WIPO Domain Name Decision: D2008-0289

The Complainant is LeasePlan Corporation N.V., of Almere, The Netherlands, represented by Brinkhof Advocaten, The Netherlands.

The Respondent is Vertical Axis, Inc. dba. CKV of Hong Kong, SAR of China, represented by ESQwire.com, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2008. On February 29, 2008, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On March 7, 2008, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the information contained in the Complaint. The Center sent an email communication to the Complainant on March 12, 2008, providing the information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 14, 2008. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 6, 2008. The due date was extended as per the Respondent’s request and the Complainant’s consent until April 11, 2008. The Response was filed with the Center on April 11, 2008.

The Center appointed Brigitte Joppich, David E. Sorkin and Jonathan Turner as panelists in this matter on May 6, 2008. 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 paragraph 7 of the Rules.

The Complainant in this proceeding is the world market leader in operational car leasing. With subsidiaries in 29 countries, it employs almost 6,000 people worldwide, manages over 1.28 million vehicles and has used the designation LEASEPLAN since 1963.

The Complainant and its subsidiaries own numerous trademark registrations containing the word “Leaseplan”, including Community registration No. 002270346 LEASEPLAN & device as of June 21, 2001, US registration No. 2746041 LEASEPLAN & device as of July 23, 2001, US registration No. 2706086 LEASEPLAN as of February 5, 2001 and Benelux registration No. 0154170 LEASE PLAN as of September 9, 1987, all registered for vehicle leasing, vehicle renting and fleet management services (the “LEASEPLAN Marks”).

The Complainant markets its services on the Internet at “www.leaseplan.com” as its main website. In addition, the Complainant and its subsidiaries hold over a hundred other domain names containing the word “Leaseplan”.

The Respondent in this administrative proceeding is Vertical Axis, Inc. dba. CKV. The identity of the Respondent was previously protected by a Whois Privacy Service provided by the registrar of the disputed domain name, Nameview Inc. Such privacy services are provided for domain name owners who do not wish to be listed with their personal contact information in the public WhoIs register e.g. to avoid unsolicited email correspondence. Having been informed of the Complaint by the Center, the Registrar named CKV, Hong Kong, SAR of China, as true owner of the disputed domain name behind the privacy shield. In its Response, the Respondent then identified itself as Vertical Axis, Inc. The Panel is confident that Vertical Axis, Inc. dba as CKV is responsible for the registration and use of the disputed domain name and will treat it as sole Respondent in this administrative proceeding.

The Panel has further noted that the Respondent has previously been involved in at least 25 different domain cases.

The disputed domain name was first registered on December 2, 2005 and is being used in connection with a website providing links for third parties’ products including products directly competing with those of the Complainant.

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The domain name <leasplan.com> is confusingly similar to the LEASEPLAN Marks as it only differs from LEASEPLAN by the omission of the letter “e”. Therefore, the domain name is aurally identical to the LEASEPLAN Marks, the suffix “.com” being a non distinctive element.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no 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, of the Respondent having been commonly known by the domain name, or of the Respondent’s making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

(3) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the disputed domain name is the Complainant’s domain name with a typographical error and has therefore been chosen with the Complainant’s LEASEPLAN Marks and domain name in mind.

With regard to bad faith use, the Complainant contends that the Respondent’s intent is to misleadingly divert consumers to its website, causing confusion amongst them by creating the impression of an economic relationship with or sponsorship or endorsement of the Respondent by the Complainant for commercial gain. Furthermore, by registering <leasplan.com> the Respondent is preventing the Complainant from reflecting its trademark in a corresponding domain name.

The Respondent contends that the LEASEPLAN Marks are generic or descriptive and therefore unenforceable under the Policy and that the descriptive nature of the term “lease plan” is underscored by more than 2 million third party uses of the term “lease plan” as evidenced by a Google search.

Furthermore, the Respondent asserts that the domain name is not confusingly similar to the LEASEPLAN Marks as such marks incorporate a descriptive term and minor differences are sufficient to eliminate a finding of confusing similarity.

The Respondent further contends that it has rights and a legitimate interest in the domain name based on the common descriptive content of the domain name, that the fact that the domain name is a misspelling of the descriptive term “lease plan” does not remove it from the safe harbor permitting registration of descriptive terms and that the domain name was used in a descriptive way, namely to post advertising links related to leasing.

