The Complainant is Scribendi Inc. of Chatham, Canada, represented by Harrison Pensa LLP, Canada.
The Respondent is Leevi Tuulola of Las Cruces, New Mexico, United States of America (“United States” or U.S.”).
The disputed domain name <myscribendi.com> is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2015. On October 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 proceeding commenced on October 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2015.
The Center appointed Alejandro Garcia as the sole panelist in this matter on November 20, 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 is a company federally incorporated in Canada and doing business in Canada, the United States, Europe, and other countries.
In relation to editing and proof-reading services, the Complainant holds a number of registrations for the trademark SCRIBENDI around the world, including U.S. federal trademark registration No. 3,791,751, Canadian trademark registration No. TMA688466, and European Union Community Trademark No. 008289175. These trademark registrations predate the registration of the disputed domain name.
The Complainant has registered the domain name <scribendi.com>, which also predates the registration of the disputed domain name. The disputed domain name currently resolves to a web page promoting proofreading and editing services offered by “Proof-Editing.com”. The web page also contains links to Proof-Editing.com’s home website (“www.proof-editing.com”).
The Respondent did not participate in these proceedings. The disputed domain name was registered on October 24, 2013.
Identical or Confusingly Similar
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark SCRIBENDI. In particular, the Complainant submits that the disputed domain name <myscribendi.com> “so nearly resembles [the SCRIBENDI trademark] in appearance, sound and the ideas suggested by [the SCRIBENDI trademark] that it is likely to be mistaken for it.”
The Complainant adds that the disputed domain name would be identical to the Complainant’s trademark but for the addition of the prefix “my”. The Complainant adds that the addition of this particle would be “highly suggestive of the practice commonly known as ‘typosquatting’”.
The Complainant also points out that the Complainant and the Respondent are competitors that provide very similar services to their clients, which would create the chance of an Internet user being confused by the disputed domain name.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has used the trademark SCRIBENDI in association with its business and services since at least January 7, 1998, much earlier than the date of registration of the disputed domain name in October 2013.
The Complainant adds that the Respondent was “most definitely” aware of the Complainant’s SCRIBENDI trademark when it registered the disputed domain name.
The Complainant also submits that it is not aware of any evidence of the Respondent’s use of the disputed domain name in connection with any bona fide purpose.
The Complainant also asserts that the Respondent has no legitimate interests in the disputed domain name because its use of the disputed domain name is not consistent with a bona fide offering of goods or services.
Finally, the Complainant states that it has not authorized the Respondent to use the trademark SCRIBENDI and that there is no evidence that the Respondent has been commonly known by the disputed domain name.
Registered and Used in Bad Faith
In this respect, the Complainant argues that the disputed domain name was registered and is used in bad faith for a number of reasons. Among them, the Complainant indicates that the Respondent would have the intention to disrupt the business of the Complainant, to mislead and confuse Internet users with respect to the Complainant’s trademark, and surreptitiously to divert Internet users through multiple domain names that resolve to the web page linked to the domain name <proof-editing.com>. The Complainant adds that the Respondent has shown a “blatant pattern of behavior” evidenced by similar complaints against it and by a failure to acknowledge the Complainant’s several communications.
In relation to the pattern of behavior argument, the Complainant refers to the decision by a UDRP panel in the dispute involving the domain name <paperscheck.com>. In that case, the Respondent would have attempted to divert Internet issuers away from the website operated by Papercheck, LLC. (See Papercheck, LLC v. Registration Private / Leevi Tuulola, WIPO Case No. D2015-0861).
The Complainant seeks the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving that:
(i) The disputed domain name 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant has established to the Panel’s satisfaction that it has rights in respect of the trademark SCRIBENDI.
The dominant part of the disputed domain name is the term “Scribendi”. This term is identical to the SCRIBENDI trademark registered by the Complainant. The addition of generic or descriptive terms to the disputed domain name (in this case, “my”) is insufficient to prevent the existence of confusion with the Complainant’s trademark.
The Panel in this regard refers to paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which indicates:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion […]”
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark SCRIBENDI within the meaning of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
“(i) Before any notice […] of the dispute, [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; 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 noncommercial 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.”
In this case, the Complainant’s (uncontroverted) evidence annexed to the Complaint shows that the disputed domain name has resolved to a website which apparently offers services that compete with those rendered by the Complainant.
Furthermore, on the basis of the evidence before it, the Panel concludes that the Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the 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 has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not intended to be exhaustive. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to restrain the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. (See, in this respect, e.g., Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
On the basis of the evidence before it and in particular the fact that the disputed domain name resolved (and continues to resolve) to a website that appears to be offering competing services according to the Complainant’s (uncontroverted) submissions, the Panel finds that the Respondent has engaged in bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. This finding, in turn, leads to the conclusion that the disputed domain name has been registered and is being used in bad faith.
Thus, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <myscribendi.com> be transferred to the Complainant.
Alejandro Garcia
Sole Panelist
Date: December 3, 2015