Case No. D2005-1313

1. The Parties

The Complainant is Duane Morris LLP, Philadelphia, Pennsylvania, United States of America, represented by Inhouse Counsel, United States of America.

The Respondent is Unasi Inc., Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <duanmorris.com> is registered with Capitoldomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2005. On December 20, 2005 and January 3, 2006, the Center transmitted by email to Capitoldomains, LLC its request for registrar verification in connection with the domain name at issue. On January 3, 2006, Capitoldomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2006.

The Center appointed Francine Tan as the sole panelist in this matter on February 14, 2006. 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 December 27, 2005, an Amended Complaint was transmitted to the Center together with the requisite additional filing fee to cover the following 8 additional domain names:

<duannemorris.com>;
<dduanemorris.com>;
<duanemorriis.com>;
<duanemorriss.com>;
<duanemmorris.com>;
<duanemoorris.com>;
<duaneemorris.com>;
<duaanemorris.com>;

The domain names <duanemorriss.com> and <dduanemorris.com> were registered with Capitoldomains, LLC, whilst the rest were registered with BelgiumDomains, LLC.

The Complainant had discovered that subsequent to the filing of the Complaint, the Respondent had registered the above domain names. On December 22, 2005, the Complainant’s counsel notified the Center of the discovery and requested the suspension of the proceedings so that an Amended Complaint could be filed together with the additional fees. On December 23, 2005, the Center notified the Complainant’s counsel that the proceedings would not be suspended and the Complainant need only submit an Amended Complaint with annexes in accordance with the Rules.

On December 28, 2005, the Complainant’s counsel informed the Center that there was a further development. The Respondent had apparently released the 8 additional domain names referenced in the Amended Complaint. As the 8 additional domain names appeared available in the Whois database, the Complainant registered all 8 domain names. Consequently, the Complainant requested that the administrative proceeding continue only in relation to the domain name <duanmorris.com>.

The Panel’s decision in this case is based solely on the original Complaint filed with the Center and served on the Respondent.

4. Factual Background

The Complaint is based on the Complainant’s U.S. Service Mark Registration No. 2,912,676 for a stylized version of the words DUANE MORRIS, covering services in Classes 35, 36 and 42. The Complainant is a law firm in the United States operating under the name DUANE MORRIS and is also the registrant of the domain name <duanemorris.com>. The Complainant also claims to have used the mark in commerce since at least December 8, 2000, and to have offered its services under the DUANE MORRIS name for over 100 years.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) The disputed domain name is confusingly similar to the service mark DUANE MORRIS in which the Complainant has rights. It is firmly established from past panel decisions that when analyzing the similarity of a trade mark with a domain name, the “.com” portion of the domain name is to be disregarded. Further, where a domain name is identical to a trade mark, except for a slight variation in the domain name through the omission of a single letter, such a domain name is confusingly similar to the trademark at issue. Reference was made by the Complainant to the following decisions: Microsoft Corp. v. Whois Privacy Protection Service, WIPO Case No. D2005-0642; Accor v. Howell Edwin, WIPO Case No. D2005-0980; HM Publishers Holdings Ltd. V. Webserve LLC, WIPO Case No. D2005-0741; Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952; Siemens AG v. Siemens.Com, WIPO Case No. D2005-0927; Netstock, Inc. v. Music Wave, WIPO Case No. D2002-0441; Hershey Foods Corp. and Hershey Chocolate & Confectionary Corp. v. Amcore & Co. For Sale Domains $250 or Best Offer, WIPO Case No. D2003-0838.

(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s website at “www.duanmorris.com” offers search engine services, “pop-up” advertisements and “sponsored links” to the Complainant’s competitors. The website has no connection to anything related to the name “Duane Morris”, “Duan Morris” or any other variation thereof, and the domain name has no connection to the Respondent’s business name.

Several cases (including Bang Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728; Deutsche Telekom AG v. Dong Wang, WIPO Case No 2005-0819) have held that where a respondent uses a domain name for purposes of offering search engine services with “pop-up” advertisements and “sponsored links” to competitors of the complainant, such use is not legitimate or bona fide under the Policy.

(3) The domain name was registered and is being used in bad faith, and this is supported by the following:

(a) The Respondent had actual and/or constructive knowledge of the Complainant’s service mark and services connected to such service mark. Constructive knowledge may be inferred from the fact that the DUANE MORRIS mark has been registered in the United States federal register and the domain name <duanemorris.com> was registered since March 20, 1996, and continuously used since that date, that the Complainant is among the 100 largest law firms in the United States, and that its business name and corresponding service mark are widely known and recognized throughout the world. The Respondent’s use and registration of the disputed domain name in disregard of the Complainant’s rights evidence the Respondent’s bad faith. The Respondent’s actual knowledge of the Complainant’s service mark and services are evidenced by the fact that the Respondent’s website offers “sponsored links” to the Complainant’s competitors. The Respondent had been found guilty before of registering a domain name with actual knowledge of someone else’s trademark rights, namely in Bang Olufsen a/s v. Unasi Inc. WIPO Case No. D2005-0728.

