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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Express Limited v. Kiansu Thoi

Case No. D2008-0032

1. The Parties

Complainant is National Express Limited (“Complainant”), of United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT CBS Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Kiansu Thoi (“Respondent”), of Viet Nam.

2. The Domain Names and Registrar

The following disputed domain names (the “Disputed Domain Names”) are registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com (the “Registrar”):

<ationalexpress.com>,

<mationalexpress.com>,

<naionalexpress.com>,

<natinalexpress.com>,

<natinoalexpress.com>,

<natioalexpress.com>,

<natioanlexpress.com>,

<nationaexpress.com>,

<nationalepress.com>,

<nationalexoress.com>,

<nationalexpess.com>,

<nationalexpres.com>,

<nationalexpresses.com>,

<nationalexpresss.com>,

<nationalexprss.com>,

<nationalexress.com>,

<nationallexpress.com>,

<nationalxpress.com>,

<nationlexpress.com>,

<nationnalexpress.com>,

<natoinalexpress.com>,

<natonalexpress.com>,

<nattionalexpress.com>, and

<ntionalexpress.com>.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2008 by e-mail and January 11 and January 17, 2008 in hardcopy. On January 10, 2008, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 10, 2008, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 17, 2008, 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 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default.

The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on February 20, 2008. 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

Complainant is part of National Express Group, a leading international transport provider. Complainant operates the largest scheduled coach service provider in Europe. Complainant’s coaches operate to around 1,000 destinations and carry more than 16 million passengers a year in the United Kingdom.

Complainant owns more than 20 worldwide trademark registrations containing the term NATIONAL EXPRESS. Most of the trademark registrations date prior to 2004, when each of the Disputed Domain Names were registered. In particular, Complainant owns CTM Registered Trademark No. 000841023 for the mark NATIONAL EXPRESS and design for “printed matter; timetables and travel guides; calendars; dairies [sic]; writing implements; drip mats; stationery; carrier bags; [and] paper napkins” in International Class 16; “games; toys and playthings; board games and jigsaws; [and] toy models” in International Class 28; “transportation of passengers, freight and parcels by land; arrangement of tours; booking of seats for travel; bus and coach rental services; delivery of goods by road; escorting of travellers [sic]; [and] travel agency services” in International Class 39; and “catering services; [and] travel agency services for booking accommodation” in International Class 42 (“Complainant’s Mark” or the “NATIONAL EXPRESS mark”). The application for Complainant’s Mark (No. 000841023) was filed on February 6, 1998 and Complainant’s Mark was registered on July 3, 2001. Moreover, Complainant’s Mark is entitled to seniority status in Benelux, Germany, France, Italy, and Denmark.

The Disputed Domain Names were first registered with Registrar on January 21, 2004 (<natinalexpress.com>,<nationalexpres.com>, <nationalexpresss.com>, <nationlexpress.com>, and <nationnalexpress.com>), April 26, 2004 (<naionalexpress.com>, <natioalexpress.com>, <natioanlexpress.com>, <nationaexpress.com>, <nationalexopress.com>, <nationalexpess.com>, <nationalexress.com>, <nationalxpress.com>, <natoinalexpress.com>, and <natonalexpress.com>), June 4, 2004 (<mationalexpress.com>, <nationalexprss.com>, and <nattionalexpress.com>), June 17, 2004 (<ntionalexpress.com>), July 14, 2004 (<nationalepress.com> and <nationalexpresses.com>), September 21, 2004 (<natinoalexpress.com> and <nationallexpress.com>), and October 13, 2004 (<ationalexpress.com>). Respondent registered each of the Disputed Domain Names more than two and a half years after Complainant’s CTM mark was first registered.

Although Complainant contends that Respondent is using the Disputed Domain Names to redirect users to Complainant’s official site, as of the date of this opinion, all of the Disputed Domain Names except one, <ntionalexpress.com>, resolve to blank websites. The <ntionalexpress.com> domain resolves to a website containing links to what appears to be third party transportation providers that are unrelated to Complainant.

Complainant has produced documentation evidencing that Respondent has registered, or otherwise secured rights in, over 1,300 other domain names. Among the other domain names that appear to be owned by Respondent are <alaskaairs.com>, <brooksbrother.com>, <capitalloneautofinance.com>, <disnaylandparis.com>, <swaravski.com>, and <wwwlinensandthings.com>.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Names are identical or confusingly similar to its NATIONAL EXPRESS mark.

Complainant contends that the NATIONAL EXPRESS mark is a very well known trademark. Complainant further contends that Respondent is not the owner of any trademark containing the terms “national”, “nationa”, or “express”. Moreover, Complainant contends that Respondent’s registrations of the Disputed Domain Names evidence a clear case of “typosquatting”.¹

Complainant contends that Respondent has no rights or legitimate interests with respect to the Disputed Domain Names. Complainant contends that not only does Respondent not appear to have any rights in the terms “national” or “express”, but that Respondent has not been commonly known by either of these terms.

Complainant contends that Respondent is the owner of another 1,379 domain names and is an indiscriminate registrant of domain names. Complainant contends that Respondent’s indiscriminate registration of domain names evidences his lack of legitimate interests in the Disputed Domain Names.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith.

