WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Regan Campbell Ward-McCann v. Site Services International, Richard Sorensen

Case No. D2008-0386

1. The Parties

The Complainant is Regan Campbell Ward-McCann of New York, New York, United States of America, represented by Davis Wright Tremaine LLP, of New York, New York, United States of America.

The Respondent is Site Services International, Richard Sorensen, of Dallas, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <rcw.com> (the “Disputed Domain Name”) is registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2008. On March 11, 2008, the Center transmitted by e-mail to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the Disputed Domain Name. On March 12, 2008, Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by e-mail 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 Respondent of the Complaint, and the proceedings commenced on March 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2008. Due to a technical difficulty, the Center re-notified the Complaint on March 20, 2008, re-setting the due date for the Response as April 9, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 29, 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 May 8, 2008, the Panel issued a procedural order requesting additional information from Complainant regarding its use of the trademark at issue. On May 19, 2008, Complainant submitted a response to the procedural order.

4. Factual Background

Complainant states that it was founded in 1997 and is “a full service advertising and communications agency focusing on the marketing and promotion of pharmaceutical, medical and health-care products and services”. Complainant states that its “full name is often abbreviated as ‘RCW’ and that abbreviation is used interchangeably with Complainant’s full name, and is further used as a trademark in connection with Complainant’s services”. In support thereof, Complainant provided as exhibits examples of uses of the RCW mark, including on Complainant’s website, in multiple presentations and on promotional products. This mark is referred to hereafter as the “RCW Trademark”.

Complainant states that it originally registered the Disputed Domain Name on April 22, 1998, but that “sometime in August 2006 the ownership of the [Disputed] Domain Name was ‘hijacked’ by an unknown party and improperly transferred to Respondent”. Complainant states that this hijacking was accomplished “using an as-yet-unidentified method”. Complainant states that it has used the Disputed Domain Name in connection with its services and that, despite subsequent registration of the Disputed Domain Name by Respondent, the Disputed Domain Name continues to be used in connection with a website for Complainant.

5. Parties’ Contentions

A. Complainant

In addition to the factual background set forth above, Complaint contends, inter alia, as follows:

- The Disputed Domain Name is identical to the RCW Trademark, which is a trademark in which Complainant has rights, because “the RCW[Tradem]ark has developed secondary meaning as a result of its extensive and continuous use in connection with advertising and communications services provided by Complainant”, and “[t]he [Disputed] Domain Name is identical to [Complainant]’s name and common law trademark with the exception of the legally inconsequential addition of the generic top-level domain signifier”.

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “there is [no] evidence that Respondent has been commonly known by the [Disputed] Domain Name or any variant thereof”, “Respondent’s use of a domain name incorporating Complainant’s trademark, even without more, supports a finding of a lack of rights or legitimate interests”, and “Respondent is not a licensee of [Complainant], it has no relationship or association with [Complainant], nor is it otherwise authorized to use [Complainant]’s name or trademarks in any way”.

- The Disputed Domain Name was registered and is being used in bad faith because, by using the Disputed Domain Name “for over a year to display the same webpage that Complainant uses[,] Respondent has… attempted to pass himself off as Complainant”, Respondent has failed to respond to correspondence from Complainant, and (citing previous decisions under the Policy, listed below) Respondent has engaged in similar activity in the past with respect to other domain names and trademarks.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Although the RCW Trademark is not registered, numerous decisions under the Policy make clear that common-law trademark rights are sufficient. See, e.g., UITGEVERIJ CRUX V. W. FREDERIC ISLER, WIPO Case No. D2000-0575 (“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. Therefore, given that the Complainant has provided evidence to the effect that he has been using the mark… in association with its business for a number of years prior to the Domain Name being registered, the Panel is of the opinion that the Complainant has provided adequate grounds for a finding that he holds rights in the marks…”); and Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 (common-law trademark rights established through the presentation of press releases, newsletters and website printouts showing use of the relevant mark for a period of several years).

In this case, the Panel is satisfied that – based upon Complainant’s representations that it has used the RCW Trademark for approximately 10 years in connection with its services, including on its website, in multiple presentations and on promotional products – Complainant has established common-law trademark rights in the RCW Trademark for purposes of the Policy.

As to whether the Disputed Domain Name is identical or confusingly similar to the RCW Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “rcw”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.

Given that the second-level domain of the Disputed Domain Name, “rcw”, is identical to the RCW Trademark, it is obvious without the need for elaboration that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges, inter alia, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “there is [no] evidence that Respondent has been commonly known by the [Disputed] Domain Name or any variant thereof”, “Respondent’s use of a domain name incorporating Complainant’s trademark, even without more, supports a finding of a lack of rights or legitimate interests”, and “Respondent is not a licensee of [Complainant], it has no relationship or association with [Complainant], nor is it otherwise authorized to use [Complainant]’s name or trademarks in any way”.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1 (visited May 26, 2008).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant alleges that Respondent’s activities constitute bad faith as set forth in Policy, paragraph 4(b)(iii) because, by using the Disputed Domain Name “for over a year to display the same webpage that Complainant uses[,] Respondent has… attempted to pass himself off as Complainant”. In support thereof, Complainant cites, inter alia, Wall Street Webcasting and Douglas Estadt v. Site Services International c/o Richard Sorensen, NAF Case No. 955052 – a dispute involving the same Respondent as in the instant case, and, as well, a similar domain name “hijacking” incident – in which the panel there held:

“Because it appears that Respondent hijacked the <wsw.com> domain name from Complainant and is using it to operate a website mimicking the content of the website Complainant previously operated at the disputed domain name, Respondent has registered and is using the disputed domain name for the primary purpose of disrupting Complainant’s business according to Policy ¶ 4(b)(iii).”

Furthermore, the panel in the same case found that the respondent’s actions there also constituted bad faith pursuant to paragraph 4(b)(iv) of the Policy because “Respondent may be profiting from unsuspecting Internet users who believe that Complainant is still affiliated with the content of the website”.

Complainant also notes at least two other decisions involving the same Respondent as in the instant case: Zale Business Corp. v. Site Services International c/o Richard Sorensen, NAF Case No. 1082367 (transfer of <vou.com>) and Olympic Credit Fund, Inc. v. Site Services International c/o Richard Sorensen, NAF Case No. 910790 (transfer of <ocf.com>).

In light of the above, the Panel finds that Respondent’s actions constitute bad faith at least under paragraph 4(b)(iv) of the Policy.¹ In particular, the Panel agrees with the decision in Olympic Credit Fund, in which the panel there wrote: “the unauthorized transfer – in, and of, itself – is sufficient for a finding of an abusive and therefore, bad faith registration…. [and] Respondent’s use of the disputed domain name to direct Internet users to Complainant’s website created a false association between Respondent and Complainant.”

In addition, given the multiple prior decisions under the Policy in which Respondent has been found to act in bad faith, this Panel finds that Respondent has acted in bad faith here pursuant to paragraph 4(b)(ii) of the Policy, which requires that a respondent “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] ha[s] engaged in a pattern of such conduct”.

Finally, this Panel also agrees with the panel in Olympic Credit Fund, which observed that “the totality of the circumstances” indicate bad faith under the Policy.

Therefore, the Panel is convinced that Complainant has proven the third element 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 <rcw.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: May 26, 2008

¹ The Panel notes that paragraph 4(b)(iii) of the Policy applies to activities of “a competitor” – a relationship that Complainant did not address.