Finally, the Respondent contends that the domain name was not registered in bad faith. In support of this allegation the Respondent states that

- it did not have any knowledge of the Complainant or its trademark and it registered the domain name when its prior registrant failed to renew it after expiry, expiry and deletion indicating that eventual trademark claims to the domain name had been abandoned and that the domain name could be registered in good faith; that

- it registered <leasplan.com> because it is based on a descriptive term; and that

- this fact is supported by dozens of other descriptive term domain names registered by the Respondent, incorporating “lease” or “plan” and numerous typographical variations of other common words and terms, the similarity between the domain name and the Complainant’s marks being unintended and strictly coincidental.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and

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

The Respondent contends that the Complainant’s trademarks are generic or descriptive and therefore unenforceable under the Policy. However, it is the consensus view that if the complainant owns a registered trademark, it will satisfy the threshold requirement of having trademark rights (cf. Uniroyal Engineered Products, Inc. v. Nauga Network Services - WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree – WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano – WIPO Case No. D2003-0661). The question whether or not such trademark might be unenforceable is not to be dealt with under paragraph 4(a)(i) of the Policy.

The disputed domain name includes the LEASEPLAN Marks in their entirety, while merely omitting the letter “e” in the middle. The Panel believes that – even without the letter “e” in its middle – the average person will readily identify the term “leaseplan” in this domain name which corresponds to the Complainant’s LEASEPLAN Marks. Furthermore, the domain name is phonetically identical to the LEASEPLAN Marks.

The Respondent’s assertion that minor differences are sufficient to eliminate a finding of confusing similarity if the domain name incorporates a descriptive term might apply to cases where the opposed names both consist of generic terms (such as “TIREDISCOUNTERS” and “tirediscounter.com” in Tire Discounters, Inc. v. TireDiscounter.com, NAF Case No. FA 679485) but not where one is clearly not a generic term but only an erroneous variation of the other.

It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent 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; or

(ii) 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; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name it is consensus view among panelists that the Complainant has to make a prima facie case to fulfill the requirements under paragraph 4(c) of the Policy. Thereafter, the burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will shift to the Respondent.

The Complainant has asserted that there is no 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, that the Respondent is commonly known by the domain name, or that the Respondent is making a legitimate non-commercial or fair use of the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(c) of the Policy.

The Respondent has denied these assertions contending that it has rights and a legitimate interest in the domain name based on its common descriptive content derived from the misspelling of “lease plan”. However, the Panel finds that the Respondent cannot rely on the descriptive meaning of the disputed domain name: The trademark LEASEPLAN was registered by the USPTO for “LEASING OF VEHICLES, NAMELY, FLEET VEHICLE LEASING SERVICES” without any additional distinctive elements, and without a disclaimer. And even if the term “Leaseplan” was descriptive, the disputed domain name does not consist of such descriptive term but is a variation of a descriptive term which, by itself, is not merely descriptive.

The Panel thus finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under Paragraphs 4(a)(ii) and 4(c) of the Policy.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.

As to bad faith registration, the Complainant is fairly well known internationally and has been doing business throughout the world for decades. Given the fact that the Respondent registered numerous domain names referring to “leasing”, it seems that it is focused on or at least familiar with the leasing business. It is therefore rather unlikely that the Respondent had no knowledge of the Complainant when it registered the disputed domain name. Furthermore, at the time of the registration of the disputed domain name, the Complainant was already present on the Internet at “www.leaseplan.com”. When registering a typo of a supposedly descriptive term, the first choice of every commercial domain name registrant would be the registration of the descriptive term itself. The Respondent probably found that the domain name <leaseplan.com> was already taken when it was looking for a domain name and, as a result, registered the variation with the typographical error. Therefore, on balance, the Panel finds it highly unlikely that the Respondent registered the disputed domain name without knowledge of the Complainant as world market leader in operational car leasing and its rights in the LEASEPLAN Marks.

The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its trademarks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.

As to bad faith use, by using the website at the disputed domain name as a parking website, providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

This finding of bad faith use is further supported by the fact that the Respondent was ordered to transfer domain names to the respective complainants in earlier proceedings where registration and use in bad faith were established (although the Panel is aware that the majority of the panels in previous proceedings have denied transfer of the domain name at issue). Still, the Respondent has acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <leasplan.com> be transferred to the Complainant.

Brigitte Joppich Presiding Panelist
David E. Sorkin Panelist	Jonathan Turner Panelist