The Complainant is Press Ganey Associates, Inc. of South Bend, Indiana, United States of America ("United States") represented by Quarles & Brady LLP, United States.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("Bermuda").
The disputed domain name <pressqaney.com> is registered with Tucows Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 28, 2015. On August 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2015, the Registrar 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" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2015.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on October 16, 2015. 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.
The Complainant uses the service mark PRESS GANEY in connection with its business services, for which it has registered rights. Details of some international registrations for the Complainant's mark are:
|
COUNTRY |
TRADEMARK AND CLASS |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
UNITED STATES OF AMERICA |
PRESS GANEY Class 35 |
2,228,347 |
March 2, 1999 |
|
UNITED STATES OF AMERICA |
PRESS GANEY Class 35 |
4,021,466 |
September 6, 2011 |
|
AUSTRALIA |
PRESS GANEY Class 35 |
873559 |
April 24, 2001 |
|
CANADA |
PRESS GANEY |
TMA 521871 |
January 19, 2000 |
The Respondent created the disputed domain name <pressqaney.com> on August 7, 2015 which resolves to a website that contains the word "vistaprint" in stylized form together with the words "Make an impression. Websites are free at Vistaprint.com/websites. Create your website in minutes. Grow your business with an online presence. Coordinate your brand online and offline. No programming skills required".
The Complainant states that it has used the PRESS GANEY mark continuously and extensively in commerce since 1985. The Complainant contends that it has a strong Internet presence through its website and that its domain name <pressganey.com> has been used since 1996. The Complainant states the disputed domain name is confusingly similar to its mark, except that the letter "g" in its mark has been changed to "q" in the disputed domain name, however, it looks almost identical and is confusingly similar to its mark.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, and there is no evidence of the disputed domain name being used in connection with a bona fide offering of services or any legitimate noncommercial fair use. The Complainant states that the disputed domain name is not the name of the Respondent or his business or trade name, but it has been registered for purposes of misleading customers and for selling.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith. The Complainant has filed email communications as evidence, to demonstrate the Respondent is trying to sell the disputed domain name. The Complainant contends that the disputed domain name was registered to prevent the owner of the mark from using it. The Complainant asserts that the Respondent has a history of registering domain names with trademarks belonging to others and has provided a list of these cases as evidence: Koc Holding A.S. v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0886; The Net-A-Porter Group Limited v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0863; Barry Callebaut AG et al v. VistaPrint Technologies Ltd, WIPO Case No. D2015-0819; Carrefour v. VistaPrint Technologies Ltd, WIPO Case No. D2015-0769; Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1949; Roper Industries, Inc. v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1828; Tetra Laval Holdings & Finance S.A. v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1387; Sanofi v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0842; Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0511; Maxim Healthcare Services, Inc. v. VistaPrint Technologies Ltd, WIPO Case No. D2009-1168; Haas Food Equipment GmbH v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0016; Corporacion Gestamp, S.L. et al v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0014; SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0009.
The Respondent did not contest the case and did not reply to the Complainant's contentions.
To obtain the remedy of transfer of the disputed domain name, the complainant is required to establish the three elements listed in paragraph 4(a) of the Policy. These are:
(i) The disputed domain name is identical or confusingly similar to a mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
The first element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Complainant has established its rights in the PRESS GANEY mark by providing evidence of its registrations for said mark. The Panel finds the disputed domain name is similar to the Complainant's mark except that the letter "g" in the mark has been replaced with the letter "q" in the disputed domain name.
Making a typographical change in a trademark and registering such a misspelled version of the trademark as a domain name, is termed as domain name typosquatting. See WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0") paragraph 1.10. ("A domain name which contains an obvious misspelling of a trademark normally will be found confusingly similar to the trademark, where the misspelled trademark remains the dominant or principal component of the domain name").
Instances of typosquatting cases are plentiful, see for example: Kuhne + Nagel International AG v. Donald Cross, WIPO Case No. D2006-1103, where the domain name <kuehne-nagal.com> differed in one letter "a" in lieu of the letter "e" in the word "Nagel" for the mark KUNHE AND NAGEL. Also see Thuisbezorgd.nl. B.V. and Takeaway.com B.V v. Heather Briggs, WIPO Case No. DNL2015-0013, where it was found that the only difference between the domain name <thuisbezord.nl> and the THUISBEZORGD trademark was the removal of the letter "g" and said domain name was found to be confusingly similar to the complainant's mark. Similarly, in the present case, the disputed domain name is found to be a typosquatting variation of the Complainant's mark as the overall visual impression of the disputed domain name, in the Panel's view, would be confused by an Internet user for the Complainant's mark.
The disputed domain name is found to be confusingly similar to a mark in which the Complainant has rights. The Panel finds that the Complainant has successfully established the first requirement under paragraph 4(a) the Policy.
The second element under paragraph 4(a) of the Policy requires the complainant to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has argued that the Respondent lacks rights or legitimate interests in the disputed domain name as the Respondent is not making bona fide use of the disputed domain name or offering any goods and services in a manner that may be considered legitimate under the Policy.
The Policy under paragraph 4(c) provides some circumstances in which a respondent may demonstrate rights or legitimate interests in the disputed domain name, these are:
(i) Before any notice to the respondent of the dispute, 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; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has no trademark or service mark rights; or
(iii) The respondent is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response in these proceedings and has not availed the opportunity to produce any evidence of any rights or legitimate interests in the disputed domain name. The Panel finds that there is no evidence on record that shows the Respondent may have used the disputed domain name in connection with a bona fide offering of goods or services. Neither is there any other material on record that may indicate the Respondent is likely to have any rights or legitimate interests in the disputed domain name. Given these circumstances, it is the Panel's view that the Respondent has no apparent reason to register a domain name that is a close approximation to the Complainant's mark, unless it is with the intention of deriving some leverage from the Complainant's service mark.
On the basis of the unchallenged submissions and the evidence filed by the Complainant, it is found that the Complainant has put forward an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has fulfilled the second element under paragraph 4(a) of the Policy.
The Complainant is required to establish that the disputed domain name has been registered in bad faith and is being used in bad faith by the Respondent.
The Complainant has highlighted that the Respondent is known to have registered domain names with trademarks that belong to others and has been found to have registered several domain names in bad faith. The Panel acknowledges that there is sufficient evidence on record that establishes the Respondent is associated with a pattern of registering domain names that consist of trademarks of others which is considered evidence of bad faith under paragraph 4(b)(ii) of the Policy.
The Panel also finds that there is evidence on record that shows the Respondent has attempted to sell the disputed domain name. If there are circumstances indicating that the disputed domain name was acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name, such evidence is indicative of bad faith registration and use under paragraph 4(b)(i) of the Policy.
The facts and circumstances in the present case show that the Complainant has successfully established that it has prior rights in the mark and the Respondent has undoubtedly registered the disputed domain name long time after the Complainant's mark has become widely known in trade and commerce. The Respondent has not come forward and established any rights or legitimate interests in the disputed domain name. There is clear evidence of the Respondent having engaged in typical cybersquatting behavior of trying to sell the disputed domain name for profit and has a proven track record of making domain name registrations that have been found to be in bad faith, as the domain names make use of trademarks of others.
Based on the totality of circumstances discussed in the present case, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. In conclusion the Panel finds that the Complainant has established the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pressqaney.com> be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: October 30, 2015