Hydro-Québec v. Tomasz Kurlenko
Claim Number: FA2011001921549
Complainant is Hydro-Québec (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Tomasz Kurlenko (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--hydroqubec-h7a.com> (‘the Domain Name’), registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2020; the Forum received payment on November 20, 2020.
On December 1, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <xn--hydroqubec-h7a.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 December 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2020 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@xn--hydroqubec-h7a.com. Also on December 2, 2020, 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 December 23, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark HYDRO QUEBEC, registered, inter alia in the USA for electricity services with first use in commerce recorded as 1975. It owns hydroquebec.com.
The Domain Name registered in 2012 is confusingly similar to the Complainant’s trade mark. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. The Complainant submits that a minor variation consisting of an equally valid alternative spelling (as in the present case) should be considered as typosquatting as well. Indeed, examples of such typos include accented characters, such as those found in internationalized domain names (“IDN”). IDNs rely on "punycode" – a technology for converting characters using the ASCII character set (largely based on the Latin alphabet, which is used in the English language) – into letters used in some other languages. Indeed, in domain name dispute decisions, panels have typically examined the translated version of a domain name containing punycode (not the punycode itself) when applying the test for confusing similarity under the first element of the UDRP. This approach stems from the fact that such domain name contains sufficiently recognizable aspects of the relevant mark.
In the present case, the first letter “e” in the Complainant’s Marks HYDRO QUÉBEC, is spelled either with or without an acute accent (“é”) among the registrations that are part of the family of trademarks constituting the Complainant's Marks, but has not been included in the domain names ordinarily used as part of URLs of the Complainant’s websites and the email addresses of its personnel (in particular hydroquebec.com) given that technical restrictions prevented registration and seamless use of IDN for many years, and they are still less used, popular and known than non-IDN.
In the present case, in applying the foregoing principles to the facts, it is obvious that the Domain Name is identical or confusingly similar to the Complainant’s Marks given that when excluding the “.com” TLD, it is essentially and phonetically identical to “HYDRO QUEBEC” which are the dominant textual components common to all of the Complainant’s Marks, and that “hydroquébec.com” is an obvious or intentional misspelling of or minor variation compared to “HYDRO QUEBEC” (and of HYDROQUEBEC.com) merely differentiated by the acute accent on the first letter “e”, with a very high degree of resemblance with “HYDRO QUEBEC”. The confusing similarity is even greater given the extent to which the Complainant's Marks have become well-known.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name has been used for pay per click links which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Domain Name has also been offered for sale generally for approximately $3500 which is also an indication of a lack of rights or legitimate interests.
Offering a Domain Name for sale for a sum in excess of costs of registration is registration and use in bad faith. Use of the Domain Name for pay per click links is diverting Internet users for commercial gain and disrupting the Complainant’s business.
The Respondent has been the subject of several adverse rulings under the UDRP including for registration of an IDN containing a third party mark and is the owner of many domain names containing the trademarks of others.
Typosquatting is bad faith per se under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark HYDRO QUEBEC, registered, inter alia in the USA for electricity services with first use in commerce recorded as 1975. It owns hydroquebec.com.
The Domain Name registered in 2012 appears to be a typosquatting registration, has been used for pay per click links and has been offered for sale generally for approximately $3500. The Respondent has been the subject of several adverse rulings under the UDRP including for registering IDNs containing third party trademarks and owns a number of domain names containing the trademarks of others.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name is an internationalized domain name (‘IDN’) that utilizes a non-English character. Complainant notes the <xn--hydroqubec-h7a.com> domain name is presented in Punycode, and can be translated to <hydroquébec.com>.
“Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶ 4(a)(i) analysis of confusing similarity”). See NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Forum May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE).
Respondent’s <xn--hydroqubec-h7a.com> domain name is confusingly similar to Complainant’s HYDRO QUEBEC mark (registered, inter alia, in the USA for electricity services with first use recorded as 1975) since it translates to a minor misspelling of the mark, merely differentiated by an accent over the letter “e” and the addition of the “.com” gTLD. Minor misspellings created by adding or deleting accents are insufficient to overcome confusing similarity under Policy ¶ 4(a)(i). See Hofbrauhaus of America, LLC v. Dobosiewicz, Eddy / Forgotten Buffalo, FA 1555850 (Forum June 2, 2014) (“[T]he Panel finds that removal of an accent in a trademark is insignificant because it cannot be reproduced in domain names.”).
The gTLD “.com” does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc. v. Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Thus, the Panel finds that the Domain Name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Respondent has used the site attached to the Domain Name to link to third party businesses that compete with the Complainant. He does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Ashley Furniture Industries Inc. v. domain admin /private registrations aitken Gesellschaft, FA 1506001626253 (Forum July 29, 2015) (linking to pay per click links does not amount to a bona fide offering of goods and services or a legitimate noncommercial fair use).
The Domain Name also appears to be a typosquatting registration. Typosquatting can provide additional evidence that a respondent has no rights or legitimate interests in a disputed domain name. See Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”).
An offer to sell a domain name containing a third party’s trade mark for a sum in excess of registration costs can be evidence that a respondent lacks rights or legitimate interests in the domain. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s distinctive mark.
The Domain Name seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
The Domain Name has also been offered for sale generally for a sum in excess of likely costs of registration which also amounts to registration and use in bad faith under the Policy. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark).
In the opinion of the Panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it provide competing services under a domain name containing the Complainant’s distinctive mark. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. See Health Republic Insurance Company v. Above.comLegal, FA 1506001622088, (Forum July 10, 2015) re diversion to pay per click links.
A pattern of bad faith registration evidences bad faith pursuant to Policy ¶ 4(b)(ii) and may be established by previous registration of domain names incorporating famous marks or previous negative UDRP decisions. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Policy ¶ 4(b)(i) - (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--hydroqubec-h7a.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 23, 2020
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