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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Barnes & Noble College Bookstores, Inc. v. Oleg Techino

Case No. D2006-1537

 

1. The Parties

The Complainant is Barnes & Noble College Bookstores, Inc., of New Jersey, United States of America, represented by Bryan Cave, LLP, United States of America.

The Respondent is Oleg Techino, of Kiev, Ukraine, in this name and under various aliases.

 

2. The Domain Names and Registrar

The disputed domain names

<bafnesandnoble.com>
<bandnoble.com>
<barndnoble.com>
<barndsandnoble.com>
<barnecandnoble.com>
<barneeandnoble.com>
<barnesajdnoble.com>
<barnesandjoble.com>
<barnesandnkble.com>
<barnesandnlble.com>
<barnesandnobele.com>
<barnesandnobla.com>
<barnesandnobli.com>
<barnesandnobls.com>
<barnesandnoboe.com>
<barnesandnoele.com>
<barnesandnogle.com>
<barnesandnohle.com>
<barnesandnople.com>
<barnesandnouble.com>
<barnewandnoble.com>
<barnexandnoble.com>
<barnssandnoble.com>
<bearnesandnoble.com>
<earnesandnoble.com>

are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2006. On December 5, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December 13, 2006, Go Daddy Software 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 and technical contact in respect of <bearnesandnoble.com> only. The rest of the domain names at issue were supposedly transferred to different persons or entities after the Respondent became aware of the initiation of this proceeding. Considering this situation, on March 1, 2007, the Complainant filed an amendment and a motion to direct these proceedings solely against Oleg Techino, actual holder of all the disputed domain names. On March 2, 2007, based upon information that the Complainant provided in its motion, the Center determined that a sufficient basis existed at that time to notify the Complaint to Oleg Techino as effectively controlling all the registrations at issue.

The Center verified that the Complaint together with the amendment to 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 March 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2007. No Response was filed with the Center.

The Center appointed Alistair Payne as the sole panelist in this matter on April 5, 2007. 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.

 

4. Factual Background

The Complainant operates over 1,000 retail bookstores throughout the United States. The Complainant is the owner of the trademark BARNES & NOBLE which was registered on August 12, 1980 (the “BARNES & NOBLE Mark”). The Complainant also owns numerous other trademark registrations containing BARNES & NOBLE or BARNESANDNOBLE, registered worldwide, the domain names <barnesandnoble.com> and <bn.com>. The website to which the Complainant’s domain names resolve offers books, CDs, DVDs, videocassettes, music, magazines, computer games and other items for sale over the Internet to the general public.

The Respondent registered the Disputed Domain Names on June 17, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant has been using the BARNES & NOBLE Mark, which is famous and synonymous with quality and customer service in the retail bookseller industry, since 1975. The Complainant has invested substantial resources to create consumer brand identification and to protect its rights in the BARNES & NOBLE Mark in the US and internationally, through marketing and public education efforts, trademark and service mark registrations worldwide and initiating UDRP proceedings. The Complainant submits that, as a result of its extensive use and registration of the BARNES & NOBLE Mark, it has become one of the most recognisable and valuable marks known to the consumer worldwide.

The Complainant refers the Panel to various successful UDRP proceedings it has taken against third parties in respect of its trademarks, including Barnes & Noble College Bookstores, Inc. v. Language Direct, WIPO Case No. D2003-0142; Barnes & Noble College Bookstores, Inc. v. Good Domains WIPO Case No. D2002-0812; and Barnes & Noble College Bookstores, Inc v. Jerry Riley, WIPO Case No. D2001-1330.

The Complainant asserts that the Respondent registered and is using the Disputed Domain Names, each of which is an intentional misspelling of the BARNES & NOBLE Mark. The Respondent is engaged in typosquatting, which is in and of itself evidence of the Respondent’s bad faith registration of the Disputed Domain Names. The Complainant asserts that the Respondent is an adjudged and known typosquatter who has been ordered by prior UDRP Panels to transfer infringing domain names to trademark owners, and in this regard cites RTG Furniture Corp. v. Oleg Techino, WIPO Case No. D2006-0886. In addition, the Complainant asserts that the Respondent has previously registered domain names that incorporate deviations in other’s trademarks and subsequently offered to sell those domain names to the respective owners of the trademarks.

