Charles Schwab & Co., Inc. v. Hostmaster hostmaster / Schawb
Claim Number: FA1504001614937
Complainant is Charles Schwab & Co., Inc. (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA. Respondent is Hostmaster hostmaster / Scha wb (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <schawb.com>, registered with Tucows, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2015; the Forum received payment on April 17, 2015.
On April 17, 2015, Tucows, Inc. confirmed by e-mail to the Forum that the <schawb.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 April 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2015 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@schawb.com. Also on April 21, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the owner of numerous registered trademarks containing the name SCHWAB, dating back to 1988. These marks are used to market a wide range of financial services. Complainant is one of the leading financial services firms in the USA, with millions of clients. Its mark is well known as are the services it offers.
Complainant alleges that the disputed domain name was registered in 1998, when its marks were well known. The disputed domain name is a misspelling of Complainant’s mark. In the past, the web site to which the domain name resolved included the tagline “The Best Place to Find Schwab” as well as a link to Complainant’s web site. Thus Respondent was aware of Complainant’s mark and makes it appear as if the web site at the disputed domain name is an official web site endorsed by Complainant.
According to Complainant, the disputed domain name is now redirected to a web site that offers products and services which directly compete with those of Complainant.
Complainant states that it has not given Respondent any license, permission, or authorization to use its mark.
Further, says Complainant, Respondent has a history of registering domain names incorporating typo-squatted versions of famous third-party trademarks.
Complainant alleges that the disputed domain name is confusingly similar to complainant’s SCHWAB mark due to the intentional misspelling of the word “Schwab”, the replacement of one character with another and the juxtaposition of two characters. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. It has never been commonly known under the name SCHWAB. It is not making a protected non-commercial or fair use of the disputed domain name. On the contrary, the disputed domain name is being used to redirect Internet users to a web site that offers products and services that compete directly with those of Complainant. Such a use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because it knew of Complainant’s well-known mark when it registered the disputed domain name. Additionally, because the disputed domain currently directs consumers to products and services which are in direct competition with Complainant’s business, this constitutes bad faith registration and use under Policy ¶ 4(b)(iii). Further, Respondent has engaged in typo squatting through its use of the disputed domain name, which is a misspelling of Complainant’s mark. Therefore, Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant cites UDRP precedents to support its position.
Finally, the Complainant also submits that Respondent has a history of registering domain names incorporating third-party trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for various marks that include the name SCHWAB, dating back to 1988. Its marks are well-known in the financial industry.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 1998.
The products and services offered by Complainant are widely used and well known.
Respondent is using the disputed domain names to resolve to web sites containing commercial links to products and services that compete with those of Complainant.
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.”).
It is clear that the disputed domain name, consisting of a misspelling of the Complainant’s trademark, is confusingly similar to the Complainant’s trademark in the sense of the Policy. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Respondent is using the disputed domain name to point to a website that offers services that compete with the Complainant’s products.
The Panel finds that Respondent is redirecting Internet users interested in the Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to ¶ 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to ¶ 4(c)(iii) of the Policy. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
It is clear to the Panel that Respondent was aware of Complainant’s mark when it registered and started using the disputed domain name, because the disputed domain name is essentially identical to Complainant’s well-known mark.
Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, in the Panel’s view, Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because Respondent uses the disputed domain name to resolve to a web site that offers services that compete with those of the Complainant. This indicates that Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under Policy ¶ 4(b)(iv). See 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); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website”).
Further, Respondent has engaged in typo squatting and this constitutes bad faith registration and use pursuant to ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (By engaging in typo squatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy 4(a)(iii).); see also Natl Assn of Profl Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typo squatting, however, 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. Typo squatting is inherently parasitic and of itself evidence of bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <schawb.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 20, 2015
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