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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Salomon Smith Barney Inc. v. Daniel Singer d/b/a Build Me A Website.com

Case No. D2000-1722

 

1. The Parties

The Complainant is Salomon Smith Barney Inc., a Delaware corporation doing business at 33 Greenwich Street, New York, New York.

The Respondent is Daniel Singer d/b/a Build Me A Website.com, with a mailing address of Post Office Box 130, Smithtown, New York.

 

2. The Domain Name and Registrar

The domain name at issue is <solomansmithbarney.com> (the Domain Name). The registrar with whom the Domain name is registered is Register.com (the Registrar), located in New York, New York.

The Registrar provided the following contact details for the Respondent:

Administrative Contact: Build Me A Website.com, Daniel Singer, P.O. Box 130, Smithtown, NY 11787, USA.

Technical Contact, Zone Contact: Register.com, Domain Registrar, 575 8^th Avenue- 11^th Floor, New York, NY 10018,

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s Complaint in hardcopy on December 11, 2000. On December 12, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

On December 19, 2000, the Center sent to the Registrar a Request for Registrar Verification. On December 22, 2000, the Registrar transmitted to the Center via facsimile a Registrar Verification Response confirming that the Domain Name is registered with Register.com and that the Respondent is the current registrant of the Domain Name.

The Center completed a Formalities Compliance Review on December 25, 2000, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.

On December 27, 2000, the Center transmitted to the parties, with copies to the Registrar and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of January 15, 2001 by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent.

No Response having been received, on January 24, 2001, the Center sent to the Respondent a Notification of Respondent Default. As of the date of this decision, no Response has been received. On that same date, the Center notified the parties that it would now proceed to appoint the Administrative Panel.

In view of the parties’ selection of a sole panelist, the Center invited Dana Haviland to serve as panelist. On February 12, 2001, after having received a Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel appointing Ms. Haviland. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

Complainant Salomon Smith Barney Inc. (Complainant) is a Delaware corporation with its principal place of business in New York, New York. Complaint, para. 2. Complainant provides financial and investment services. Complaint, para. 12.

On July 13, 2000, the Respondent registered the Domain Name <salomansmithbarney.com>. Complaint, para. 10, Annex A.

 

5. Parties’ Contentions

The Complainant contends that the Domain Name registered by the Respondent is confusingly similar to Complainant’s globally registered trademark Salomon Smith Barney, the sole difference being a "common misspelling" replacing the last "o" in Salomon with an "a." Complaint, para. 12.

Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. Complainant alleges that Respondent is not making a fair use of the Domain Name without intent for commercial gain or of misleadingly diverting consumers from Complainant’s site. Complaint, para. 12.

Finally, Claimant contends that the Respondent has registered and is using the Domain Names in bad faith. As evidence of bad faith, Complainant alleges that Respondent registered the Domain Name with the intent of offering it for sale and has subsequently offered it for sale both to Complainant and the general public. Complaint, para. 12.

Respondent has not submitted a Response.

 

6. Discussion and Findings

Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

- that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

(a) Identical or confusing similarity of domain name and trademark

The evidence shows that the domain name <salomansmithbarney.com> registered by the Respondent is confusingly similar to the Complainant’s mark. Complainant has introduced evidence, including a certificate of registration from the United States Patent and Trademark Office, to establish its rights in the mark SALOMON SMITH BARNEY. The Domain Name, which differs only by one letter but is pronounced almost the same as the Complainant’s mark, is confusingly similar to that uncontested mark. See E.I. du Pont de Nemours and Company v. Avant Garde Composition, ICANN Case No. D2000-0130 (adding single letter, which does not substantially change pronunciation or appearance, is confusingly similar). Complainant has therefore satisfied the first element of a claim under the Policy.

(b) No legitimate interest in domain name

A party may demonstrate its rights or legitimate interests in a domain name under paragraph 4(c) of the Policy in any of the following ways:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bonafide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

The fact that Respondent has failed to submit a Response makes the task of determining the legitimate interest prong of the test more difficult. However, because the burden is on the Complainant, the Panel will look to it for sufficient proof of satisfaction of the three-prong test. See Edgar Rice Burroughs, Inc. v. Adtel Communications, ICANN Case No. D2000-0115 ("in cases of default, a Complainant’s papers will be held to an exacting standard"). Here, the evidence is scant but barely sufficient to set forth a prima facie case that the Respondent has no legitimate rights or interests in the Domain Name. As Complainant has shown, the Domain Name does not lead to an active site and, thus, the purpose for registering that specific Domain Name is unclear. However, Salomon Smith Barney is a well-known company in the United States, where Respondent is apparently located, and the mark is sufficiently distinctive that the Panel infers that the Domain Name was chosen for the purpose of "typosquatting," registration of a domain name similar in spelling to a famous mark for commercial profit. Perhaps there is some other more innocent explanation, but by failing to submit a Response, Respondent has failed to invoke any circumstances which could demonstrate, pursuant to Paragraph 4(a) of the Policy, any legitimate right or interest in the Domain Name. See, Massachusetts Medical Society v. Michael Karle, WIPO Case No. D2000-0282. The Panel therefore finds that the Complainant has satisified the second element of a claim under the Policy.

(a) Bad faith registration and use

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(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 website or location.

Claimant offers two pieces of evidence in support of its assertion that the Respondent registered and is using the Domain Name in bad faith. The first is an e-mail offering to sell the Domain Name to the Complainant from, in the Complainant’s own words, "someone claiming to be Respondent." The difficulty the Panel has with this e-mail is that there is no proof that the Respondent is its author. It is signed by "Flow Ox" and Complainant does not show any connection between the author and the Respondent.

The second piece of evidence offered by the Complainant includes two pages from the GreatDomains.com website, which the Claimant argues is a "public attempt to auction the domain name to the highest bidder." The Annex submitted by Complainant in support of this contention states the following beside the Domain Name: "Unavailable on Site; Make Unsolicited Offer." The second page of this Annex then states: "You have elected to have GreatDomains.com represent you in presenting an unsolicited offer to the owner of www. SALOMANSMITHBARNEY.COM. Please note that this should not be construed to mean that the owner is interested in selling the Domain Name at this time." This disclaimer does not negate the fact that the Domain Name is being offered for sale, however.

Again, the evidence is not conclusive, but, in the absence of any contrary evidence, is sufficient to support an inference of bad faith registration and use of the Domain Name under Paragraph (b) (i) of the Policy. The Panel therefore finds that Complainant has satisfied the third element of its claim.

 

7. Decision

For the foregoing reasons, it is the decision of the Panel that the Complainant has satisfied its burden of proving the essential elements of a claim under Paragraph 4(a) of the Policy, and that the Complainant’s claim for transfer of the Domain Name <salomansmithbarney.com> is therefore granted.

 

 

Dana Haviland
Sole Panelist

Dated February 28, 2001