United Site Services Inc. v. Porta Toilets of Rome
Claim Number: FA1310001522516
Complainant is United Site Services Inc. (“Complainant”), represented by James A. Blanchette of Cesari and McKenna LLP, Massachusetts, USA. Respondent is Porta Toilets of Rome (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <unitesiteservices.com>, <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2013; the National Arbitration Forum received payment on October 2, 2013.
On October 4, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <unitesiteservices.com>, <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@unitesiteservices.com, postmaster@unitesiteservice.com, postmaster@unitedsightservices.com, postmaster@unitedsightservices.net, postmaster@unitedstateservices.com. Also on October 8, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On November 1, 2013, the Forum received a timely and otherwise compliant Additional Submission from Complainant.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
i. The <unitesiteservices.com> and <unitesiteservice.com> domain names are common misspellings of Complainant’s UNITED SITE SERVICES mark. Both of these domain names fully incorporate Complainant’s mark and merely omit certain letters: the letter “d,” and the letters “d” and “s;”
ii. The <unitedsightservices.com> and <unitedsightservices.net> fully incorporate Complainant’s mark but merely misspell “site” as “sight,” and the resulting domain names are phonetically identical to Complainant’s UNITED SITE SERVICES mark;
iii. The <unitedstateservices.com> domain name fully incorporates the UNITED SITE SERVICES mark but misspells “Site” as “State,” and the resulting domain name is phonetically similar to Complainant’s mark.
B. Respondent did not submit a Response.
C. Complainant’s Additional Submission:
1. As of September 19, 2013, prior to the filing of the Complaint, the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names resolved to generic under construction pages.
2. As of November 1, 2013, each of the five disputed domain names redirect Internet users to <johnnyonthespotinc.com>, where competing services are offered. In the intervening period of time since Complainant filed its Complaint, Respondent redirected each of the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names from under construction pages to this competing site.
1. Respondent’s <unitesiteservices.com>, <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, <unitedstateservices.com> domain names are confusingly similar to Complainant’s UNITED SITE SERVICES mark.
2. Respondent does not have any rights or legitimate interests in the <unitesiteservices.com>, <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, <unitedstateservices.com> domain names.
3. Respondent registered or used the <unitesiteservices.com>, <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, <unitedstateservices.com> domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant states that it uses its UNITED SITE SERVICES mark in connection with its business as one of the nation’s largest providers of portable toilets, restroom trailers, temporary fences, and other types of rental services. Complainant alleges that it owns interests in the UNITED SITE SERVICES mark under Policy ¶ 4(a)(i) through its registrations of the mark with the USPTO (e.g., Reg. No. 2,489,123 registered September 11, 2001). See Complainant’s Exhibit B. The Panel notes that it has previously been determined that a complainant’s registration of its mark with the USPTO is sufficient to establish the complainant’s rights in the mark under the Policy. See, e.g., Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Accordingly, the Panel holds that Complainant is the owner of the UNITED SITE SERVICES mark under Policy ¶ 4(a)(i).
Complainant next alleges that each of the <unitesiteservices.com>, <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names is confusingly similar to Complainant’s UNITED SITE SERVICES under the Policy. The Panel observes that each disputed domain name eliminates the spaces found in the UNITED SITE SERVICES mark and adds a generic top-level domain (“gTLD”) such as “.com” or “.net.” However, the Panel notes that a domain name’s elimination of spaces found in a complainant’s mark and addition of a gTLD have been considered irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See, e.g., U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Complainant argues that the <unitesiteservices.com> and <unitesiteservice.com> domain names are common misspellings of Complainant’s UNITED SITE SERVICES mark, since both domain names fully incorporate Complainant’s mark and merely omit certain letters: the letter “d,” and the letters “d” and “s,” respectively. The Panel notes that previous panels have held that a domain name that differs from a complainant’s mark by merely one or two characters is confusingly similar to the mark for the purposes of Policy ¶ 4(a)(i). See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter); Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). Accordingly, the Panel holds that the <unitesiteservices.com> and <unitesiteservice.com> domain names are confusingly similar to Complainant’s UNITED SITE SERVICES mark under Policy ¶ 4(a)(i). Complainant next argues that the <unitedsightservices.com> and <unitedsightservices.net> domain names are confusingly similar to its UNITED SITE SERVICES mark, because both domain names fully incorporate Complainant’s mark but merely misspell “site” as “sight,” and are thus phonetically identical to Complainant’s UNITED SITE SERVICES mark. The Panel accepts Complainant’s contention that the <unitedsightservices.com> and <unitedsightservices.net> domain names are phonetically identical to Complainant’s UNITED SITE SERVICES mark, and notes that several panel decisions have held that a domain name that is phonetically identical to a complainant’s mark is confusingly similar to the mark under Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy). Accordingly, the Panel holds that the <unitedsightservices.com> and <unitedsightservices.net> domain names are confusingly similar to Complainant’s UNITED SITE SERVICES mark under Policy ¶ 4(a)(i). Finally, Complainant argues that the disputed <unitedstateservices.com> domain name is confusingly similar to its UNITED SITE SERVICES mark, because the domain name fully incorporates the UNITED SITE SERVICES mark but misspells “Site” as “State,” and the resulting domain name is phonetically similar to Complainant’s mark. The Panel notes that several panel decisions have held that a domain name is confusingly similar to a complainant’s mark where the domain name is similar phonetically to the complainant’s mark. See, e.g., Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25, 2002) (“The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant’s marks.”); see also Hotwire, Inc. v. Wilder, FA 741901 (Nat. Arb. Forum Aug. 7, 2006) (finding the <heatwire.com> domain name to be confusingly similar to the complainant’s HOTWIRE.COM mark, as the disputed domain name was pronounced similarly to the complainant’s mark and was also a misspelled variation of it). In the instant proceedings, the Panel determines that the <unitedstatesservices.com> domain name is pronounced similarly to the UNITED SITE SERVICES mark, and accordingly holds that the domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii), because Complainant has not given Respondent permission to use its UNITED SITE SERVICES mark in a domain name and the WHOIS information identifies the registrant of the disputed domain names as “Porta Toilets of Rome.” The Panel notes the previous decision of Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), in which the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. The Panel similarly reasons that in the instant proceedings, Complainant has not authorized Respondent to use its mark in a domain name, and the WHOIS information suggests Respondent is known as “Porta Toilets of Rome,” and not as <unitesiteservices.com>, <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, or <unitedstateservices.com>. Further the Panel holds that nothing else on the record suggests that Respondent is commonly known by any of the disputed domain names. Accordingly, the Panel holds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent is not using the <unitesiteservices.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the <unitesiteservices.com> domain name redirects to the website resolving from the <johnnyonthespotinc.com> domain name, which offers goods and services that directly compete with Complainant. See Complainant’s Exhibits J & K. Complainant’s Exhibit J demonstrates that the <unitesiteservices.com> domain name does in fact redirect to the website resolving from <johnnyonthespotinc.com>. Further, a screenshot provided by Complainant shows that the website resolving from <johnnyonthespotinc.com> is a commercial website that advertises “Johnny on the Spot,” a “premier supplier of portable restrooms & bathrooms in the southeast, serving construction, emergency relief, corporate outings, weddings, and more.” See Complainant’s Exhibit K. The Panel notes that in its Additional Submission, Complainant asserts that each of the four remaining domain names is now being used to redirect users to <johnnyonthespotinc.com> as well. The Panel concludes from this evidence that the disputed domain names are being used to host a website of a direct competitor of Complainant in the industry of portable toilet rentals. The Panel further notes that it has previously been determined that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the respondent uses the domain name to redirect Internet users to a website offering services that directly compete with those offered by the complainant. Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). The Panel thus holds that Respondent’s use of the disputed domain names to redirect to the website of “Johnny on the Spot” is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant further argues in its Complaint that Respondent lacks rights or legitimate interests in the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names under Policy ¶ 4(a)(ii), because Respondent has failed to make an active use of these disputed domain names. The Panel notes that in its Additional Submission, Complainant alleges that Respondent has since redirected these domains to a competing site. Screenshots provided by Complainant in conjunction with the original Complaint show that the websites resolving from the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names stated the following in the upper right-hand corner: “This Page Is Under Construction – Coming Soon!” See Complainant’s Exhibits M—P. However, the Panel also notes that the websites resolving from each of these disputed domains hosted links to various third-party websites, including links entitled “United Package Service Tracking,” “United Airlines Customer,” “United Rentals,” “United Blood Service,” and “United Staffing Services.” See id. The Panel notes that previous panels have found that a respondent engages in an inactive holding of a disputed domain name by not assigning any content whatsoever to the disputed domain name. See, e.g., U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). In the instant proceeding, the Panel holds that the websites resolving from the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names contained content, including the links to the third parties noted above. Thus, the Panel declines to hold that Respondent had engaged in an inactive holding of the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names even before redirecting them. However, the Panel notes that it has previously been determined that a respondent’s use of a disputed domain name to operate a website that hosts hyperlinks to third-party websites unrelated to the complainant’s business is not a use that is protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). In the instant proceedings, the Panel determines that the websites resolving from the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names all promoted links to third-party websites that were unrelated to Complainant. The Panel further holds that this use of the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names to promote unrelated hyperlinks is not a use protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant suggests that Respondent has engaged in a pattern of bad faith domain registrations by registering the five domain names that are disputed in the instant proceedings, and has thus demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(ii). The Panel notes that in EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005), the panel held that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii). In the instant proceedings, the Panel holds that Respondent has registered five domain names that are confusingly similar to Complainant’s UNITED SITE SERVICES mark, which is greater than the number of infringing domain names in EPA European Pressphoto Agency, supra. Accordingly, the Panel holds that Respondent has engaged in a pattern of bad faith domain name registration, which tends to show Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(ii).