Complainant is seeking transfer of the Disputed Domain Names to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed allegations for which there are support, pursuant to the Rules, paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, paragraph 14(b).

A. Identical or Confusingly Similar

The Panel finds that each of the Disputed Domain Names registered by Respondent are confusingly similar to Complainant’s NATIONAL EXPRESS mark. In this case, Respondent has registered twenty-four variations of Complainant’s NATIONAL EXPRESS mark and <nationalexpress.com> domain name. Each of the domain names incorporates the words “national” and “express” in a combination of typographical changes either through the omission or duplication of a letter, the transposition of letters, or the replacement of a letter with another letter that is adjacent on the Qwerty keyboard. The differences between Complainant’s Mark and the Disputed Domain Names do not avoid confusing similarity. See, e.g., Mansion (Gibraltar) Limited and Provent Holdings Ltd v. Gilmer Smith, WIPO Case No. D2006-1048 (finding <mansionopker.net>, <mansionpokee.net>, <mansionspokee.net>, and <mansionspokert.net> to be confusingly similar to complainant’s domain name <mansionpoker.net>, service marks, and tradenames); Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone, WIPO Case No. D2004-0018 (finding <ataples.com>, <sstaples.com>, <staaples.com>, and <staoles.com> to be confusingly similar to complainants’ mark STAPLES); Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 (finding <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com>, and <wwwbarronsmag.com> to be confusingly similar to complainants’ trade and service marks).

In short, it is evident that the Disputed Domain Names are confusingly similar to Complainant’s widely known registered mark NATIONAL EXPRESS, and is a close typographical variant of Complainant’s own domain name. For this reason, the Panel concludes that the Disputed Domain Names are confusingly similar to the Respondent’s NATIONAL EXPRESS mark, a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Names. Respondent has not submitted any arguments or evidence in rebuttal.

Complainant notes that Respondent has been involved in a prior adverse WIPO UDRP case in which the panel found that Respondent was not using the domain name in connection with a bona fide offering of goods or services and ordered the disputed domain name <jcpenneys.com> be transferred to the complainant. J.C. Penney Corporation, Inc. v. Kiansu Thoi, WIPO Case No. D2007-0133 (“[I]t appears that the Respondent is, for his own commercial gain, diverting Internet users looking for Complainant’s services to the websites associated with the disputed domain name. Such use cannot be considered bona fide.”).

Given Respondent’s acts of typosquatting, resulting in the confusing similarity of the subject domain names with Complainant’s Mark, the Panel does not find that Respondent is using any of the Disputed Domain Names in connection with a bona fide offering of goods or services. Moreover, there is no evidence that Respondent owns any registered trademarks containing the phrase “National Express” or any similar term, nor is there any evidence that Respondent is commonly known by any of the Disputed Domain Names, or that Respondent is making a legitimate non-commercial or fair use of any of the Disputed Domain Names, without intent for commercial gain or to misleadingly divert customers. In short, there is no evidence from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Names.

For these reasons, in accordance with the Policy, paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Complainant also argues that Respondent registered and used the Disputed Domain Names in bad faith. Complainant contends that Respondent has been using the Disputed Domain Names to redirect users to Complainant’s official site. The Panel has taken notice, however, that, as of the date of this Decision, all of the Disputed Domain Names except one, <ntionalexpress.com>, resolve to blank websites. The <ntionalexpress.com> domain resolves to a website containing links to what appears to be third party transportation providers that are unrelated to Complainant. Therefore, the Panel finds no evidence of Respondent’s redirection of users to Complainant’s official site. The absence of such evidence, however, is not outcome-determinative.

Indeed, the Panel finds that this is a clear case of typosquatting, which, in itself, constitutes registration and use in bad faith. See, e.g., The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145 (“Typosquatting is by itself strong evidence of bad faith in registration and use of a domain name.”); National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (“Typosquatting . . . is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”). A pattern of cybersquatting, of which typosquatting is a form, is further indicative of bad faith. See Sociйtй BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342 (“The [r]espondent has a pattern of registering and using domain names incorporating third parties[’] trademarks with [the] intent to attract for commercial gain Internet users to its website(s) by creating likelihood of confusion with the complainant[’]s trademarks [. . .] which is sufficient to find bad faith under the Policy [. . . ]”).

Moreover, the Panel is further convinced of Respondent’s bad faith because the Panel finds it implausible that there is any legitimate reason for Respondent’s choice of domain names that both incorporate Complainant’s Mark and is virtually identical to a domain name, <nationalexpress.com>, that Complainant uses to provide services to its customers. See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (quoting Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the [r]espondent that would be legitimate.”); Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm”/“JCR co.”, WIPO Case No. D2000-1308 (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one that another trade would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly diverts members of the public, and/or damage the reputation and business of the complainant); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding the fact that complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that it was “not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate”).

For these reasons, therefore, the Panel concludes that the bad faith element of the Policy is satisfied in this case.

7. Decision

For all the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the following domain names be transferred to Complainant: