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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newcastle Permanent Building Society Limited v. Pluto Domain Services Private Limited

Case No. D2008-1468

1. The Parties

The Complainant is Newcastle Permanent Building Society Limited, of Newcastle, Australia, represented by Mallesons Stephen Jaques, Australia.

The Respondent is Pluto Domain Services Private Limited, of Mumbai, Maharashtra, India.

2. The Domain Names and Registrar

The disputed domain names <newcastlepermanet.com> and <newcastlepermenent.com> are registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. On September 30, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain names at issue. The Center followed up with reminders to the Registrar on October 6 and 7, 2008. On October 7, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 10, 2008.¹ 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 October 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2008.

The Center appointed William R. Towns as the sole panelist in this matter on November 19, 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.

On December 1, 2008, the Complainant filed with the Center an unsolicited supplemental statement with respect to an email communication the Complainant received from the Respondent on November 23, 2008. This is addressed further below.

4. Factual Background

The Complainant is a building society providing insurance and financial services, including business banking services, and is the holder of an Australian device trademark registration for NEWCASTLE PERMANENT BUSINESS BANKIN. The Complainant first registered this trademark on August 3, 2000, and has used the NEWCASTLE PERMANENT word mark in commerce since as early as 1963.² The marks NEWCASTLE PERMANENT BUSINESS BANKING and NEWCASTLE PERMANENT hereinafter are collectively referred for convenience either as “the NEWCASTLE PERMANENT mark” or “the Complainant’s mark”.

The Complainant has operated online an official website at “www.newcastlepermanent.com.au” since 1997, providing information regarding its finance and business banking products and services, and enabling the Complainant’s customers to conduct online banking since January 2001. In addition to the domain name <newcastlepermanent.com.au>, the Complainant also owns registrations for the domain names <newcastlepermanent.net.au>, <newcastlepermanent.biz>, <newcastlepermanent.com>, and <newcastlepermanant.com>, all of which automatically redirect Internet users to the Complainant’s official website.

The disputed domain names <newcastlepermenent.com> and <newcastlepermanet.com> were registered in August and September 2007, respectively. They currently are being used by the Respondent in connection with websites that contain advertising links to the Complainant’s website as well as to third party websites offering products and services that compete directly with those of the Complainant. The record reflects that the Respondent employed a privacy service to shield its identity when registering the disputed domain names. There also is evidence in the record of the Respondent’s use of robot.txt, which prevents any history of the use of the domain names from being made publicly available on the Internet Archive.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is well-known in Australia as a leading supplier of banking and other financial services. According to the Complainant, it has more than 300,000 customers, and has continuously used NEWCASTLE PERMANENT either as a word mark or as part of the NEWCASTLE PERMANENT device since 1963 to distinguish its services from the goods and services of other traders. As a result the Complainant maintains that is has established significant goodwill in the mark.

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s NEWCASTLE PERMANENT mark, as both domain names consist of minor and common misspellings of the word “Newcastle Permanent”. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names, as the Respondent has not been authorized to use the Complainant’s mark and is not commonly known by the disputed domain names. The Complainant contends that the Respondent is not using the domain names in connection with a bona fide offering of goods or services, but is instead using the domain names to redirect Internet visitors to other websites, which are in direct competition with the products and services offered by the Complainant.

The Complainant contends that the totality of the circumstances reflect the Respondent’s bad faith registration and use of the disputed domain names. The Complainant argues that the Respondent has engaged in the bad faith practice of typosquatting, and further asserts that bad faith may be inferred from the Respondent’s use of a privacy protection service to shield its true identity and the employment of robot.txt to prevent investigation into the historical use of the disputed domain names. Moreover, the Complainant maintains that the Respondent’s bad faith is demonstrated by the Respondent’s use of the disputed domain names with website providing advertising links to third party websites related to financing services, which is the Complainant’s core business.

B. Respondent

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

6. The Parties’ Supplemental Submissions

On December 1, 2008, the Complainant filed with the Center a supplemental statement regarding an email communication the Complainant received from the Respondent on November 23, 2008. In that email, the Respondent offered to transfer the disputed domain names to the Complainant provided the Complainant reimbursed the Respondent for alleged out-of-pocket expenses in relation to the registration of the disputed domain names of USD 2110.50 each. The Complainant advises that it rejected the Respondent’s offer, and further contends that the Respondent’s offer is evidence of the Respondent’s bad faith.

No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent unless so requested from the Panel. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. The Panel notes that the Rules and relevant UDRP decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427. UDRP panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission, Top Driver, Inc., v. Benefits Benefits, WIPO Case No. D2002-0972; to bring new and highly relevant legal authority not previously available to the attention of the panel, Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105; or to rebut arguments of the opposing party that could not reasonably have been anticipated, Radan Corp. v. Rapazzini Winery, WIPO Case No. D2003-0353.