The Complainant submits that the Respondent’s use and registration of the Disputed Domain Names is intentionally designed to confuse and mislead the public. The Respondent has no rights or legitimate interests in the Disputed Domain Names. Furthemore, the Respondent is using the Disputed Domain Names in bad faith with full knowledge of the Complainant’s rights, for the purposes of trading off the goodwill established by the Complainant in the BARNES & NOBLE Mark and the domain name <barnesandnoble.com> for the Respondent’s own commercial gain.

The Complainant submits that it is one of the world’s best known Internet-based provider of books, CDs or similar material. The Complainant’s trademarks have become distinctive of the goods and services for which they are registered as a result of the Complainant’s efforts in selling, distributing, and promoting goods and services bearing these marks and through the Complainant’s exclusive and continuous use of the Marks in commerce long prior to the date on which the Disputed Domain Names were registered.

The Complainant considers that the Disputed Domain Names, consisting of slight deviations or misspellings of the BARNES & NOBLE Mark, are engineered to take advantage of Internet users who mistype a key stroke or strokes, a practice commonly known as typosquatting. Typosquatting is evidence of bad faith and in this respect the Complainant refers to Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069. The Disputed Domain Names each differ from the BARNES & NOBLE Mark and domain name, <barnesandnoble.com> by as little as a single keystroke, and are confusingly similar to the Complainant’s trademarks in sound, appearance, connotation and overall commercial impression. The close similairities are intentional and designed to confuse the public.

The Respondent is not making a bona fide use of the Disputed Domain Names and has no legitimate interest in the same. When the Disputed Domain Names are entered into a web browser the user is automatically hyperlinked to the Complainant’s website at <barnesandnoble.com>. The Respondent is not the owner, licensee or affiliate of any BARNES & NOBLE trademark or the Complainant’s website, and is not commonly known by any of the Disputed Domain Names. Nor is the Respondent using the Disputed Domain Names in connection with a bona fide offering of goods or services.

The Complainant notes that UDRP Panels have consistently found that the circumstances of typosquatting constitute confusing similarity and refers to Ruths Chris Steak House, Inc. v. Texas Internet, WIPO Case No. D2005-0292. The Complainant considers it significant that all of the substituted letters in the Disputed Domain Names are proximately located to the original letters on a standard keyboard, and represent predictable mistypings of the BARNES & NOBLE Mark.

The Complainant submits that Internet users searching for the Complainant’s website are likely to type into a search engine “Barnes” followed by “Noble”, and are likely to find both the Complainant’s and Respondent’s domain names. The risk is enhanced when the Internet user is a person located in a foreign jurisidiction and who may not understand or recognise the subtle differences between the Complainant’s marks and the Disputed Domain Names, resulting in confusion.

Given the fame of the BARNES & NOBLE Mark and the Complainant’s longstanding use of same, as well as the Complainant’s position as a leader in the retail book industry, the Complainant submits that the Respondent must have been aware of the association of the trademark with the Complainant and the goodwill attached thereto when he registered the Disputed Domain Names.

The Respondent has no trademark registrations for, or common law rights in, the Disputed Domain Names. He does not hold himself out as and is not otherwise known as “Barnes & Noble” or any other term reflected in the Disputed Domain Names.

The Complainant submits that there is a legal presumption of bad faith when a respondent is actually or constructively aware of a complainant’s trademarks. Based on the fame of the BARNES & NOBLE Mark, it can be inferred that the Respondent was on notice of the Complainant’s rights in the mark when it registered the Disputed Domain Names and thus acted in bad faith.

The Respondent’s conduct clearly demonstrates that the Respondent registered and is using the Disputed Domain Names in bad faith, adversely affecting the business of the Complainant and tarnishing the Complainant’s trademarks.

The Complainant notes that before the Registrar, GoDaddy, could lock the Disputed Domain Names, the Respondent transferred them to twenty-two new owners, located around the world on December 7, 2007, but retained <bearnesandnoble.com> in his own name. The Complainant expended a substantial amount of time and money on an investigation to determine whether the contact information for each of the new owners, as it appears in the WHOIS database, is truthful and accurate. The investigator hired by the Complainant could not locate any individuals in Kiev, Ukraine named Oleg Techino and International Directory Assistance did not have Techino’s 34 Slipogo Street address in its database. In addition, the investigator was unable to locate any of the new owners or verify their existence. Based on this investigation, the Complainant believes that the new owners do no exist and are merely aliases for the Respondent.

Alternatively, even if they do exist, the transfers were made in breach of the Policy. It appears that none of the new owners reside at the addresses filed with the Registrar. The Complainant therefore submits that the transfers were designed solely to frustrate the Complainant’s ability to get relief. This “cyberflight” effected by the Respondent is a clear attempt to avoid the UDRP process and to force the Complainant to spend time and money to refile the complaint against the twenty-two new owners. Previous Panel decisions have found that such cyberflight is evidence of bad faith. In this regard, the Complainant refers the Panel to the decisions in Tomas Sziranyi v. RegisterFly.com WIPO Case No. D2006-0320; and BolognaFiere S.p.A v. Currentbank-Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars, WIPO Case No. D2004-0830.

B. Respondent

The Respondent did not submit a Response replying to the Complainant’s contentions. However, by email dated March 7, 2007, he stated that <bearnesandnoble.com> is the only domain name in his ownership and that he could not respond for the other domain names in question. The Respondent confirmed that he previously owned all of the Disputed Domain Names but that most of these were sold to a third party on October 25, 2006.

The Respondent emailed the Center again on March 20, 2007. In this email he asked how he could respond to the Complaint, when he is not the owner of the Disputed Domain Names.

 

6. Discussion and Findings

Preliminary Procedural Issues

This Complaint was filed with the Center on December 5, 2006. Before the Registrar, GoDaddy, could lock all the Disputed Domain Names, on December 7, 2006, the Respondent transferred all 25 of them, except one, to other names, ostensibly located around the world. The Respondent retained, in his own name, the domain name <bearnesandnoble.com>. The Complainant expended a substantial amount of time and money on an investigation to determine whether the contact information for each of the newly named owners, as it appears in the WHOIS database, is truthful and accurate. The investigator hired by the Complainant could not locate any individuals in Kiev, Ukraine named Oleg Techino and International Directory Assistance did not have Techino’s 34 Slipogo Street address in its database. In addition, the investigator was unable to locate any of the new owners or verify their existence. Based on this investigation, the Complainant believes that the newly named owners do not exist and are merely aliases for the Respondent. The Complainant has filed a supplementary affidavit in support of a motion aiming at keeping this case as a single proceeding.

Paragraph 8(a)(i) of the Policy prohibits the transfer of a domain name during a pending administrative proceeding and reserves a discretion to order the cancellation of any transfer which breaches this section of the Policy. It is apparent in this case that the transfer occurred only after the Respondent had been aware of the administrative proceeding. The Panel finds that this was a blatant attempt by the Respondent to step around the UDRP process contrary to the letter and spirit of the Policy. Had this been a valid transfer then the Respondent had every opportunity to explain it and to provide supporting evidence but the Respondent failed to file a Response to the Complaint and his e-mails to the Center do not explain the supposed transfers.

It seems to the Panel, as discussed further below, that this is a brazen case of typosquatting in which the Respondent has made every effort to avoid the UDRP process by purportedly transferring the Disputed Domain Names to new owners, who may or may not exist. The Panel notes the wholly unsuccessful efforts made by the Complainant to confirm the identity of the new owners. Certainly on reviewing the list it appears to the Panel based on personal experience that, for example, the Auckland, New Zealand address is fictitious. As further noted under Paragraph C below the Panel is prepared to infer that the transferees are fictitious and are in reality aliases for the Respondent.

On the basis that all of the Disputed Domain Names are controlled by the Respondent the Panel will proceed to consider Paragraph 4(a) of the Policy

Paragraph 4(a) of the Policy

Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainant, if it is to succeed in this Administrative Proceeding, to prove each of the following, namely that:

(i) the Disputed Domain Names are 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 Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The Panel will, therefore, proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy. The Panel also notes that pursuant to Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a Response from the Respondent.

A. Identical or Confusingly Similar

There are two separate elements that the Complainant must prove under Paragraph 4(a)(i) of the Policy. First, that the Complainant has rights in a trademark or service mark and second, that the Disputed Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights.

The Complainant has established that it is the proprietor of the BARNES & NOBLE Mark and various other trademarks containing the term BARNES & NOBLE and BARNESANDNOBLE.

The Panel accepts the Complainant’s submission that the Disputed Domain Names are confusingly similar to the BARNES & NOBLE Mark and all consist of intentional misspellings of the trademark by one letter in a way which is engineered to confuse the public. Previous Panels have consistently found typosquatting of this kind to constitute confusing similarity. See for example, Ruth’s Chris Steak House, Inc. v. Texas Internet, WIPO Case No. D2005-0292; Deutsche Bank AG. v. New York Tickets Inc, WIPO Case No. D2001-1314; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201.

Accordingly, the Panel finds that the Complaint fulfills Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The burden of proof rests with the Complainant to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this assertion.

The Panel accepts that there is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has he otherwise obtained any authorisation to use the BARNES & NOBLE Mark or otherwise obtained consent to apply for any mark which incorporates “Barnes & Noble”.

In the Panel’s view there is no evidence to suggest that the Respondent has any rights or legitimate interests in the Disputed Domain Names. The Respondent has never used the Disputed Domain Names for a bona fide offering of goods or services nor is there any indication of an intention to do so. The Respondent does not hold himself out as and is not otherwise known in terms of the Disputed Domain Names.

Furthermore, previous Panels have held that typosquatting does not constitute legitimate use of a trademark. See for example, Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694; Microsoft Corporation v. Global Net 2000, WIPO Case No. D2000-0554.

In view of the above and in the absence of a Response to the Complaint, the Panel finds that the Respondent has no legitimate right or interest in the Disputed Domain Names.

Therefore, the Panel finds that the Complaint fulfills Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is clear to the Panel that by registering and using the Disputed Domain Names, which incorporate the slightly modified trademarks of the Complainant, the Respondent has engaged in a pattern of typosquatting. The Panel considers that the Respondent’s actions are deliberate and intentionally designed to confuse Internet users. Evidence of typosquatting is sufficient to establish bad faith use and registration under Paragraph 4(a)(iii) of the Policy. See for example, Sephora v. Whoisguard, WIPO Case No. D2006-0845; Longs Drugs Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039; Wal-Mart Stores v. Longo, WIPO Case No. D2004-0816; MouseSavers, Inc. v. Tsung, WIPO Case No. D2004-1034; and ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.

In the Panel’s view, the transfer of the Disputed Domain Names by Respondent to various third parties after he had been notified of the Complaint, is indicative of cyberflight and further supports the Panel’s finding of the Respondent’s bad faith use and registration of the Disputed Domain Names. In the absence of a Response to the Complaint, the Panel considers it likely and infers that these third parties do not exist and that the transfers in question were effected for the purpose of disrupting and delaying these proceedings. The Panel concurs with previous Panel decisions which state that cyberflight is in itself a clear indication of bad faith registration, see for example, Tomas Sziranyi v. RegisterFly.com, WIPO Case No. D2006-0320; ABB Asea Brown Boveri Ltd. v. Yvonne Bienen, Bienen Enterprises, WIPO Case No.D2002-0178; BolognaFiere S.p.A v. Currentbank-Promotools, SA Inc./Isidro Sentis a/k/a Alex Bars, WIPO Case No. D2004-0830; British Sky Broadcasting Group plc v. Mr. Pablo Merino and Skyservices S.A., WIPO Case No. D2004-0131; and Merck KgaA v. Yaha Chhipa, WIPO Case No. D2004-0905.

On the basis of the foregoing, the Panel finds that Paragraph 4(a)(iii) of the Policy is fulfilled.

 

7. Decision

The Panel first reiterates its finding that all the Disputed Domain Names are controlled by the Respondent.

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 names:

<bafnesandnoble.com>
<bandnoble.com>
<barndnoble.com>
<barndsandnoble.com>
<barnecandnoble.com>
<barneeandnoble.com>
<barnesajdnoble.com>
<barnesandjoble.com>
<barnesandnkble.com>
<barnesandnlble.com>
<barnesandnobele.com>
<barnesandnobla.com>
<barnesandnobli.com>
<barnesandnobls.com>
<barnesandnoboe.com>
<barnesandnoele.com>
<barnesandnogle.com>
<barnesandnohle.com>
<barnesandnople.com>
<barnesandnouble.com>
<barnewandnoble.com>
<barnexandnoble.com>
<barnssandnoble.com>
<bearnesandnoble.com>
<earnesandnoble.com>

be transferred to the Complainant.

---

Alistair Payne
Sole Panelist

Date: April 20, 2007