Reference was made to the following WIPO UDRP cases in support of the Complainant’s contention that bad faith may be inferred if a respondent had actual or constructive knowledge of the complainant’s mark: Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc., WIPO Case No. D2005-0562; Movado LLC v. Simo Elbaz, WIPO Case No. D2004-1029.

(b) The Respondent’s registration and use of the domain name <duanmorris. com> is an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant. This type of typosquatting is indicative of bad faith use and registration (PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027). Once an internet user mistakenly types the domain <duanmorris.com> instead of <duanemorris.com>, he would be diverted away from the Complainant towards other entities that provide similar services.

It has been held in several panel decisions that the use of a website with a confusingly similar domain name to provide “sponsored links” to competitors of a complainant constitutes bad faith under the Policy. (Mudd, LLC v. Unasi Inc., WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556; Bang & Olufsen a/s/ v. Unasi Inc., WIPO Case No. D2005-0728; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.)

On December 15, 2005, an attempt was made by the Complainant to use the search engine service on the Respondent’s website to locate the Complainant’s website. None of the searches produced a listing for the Complainant’s website but the search terms produced several “sponsored links” to legal services offered by entities in competition with the Complainant. Confusion is therefore exacerbated and Internet users may be led to believe that the linked websites are the Complainant’s or otherwise sponsored by, affiliated, or authorized by the Complainant.

(c) The Respondent has engaged in a pattern of domain name warehousing. The Complainant cited 17 UDRP disputes before the WIPO in which the Respondent (operating as Unasi Inc., Unaci Inc., and Unasi Management Inc.) has been named, and in which it had been on the losing end. Copies of the decisions were annexed to the Complaint. In addition, 12 NAF (National Arbitration Forum) UDRP decisions rendered against the Respondent were cited in PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027. The decisions detail the deceptive tactics undertaken by the Respondent and show that the Respondent is a cybersquatter/typosquatter that has engaged in a pattern of infringing on trademark holders’ rights by warehousing domain names in disregard of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied, in accordance with paragraph 4(a) of the Policy:

(1) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

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

(3) The domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Panel finds that the first element in paragraph 4(a) of the Policy has been satisfied. The domain name in dispute is confusingly similar to the Complainant’s service mark, DUANE MORRIS. The addition of the generic top level domain extension “.com” does not eliminate the confusion, as it is well established in numerous WIPO UDRP decisions including those referred to in the Complaint. The omission of the letter “E” in the domain name is insignificant and of no consequence to the finding of confusing similarity. Such domain names involving mis-spellings of trade marks have consistently been held to be confusingly similar to their related trade marks (e.g. Encyclopaedia Britannica, Inc. v. John Zuccarini, WIPO Case No. D2000-0330, and the other cases referred to in paragraph 5A(1) above).

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the domain name. The burden accordingly shifts to the Respondent to dispute the Complainant’s allegation. However, in not responding to the Complaint, the Panel is unable to make a finding other than that the Respondent has no rights or legitimate interests in the domain name.

With reference to paragraph 4(c) of the Policy, there is no evidence of a bona fide offering of goods or services by the Respondent corresponding to the domain name, nor any evidence which shows that the Respondent has been known by the domain name or acquired rights in the service mark. Having considered the “sponsored links” and “related websites” mentioned above and potential confusion of affiliation with the Complainant, the Panel does not find it plausible that there is legitimate non-commercial or fair use in this case.

C. Registered and Used in Bad Faith

For the purposes of determining if there was bad faith, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy. The list of circumstances which would constitute evidence of bad faith registration and use includes:

(1)  registration for the primary purposes of selling, renting or otherwise transferring the domain name to the complainant or to a competitor of the complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name;

(2)  registration for the purpose of preventing the trademark owner from having its trademark as a domain name (provided there is a pattern of such conduct);

(3)  registration primarily for the purpose of disrupting the business of a competitor; or

(4)  an intentional attempt to attract, for commercial gain, Internet users to the website or other online location by creating confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or other online location.

In this case, bad faith on the part of the Respondent is borne out clearly by the following facts. There can be little doubt that the Respondent was aware of the Complainant’s service mark and reputation as a law firm when it registered the mis-spelling of the Complainant’s service mark as a domain name and created a website with no bona fide offering of goods or services but in which one only finds links to other sites, namely those of the Complainant’s competitors. The Panel agrees with the Complainant’s submission that one can make an inference of bad faith where a website with a confusingly similar domain name is used by the respondent to provide “sponsored links” to competitors of a complainant. The Respondent’s pattern of conduct and repeated appearance in UDRP proceedings as a respondent is another factor which the Panel has taken into account and which it considers to be strongly indicative of the Respondent’s bad faith registration and use. The Panel concludes that the Respondent has used the domain name with the intention to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

In view of the evidence provided, the Panel is satisfied that the requirements of paragraph 4(a)(iii) have been satisfied.

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 <duanmorris.com> be transferred to the Complainant.

Francine Tan
Sole Panelist

Dated: February 24, 2006