Since the Respondent’s offer to transfer the disputed domain names was made subsequent to the filing of the Complaint, the Panel has determined to allow the Complainant’s supplement statement of December 1, 2008. The Panel notes, however, that it has not relied upon the Complainant’s supplemental statement in reaching its decision herein. Accordingly, there is no compelling reason to delay and afford the (defaulting) Respondent an invitation to reply.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “Cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names <newcastlepermanet.com> and <newcastlepermenent.com> are confusingly similar to the Complainant’s NEWCASTLE PERMANENT mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. In this instance, the slight differences between the disputed domain names and the Complainant’s NEWCASTLE PERMANENT mark appear to be the result of deliberate misspellings strongly indicative of “typosquatting” – a form of cybersquatting in which a respondent registers and uses a domain name that is a common misspelling or predictable mistyping of a distinctive mark in order to take advantage of typographical errors made by Internet users seeking the complainant’s website. There are a number of UDRP panel decisions that have found confusing similarity under paragraph 4(a)(i) based on evidence of typosquatting. See Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150 and Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant’s mark or to appropriate the mark for use as a domain name, and there is no indication that the Respondent has been commonly known by the disputed domain names. Nevertheless, the record reflects the Respondent’s use of the disputed domain names, which are confusingly similar to the Complainant’s mark, to divert Internet users to a website containing links to various third-party websites relating to financing services, which is the Complainant’s core business, including websites offering products and services directly competing with those of the Complainant.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the domain name, even if it 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.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.

There is no indication in the record that the Respondent has ever been commonly known by the disputed domain names. Given the presence on the Respondent’s website of advertising links to various third-party websites offering financial services, which is the Complainant’s core business, the Respondent cannot credibly claim to be making a legitimate noncommercial or fair use of the domains name within the contemplation of paragraph 4(c)(iii) of the Policy. See Covanta Energy Corporation v. Anthony Mitchell, WIPO Case No. D2007-0185 (“respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy.”).

To the contrary, the Respondent has used the disputed domain names to divert Internet users to a website featuring advertising links that appear to be keyed to the Complainant’s NEWCASTLE PERMANENT mark. Such links serve no apparent purpose other than as a vehicle for generating advertising revenue. While the use of a domain name consisting of a “dictionary” word for third party advertising may be legitimate in some circumstances, (see, e.g., The Landmark Group v. DigiMedia.com, L.P., No. FA 285459), the Complainant’s NEWCASTLE PERMANENT mark is not a “dictionary” word. Given the circumstances reflected in the record in this case, and in the absence of any reply by the Respondent to the Complaint, the Panel finds that the Respondent’s use of the disputed domain name in connection with a pay-per-click website featuring advertising links keyed to the Complainant’s mark does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy, WIPO Case No. D2006-1113. See also HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

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 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 intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 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 meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Respondent’s bad faith registration and use of the disputed domain names is palpable from the record in this case. It is a reasonable inference from the circumstances in the record that the Respondent knew of and had in mind the Complainant and its NEWCASTLE PERMANENT mark when registering the disputed domain names. The Panel finds that the Respondent has engaged in the abusive practice of typosquatting, deliberately seeking to divert Internet users to its websites in order to trade on the goodwill developed in the Complainant’s mark. See Medco Health Solutions, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800. See also Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd., supra. The Respondent’s abusive registration and opportunistic use of the disputed domain names to generate advertising revenue by creating a likelihood of confusion with the Complainant’s mark constitutes bad faith registration and use under paragraph 4(a)(iii) of the Policy. See, e.g., Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy, supra. See also Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741; Chicago Pneumatic Tool Company LLC v. Tool Gopher, WIPO Case No. D2007-0330. In the circumstances of this case, the Panel notes that the Respondent’s use of a privacy shield in combination with robot.txt are additional factors supporting an inference of bad faith registration and use. See The iFranchise Group v Jay Bean/MDNH, Inc./ Moniker Privacy Services [23658], WIPO Case No. D2007-1438 and Bacchus Gate Corporation d/b/a International Wine Association v. CVK and Port Media, Inc., WIPO Case No. D2008-0321.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. 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 names, <newcastlepermanet.com> and <newcastlepermenent.com>, be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: December 3, 2008

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¹ At the time the Complaint initially was filed, the Registrar’s WhoIs database listed as the registrant of the disputed domain names a privacy protection service, Private WhoIs Escrow Domains Private Limited.

² The Complainant also has a pending application in Australia to register the NEWCASTLE PERMANENT device mark, which the Complainant alleges it has been using continuously since 1970.