debuted its online services using its family of MYXER Marks, it has enjoyed tremendous growth. Today, there are more than 3.8 million unique users of the Complainant’s services in over 180 countries worldwide. In the month of November 2007 alone, more than 1.2 million unique visitors accessed the Complainant’s website. Of that number, well over 225,000 of those visitors were directed to the Complainant’s website as a result of typing variations of the Complainant’s MYXER Marks into popular online search engines. Evidence of all these statements has been provided to the Panel.
At all times relevant to this Complaint, the Complainant has successfully saturated the Internet market with its name, services and MYXER Marks. Since 2005, the Complainant has spent more than $100,000 dollars each year advertising its MYXER Marks and services in connection with the same. The Complainant spent approximately $500,000 for such advertising in 2007 alone. Again, evidence of all this has been provided to the Panel.
As a result of the widespread use of the Complainant’s MYXER Marks promoted to millions of consumers worldwide over the course of several years, the Complainant’s MYXER Marks have come to be well-known among consumers and the general public. The family of MYXER Marks are recognized by the public as originating from the Complainant and distinguish the Complainant’s services from those of others.
The Complainant, through its significant efforts, skills and experience, has acquired and enjoys a substantial goodwill and a valuable reputation through its distinctive MYXER Marks. The maintenance of high standards of quality and excellence for the Complainant’s services has contributed to this valuable goodwill and reputation.
The Complainant has expended and continues to expend a significant amount of time and money to advertise, market, offer for sale, and promote its services through its distinctive MYXER Marks.
5. Parties’ Contentions
The Complainant makes the following contentions:
A. Complainant
A1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
There can be no doubt that each of the Respondent’s domain names is confusingly similar to the family of MYXER Marks in which the Complainant has rights. As set forth in further detail below, all of the disputed domain names fully incorporate, and are confusingly similar to, the distinctive MYXER Marks.
It is well established that when a domain name incorporates a distinctive mark in its entirety, this creates sufficient similarity between the mark and the domain name to render it confusingly similar. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises Inc., WIPO Case No. D2000-0047 (the panel found that the domain name <eautolamps.com> was confusingly similar to the mark EAUTO); and America Online, Inc. v. John Zuccarini also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495 (numerous domain names which included the marks “AOL”, “Instant Messenger” and “MSN” were found to be confusingly similar to complainant’s marks).
It is also well established that the addition of a single letter to a famous trademark results in a domain name that is confusingly similar to the Complainant’s mark. See Banco Bilbao Vizcaya Argentaria, S.A. v. femi abodunrin, WIPO Case No. D2004-0404 (<bbvas.com> domain name was confusingly similar to incorporated “bbva” mark and mere addition of “s” did not alleviate confusion); Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (<microosoft.com> domain name was confusingly similar to “Microsoft” mark); ACCOR v. Eduardo Marchiori Leite, WIPO Case No. D2004-0680 (<thalassar.com> domain name was confusingly similar to “Thalassa” mark); Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441 (domain names which were variations of “Reuters” mark with the addition or omission of one letter found to be confusingly similar to that mark).
In the present case, five of the six disputed domain names contain the Complainant’s MYXER mark in its entirety and/or a virtually identical variation of the Complainant’s MYXER TONES mark: MYXERETONES.COM, MYXERINGTONE.COM, MYXERTOENS.COM, MYXERWALLPAPER.COM and MYXERZ.COM. Also, each of the disputed domain names is virtually identical to the Complainant’s respective <myxer.com> and< myxertones.com> domain names. As recently held by another UDRP panel, given that the Respondent has incorporated the Complainant’s MYXER mark in its entirety in each of the foregoing disputed domain names, there can be no doubt that this creates a likelihood of confusion with the Complainant’s family of MYXER Marks. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (finding numerous domains which incorporated the Complainant’s MYXER mark in its entirety were confusingly similar to the Complainant’s marks and ordering transfer of all 35 domain names at issue to the Complainant).
In addition, the websites accessible through many of these domain names contain sponsored links to websites of providers of downloadable ringtones for cellular phones, the same services provided by the Complainant. None of those links, however, actually directs consumers to the Complainant’s website. Instead, the websites accessible through these disputed domain names include links that actually lead consumers to websites belonging to competitors within the Complainant’s industry. True and correct copies of the current website content accessible through each of the aforementioned domain names have been provided to the Panel.