Complainant next alleges that Respondent has demonstrated bad faith registration and use of the <unitesiteservices.com> domain name pursuant to Policy ¶ 4(b)(iii), because the domain name targets potential customers of Complainant and redirects them to Respondent’s competing commercial website. See Complainant’s Exhibits J & K. As discussed above, Complainant’s Exhibit J demonstrates that the <unitesiteservices.com> domain name does in fact redirect to the website resolving from <johnnyonthespotinc.com>. Further, a screenshot provided by Complainant shows that the website resolving from <johnnyonthespotinc.com> is a commercial website that advertises “Johnny on the Spot,” a “premier supplier of portable restrooms & bathrooms in the southeast, serving construction, emergency relief, corporate outings, weddings, and more.” See Complainant’s Exhibit K. The Panel notes that in its Additional Submission, Complainant alleges that the remaining domains have been put to this use as well. The Panel concludes from this evidence that the disputed domain names are being used to host a website of a direct competitor of Complainant in the industry of portable toilet rentals. The Panel notes that previous panels have determined that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) where the respondent is a competitor of the complainant and the disputed domain name redirects Internet users to the respondent’s own competing website. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Pursuant to this precedent, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iii).
Complainant also alleges that Respondent has demonstrated bad faith registration and use of the <unitesiteservices.com> domain name pursuant to Policy ¶ 4(b)(iv), because the domain name is confusingly similar to Complainant’s UNITED SITE SERVICES mark, and Respondent is profiting from this confusion in the form of increased traffic to its own commercial website. See Complainant’s Exhibits J & K. The Panel notes that in its Additional Submission, Complainant alleges that the remaining domains have been put to this use as well. The Panel notes that it has previously been determined that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) where the disputed domain name is confusingly similar to the complainant’s mark and the domain name resolves to a commercial website that offers services similar to those offered by the complainant. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). In the instant proceedings, the Panel holds that the <unitesiteservices.com> domain name is confusingly similar to Complainant’s UNITED SITE SERVICES mark since the domain name fully appropriates the mark and merely omits the letter “d” found in the word “United.” Further, as discussed previously, the Panel determines that the <unitesiteservices.com> domain name resolves to a website that directly competes with Complainant in the offering of portable toilet rentals. See Complainant’s Exhibits J & K. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration and use of the <unitesiteservices.com> domain name, as well as the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names, pursuant to Policy ¶ 4(b)(iv).
In its original Complaint, Complainant next alleged that Respondent had engaged in the inactive holding of the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names, which demonstrates Respondent’s bad faith registration and use of these domain names under Policy ¶ 4(a)(iii). However, as discussed above, the Panel notes that each of the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names resolved to a website that contained content, including links entitled “United Package Service Tracking,” “United Airlines Customer,” “United Rentals,” “United Blood Service,” and “United Staffing Services.” See Complainant’s Exhibits M—P. Accordingly, the Panel declines to hold that Respondent has engaged in an inactive holding of these domain names. Instead, the Panel determines that the disputed domain names resolved to websites that promoted a variety of hyperlinks to third parties that are unrelated to Complainant’s business in the rental of portable facilities. The Panel further notes that previous panel decisions have held that a respondent demonstrates bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iv) where the domain name resolves to a website that hosts hyperlinks to unrelated third parties. See, e.g., Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Pursuant to this precedent, the Panel presumes that Respondent has obtained click-through fees from its promotion of unrelated hyperlinks, and holds that Respondent has demonstrated bad faith registration and use of the <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names under Policy ¶ 4(b)(iv).
Finally, Complainant suggests that because the <unitesiteservices.com> and <unitesiteservice.com> domain names are common misspellings of Complainant’s UNITED SITE SERVICES mark, Respondent’s registration of these domain names constitutes typosquatting behavior that demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel notes the previous case of Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003), in which the panel found that the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting.’” The Panel similarly reasons that by registering the <unitesiteservices.com> and <unitesiteservice.com> domain names, both of which fully appropriate Complainant’s UNITED SITE SERVICES mark and merely omit one or two characters, Respondent has similarly created a likelihood that the <unitesiteservices.com> and <unitesiteservice.com> domain names will be confused as websites affiliated with or sponsored by Complainant. Such a finding would allow the Panel to hold that Respondent has registered and used the <unitesiteservices.com> and <unitesiteservice.com> domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unitesiteservices.com>, <unitesiteservice.com>, <unitedsightservices.com>, <unitedsightservices.net>, and <unitedstateservices.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 15, 2013
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