Moreover, the website accessible through the <myxertoens.com> domain name contains specific links to “MyxerRingtones” and “Wwwmyxertones.com”, and the website accessible through the <myxerz.com> domain name contains specific links to “MyxerRingtones” and “MYX Ringtones”. Those links, in turn, lead to other websites with links to third party websites relating to downloadable ringtones for cell phones – again, none of which lead consumers to the Complainant, but rather to the Complainant’s competitors. Again, evidence has been provided to the Panel.
The remaining disputed domain name, <mixxer.net>, is the phonetic equivalent of the Complainant’s MYXER mark. As prior UDRP panels have held, domain names which incorporate the phonetic equivalent of trademarks are confusingly similar to those marks. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (finding “mixxer” to be confusingly similar to the Complainant’s MYXER mark and ordering domain transfer); Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123 (finding the word “mikerosoft” in the disputed domain name was phonetically identical to complainant’s MICROSOFT trademark and ordering domain transfer); Sports Holdings Inc. v. “Texas International Property Associates”/“Sports Holdings Inc.”, WIPO Case No. D2007-0430 (finding multiple domains were phonetically identical and thus confusingly similar to complainant’s mark and ordering transfer of the same).
Moreover, the mere addition of a generic word to a famous trademark results in a domain name that is confusingly similar to the Complainant’s mark. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises Inc., WIPO Case No. D2000-0047 (the panel found that the domain name <eautolamps.com> which combined complainant’s registered EAUTO trademark with the generic word “lamps” was confusingly similar to complainant’s mark); mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (the addition of generic terms “does not sufficiently distinguish the resulting domain names from Complainant’s marks”), citing Accor v. Howell Edwin, WIPO Case No. D2005-0980. Just as in each of the above proceedings, in the present case, the <myxerwallpaper.com> domain name is also confusingly similar to the Complainant’s marks.
A2. The Respondent has no rights or legitimate interests in respect of the domain names;
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2)).
The WhoIs information for the disputed domain names does not suggest that the Respondent is commonly known by the disputed domain names or by the Complainant’s MYXER Marks. See, e.g., Tercent Inc. v. Lee Yi, NAF Case No. FA139720 (stating nothing in the respondent’s WHOIS information implies that the respondent is commonly known by the disputed domain name as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Respondent is not making a legitimate non-commercial or fair use of the disputed domain names or the MYXER Marks. Rather, the Respondent’s actions are intentionally deceptive and are part of a scheme to mislead consumers into believing that the “sponsored” website links located through the domain names are affiliated with, sponsored by or endorsed by the Complainant. See, e.g., Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170 (the panel found no legitimate use where domain name URL contained sponsored links to unrelated commercial websites), citing Drake Bliss v. Cyberline Enterprises, WIPO Case No. D2001-0718 (the panel found that the respondent failed to meet the second test of the Policy because the disputed domain name was not used for an “apt” current activity, but simply to provide sponsored links to unrelated commercial sites).
Accordingly, the Respondent should be considered as having no rights nor legitimate interests with respect to the MYXER Marks or any of the disputed domain names.
A3. The domain names were registered and are being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The disputed domain names should be considered as having been registered and being used in bad faith by the Respondent. As described herein, the Respondent registered and is using the domain names for unlawful and deceptive purposes.
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) [. . . ]
(ii) [. . . ]
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
As discussed above, the Complainant’s MYXER Marks have been used in commerce worldwide for several years in connection with the Complainant’s mobile content services.
The Respondent was undoubtedly not only aware of the MYXER Marks when it registered the disputed domain names but intentionally did so in bad faith in an attempt to trade upon the goodwill associated with those marks. The Complainant has used its MYXER Marks in its day to day business operations, including but not limited to use with the Complainant’s own website located through the Complainant’s domain names <myxer.com>, <myxertones.com> and <myxertags.com>, amongst others. As a result, the Complainant’s MYXER marks are well known and widely recognized for use with providing its mobile content services.
Moreover, as several of the MYXER Marks are registered with the U.S. Patent and Trademark Office, the Respondent was on constructive notice of the Complainant’s rights to those marks by virtue of Section 22 of the Lanham Act, 15 U.S.C. § 1072. See Volvo Trademark Holding AB v. Cosmos1, WIPO Case No. D2003-0648 (finding respondent registered <vovlo.com> domain name in bad faith and ordered to transfer the same to complainant).
The Respondent derives commercial benefit from the use of the disputed domain names, as the websites accessible through most of the domain names contains a search engine and “sponsored results” with links to other sites.
Moreover, as discussed above, the websites accessible through the <myxertoens.com> and <myxerz.com> domain names contains links to “Wwwmyxertones.com”, “Myxertones”, “Myxertones.com”, “MyxerRingtones” and “MYX Ringtones” which, in turn, lead to a variety of websites pertaining to cellular phone ringtones (again, none of which lead consumers to the Complainant, but rather to the Complainant’s competitors), further evidencing the Respondent’s clear attempt to trade upon the goodwill associated with the Complainant’s MYXER Marks. Evidence has been provided to the Panel.
It is well established that the use of another’s trademark in a domain name to provide links which attract consumers to competing websites constitutes bad faith under the Policy. See Enterprise Rent-A-Car Company v. Andrey Vishnevskii d/b/a Cosmos1 a/k/a NA NA, NAF Case No. FA263577 (finding bad faith against respondent where domain name <enterpriserentals.com> provided a search engine and links to a variety of car rental websites and complainant was a car rental company); citing Southern Exposure v. Southern Exposure, Inc., NAF Case No. FA 94864 (finding respondent acted in bad faith by attracting Internet users to a website that competes with complainant’s business); Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899 (finding respondent acted in bad faith where complainants were in the jewelry business and respondent’s domain names <jaredjewelers.com> and <kayjeweler.com> directed consumers to a website with a search engine and links to websites offering jewelry for sale by competitors).
Moreover, and as prior UDRP panels have held: “[a]ctual knowledge of Complainant’s rights (and consequent bad faith registration) can be inferred from Respondent’s multiple registrations of domain names containing misspellings of Complainant’s marks.” See Sports Holdings Inc. v. “Texas International Property Associates”/“Sports Holdings Inc.”, WIPO Case No. D2007-0430; see also Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (“The Respondent’s domain name misspelling of the Complainant’s trademark is designed to confuse and take advantage of Internet users who do not know the correct spelling of the Complainant’s mark or name or who mistyped it. Prior UDRP cases have found that such conduct alone creates a prima facie inference of bad faith.”); AltaVista Company v. Saeid Yomtobian ( WIPO Case No. D2000-0937) (finding “the use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because the Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark”). As the Respondent has registered at least five, if not six (it is respectfully submitted that the disputed domain name <mixxer.net> is also a misspelling as it is a phonetic variation of the Complainant’s MYXER mark) domain names containing misspellings of the Complainant’s MYXER Marks, there can be no doubt that the Respondent has acted in bad faith.
The Respondent is not making any proper use of the disputed domain names. Instead, by using the domain names, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the MYXER Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of products and services offered for sale through the “sponsored” websites listed on the Respondent’s websites. The Respondent’s acts were intended to trade on the recognition of the MYXER Marks, and were designed to deceive and defraud the public.
The Respondent’s registration and use of the disputed domain names are intended to disrupt the business of the Complainant. See Enterprise Rent-A-Car Company v. Andrey Vishnevskii d/b/a Cosmos1 a/k/a NA NA, NAF Case No. FA263577 (finding the respondent’s registration and use of <enterpriserentals.com> domain name were intended to disrupt the complainant’s business).
Moreover, this particular Respondent has a long history of engaging in such acts in bad faith. See, e.g., Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 (finding bad faith in the same circumstances as here, where the same Respondent was using disputed domain names “to direct or divert web users for profit (a pay-per-click scheme), to sites that sell products that compete with Complainant’s products” as specific evidence of bad faith, and noting the Respondent’s demonstrated “history of engaging in bad faith registration and use of domain names that violate the rights of others”, as “the Respondent has been involved in no less than twelve other proceedings since the beginning of [2007], all of which ordering cancellation or transfer of the domain names in issue”). There are no less than 83 UDRP panel decisions against the Respondent. The Panel has been provided with a complete list of these decisions.
As further evidence of bad faith, the Complainant respectively points out that the Respondent has been named as a defendant in at least two federal lawsuits in the United States of America for claims of trademark infringement and violations of the Anticybersquatting Consumer Protection Act, as follows:
|
Case Name |
COURT |
DOMAIN NAMES AT ISSUE |
DISPOSITION |
|
GNLV Corp. v. Marketing Total S.A. |
U.S. District Court, District of Nevada |
GOLDENNUGGETHOTELANDCASINO.COM GOLDENNUGGETWENDOVER.COM WWWLGOLDENNUGGET.COM |
Preliminary injunction granted, followed by voluntary dismissal |
|
Station Casinos, Inc. v. Domain Drop, S.A. |
U.S. District Court, Northern District of Nevada |
STATTIONCASINO.COM STATIONCASINI.COM |
Preliminary injunction granted, followed by voluntary dismissal |
As shown above, the court entered a preliminary injunction against the Respondent in both of those cases. According to publicly available court docket records, true and correct copies of which have been provided to the Panel, these lawsuits were voluntarily dismissed soon thereafter. As also seen above, the domain names at issue in those litigations included variations of well known trademarks. Such evidence is relevant to the Panel’s analysis of the Respondent’s bad faith in this proceeding.
It is not uncommon for consumers to accidentally misspell a desired domain name in their web browser. In this instance, the Respondent attempts to capitalize upon consumers who accidentally mistype either the Complainant’s MYXER Marks or <myxer.com> or <myxertones.com> domain names. Indeed, many of the Respondent’s domain names contain only one letter difference from the Complainant’s <myxertones.com> domain name, that letter being located immediately adjacent on a computer keyboard to the “correct” letter in the <myxertones.com> domain name. Thus, consumers looking for the Complainant’s website and services are instead diverted away from the Complainant to other providers of mobile content, including but not limited to downloadable ringtones for cellular phones. Such evidence demonstrates clear typosquatting by the Respondent in a bad faith attempt to trade upon the goodwill of the Complainant’s MYXER Marks and the services offered in connection with the same.
The Respondent’s use of the disputed domain names is highly likely to create consumer confusion. The Respondent took numerous acts intentionally designed to deceive consumers, specifically potential consumers of the Complainant’s services. The domain names redirect consumers to websites belonging to other mobile content providers which are not affiliated with, sponsored by or endorsed by the Complainant. The Respondent chose the domain names to deceive consumers into believing that the websites accessible there were affiliated with the Complainant.
In short, the Respondent has registered and is using the disputed domain names primarily for the purpose of trading upon the goodwill of the Complainant’s MYXER Marks and worse yet, in a blatant attempt to disrupt the Complainant’s business, by luring Internet users to the websites of the Complainant’s competitors. Such conduct creates a likelihood of confusion that the Respondent or the websites to which its registered domain names automatically resolve are sponsored by, affiliated with or endorsed by the Complainant. Thus, bad faith is evident under the Policy ¶ 4(b)(iii) and (iv).
B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.
6. Discussion and Findings
To qualify for cancellation or transfer of the domain names at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain names incorporate the Complainant’s trademarks MYXER and MXYER TONES in either their entirety or a virtually identical variation. Reviewing the disputed domain names in turn the Panel finds in respect of each of them as follows:
As to the disputed domain name <mixxer.net> the Panel agrees with the Complainant’s contention that the word “mixxer” is the phonetic equivalent of the Complainant’s trademark MYXER. As such, it is confusingly similar to the latter mark. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, in which the panel held that the word “mixer” was confusingly similar to the Complainant’s trademark MYXER and ordered the transfer of the disputed domain name from the respondent to the complainant in that case.
As to the disputed domain name <myxerz.com> the Panel also agrees with the Complainant’s contention that the addition of a single letter to a well-known trademark – in the present case the letter “z” – does not serve to distinguish the disputed domain name from the Complainant’s trademark MYXER. See Banco Bilbao Vizcaya Argentaria, S.A. v. femi abodunrin, WIPO Case No. D2004-0404, in which it was held that the disputed domain name in that case <bbvas.com> was confusingly similar to the complainant’s “bbva” mark and that the mere addition of the letter “s” did not eliminate confusion. See also ACCOR v. Eduardo Marchiori Leite, WIPO Case No. D2004-0680 (<thalassar.com> domain name was confusingly similar to “Thalassa” mark).
As to the disputed domain name <myxerwallpaper.com>, the Panel further agrees with the Complainant’s contention that the addition of a generic name to a well-known trademark – in the present case the word “wallpaper” – is not a distinguishing feature either to avoid confusion with the Complainant’s trademark MYXER. See EAauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises Inc., WIPO Case No. D2000-0047 in which it was held that the disputed domain name <eautolamps.com> which combined the complainant’s registered EAUTO trademark with the generic word “lamps” was confusingly similar to the complainant’s mark. See also Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273 in which it was held that the combination of the complainant’s mark “yahoo” with a number of generic words such as a city name or single and two letter abbreviations for a country name, gave rise to a domain name which was confusingly similar to the registered trademark of the complainant; eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 in which the same principle was applied finding that <gayebay.com> was confusingly similar to <ebay.com>; and Group Kaitu, LLC v. Sergei Vasiliev WIPO Case No. D2006-1229 in which it was held that the disputed domain name <erosporn.com> was confusingly similar to the complainant’s trademark EROS.COM.
Finally, as to the remaining disputed domain names <myxertoens.com> <myxeretones.com> and <myxeringtone.com>, the minor differences in the representation by the Respondent of the Complainant’s trademark MYXER TONES in these domain names, are likewise not sufficient, in the opinion of the Panel, to distinguish them from the Complainant’s well-known trademark MYXER TONES. Indeed, in the absence of any explanation to the contrary by the Respondent, of which none has been offered, these domain names appear to be calculated to mislead and cause confusion to anyone surfing the Internet seeking information about the Complainant and its services and constitutes, in the opinion of the Panel, not only a case of “cybersquatting” but also a case of so-called “typosquatting”. See Boehringer Ingelheim Pharma GmbH & Co. KG v. G Design, WIPO Case No. D2007-0569 and also the other UDRP cases therein cited.
Furthermore, the addition of the suffix “.net” or the suffix “.com” to the disputed domain names is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for trademark purposes under the Policy. See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112; Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617; and Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085.
In view of all this, the Panel finds that the disputed domain names registered by the Respondent are confusingly similar to the Complainant’s trademarks MYXER and MYXER TONES, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through registration and use in commerce for a number of years prior to the registration of the disputed domain names by the Respondent.
B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain names. Indeed, in view of the Complainant’s well-known trademarks MYXER and MYXER TONES and their use around the world, the Respondent must in all likelihood have known, when registering the disputed domain names, that the Respondent could not have – or, indeed, claimed – any such rights or interests. Indeed, as was pointed out in Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644, “it strains credibility” that the Respondent was oblivious of the existence of the Complainant’s well-known and widely-used trademarks MYXER and MYXER TONES when registering the disputed domain names. Apart from that, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to this Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.
Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademarks MYXER and MYXER TONES in the disputed domain names. Indeed, the adoption by the Respondent of domain names confusingly similar to the Complainant’s well-known trademarks inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s websites (see further on this point below) and the consequential tarnishing of the Complainant’s trademarks. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and its well-known trademarks MYXER and MYXER TONES and thereby unfairly attracting to its own business the valuable goodwill that the Complainant has established in its trademarks through extensive advertising, promotion and marketing, as well as the commercial use over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain names for websites that contain commercial links to other websites offering services competing with those of the Complainant. See QVC, Inc. and ER Marks, Inc. v. ActiveIdeas.com, WIPO Case No. D2005-1303, in which it was held that “[t]he use of a domain name that merely offers links to other websites is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i)”.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain names.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on its web site or location.”
Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain names, is trading on the Complainant’s valuable goodwill established in its well-known and widely-used trademarks MYXER and MYXER TONES. Furthermore, the fact that the Respondent’s websites contain commercial links to other websites offering competing services with those of the Complainant suggests that the Respondent must have been aware of the Complainant’s trademark and, as such, amounts to bad faith on the part of the Respondent. See TAG HEUER v. Whois Privacy Protection Service, Inc., WIPO Case No. D2005-0133. See also Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899. In the particular circumstances of the present case, the Panel takes the view that it was unlikely that the registrations of the disputed domain names by the Respondent were coincidental, but are rather more likely to have been intentionally made with the Complainant’s marks specifically in mind.
Again, by registering and using the disputed domain names incorporating the Complainant’s well-known and widely-used trademarks MYXER and MYXER TONES, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain names include the well-known and widely-used trademarks MYXER and MYXER TONES of the Complainant, registered by the Complainant several years before the Respondent registered the disputed domain names, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For a domain name can only be used in good faith by the owner of the respective right or by a licensee, neither of which is the situation in the present case.
Again, as mentioned above, the representations, including misspellings, by the Respondent of the Complainant’s well-known trademarks MYXER and MYXER TONES comprising the disputed domain names, in the absence of any explanation by the Respondent, of which none has been forthcoming, leads to the clear inference that this was done deliberately to mislead consumers seeking information on the Internet concerning the Complainant and its services by mistyping the Complainant’s name, which constitutes “typo-squatting”. As such, this may be construed as a further indication of bad faith on the part of the Respondent. See Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536. See also Sports Holdings Inc. v. “Texas International Property Associates”/ “Sports Holdings Inc.”, WIPO Case No. D2007-0430.
Likewise, the Respondent’s history of registering and using disputed domain names without any legitimate rights and interests, including the 83 previous UDRP decisions made against the Respondent as a result thereof, referred to above by the Complainant, in the view of the Panel, is further overwhelming evidence of bad faith on the part of the Respondent. See Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 and General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834.
Finally, the failure of the Respondent to answer the Complainant’s Complaint and take any part in these proceedings also suggests in combination with other factors bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain bad names in 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 names:
<mixxer.net>
<myxeretones.com>
<myxeringtone.com>
<myxertoens.com>
<myxerwallpaper.com>
<myxerz.com>
be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: March 17, 2008