Domain Statute

 

National Arbitration Forum

 

DECISION

 

John H. Harland Company v. Santiago J. Caceres

Claim Number: FA0511000593975

 

PARTIES

Complainant is John H. Harland Company (“Complainant”), represented by Richard A. Kempf, of Maslon Edelman Borman & Brand, LLP, 3300 Wells Fargo Center, 90 South Seventh Street, Minneapolis, MN 55402.  Respondent is Santiago J. Caceres (“Respondent”), 199C Bo Daguao, Naguabo, Puerto Rico 00718-3056.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <harlandchecks.com> (the “Domain Name”), registered with Go Daddy Software, Inc.

 

PANEL

The undersigned, Christopher Gibson, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2005.  On November 15, 2005 the Complainant submitted an Amended Complaint.

 

On November 11, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 17, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 7, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@harlandchecks.com by e-mail.

 

A timely Response was received and determined to be complete on December 7, 2005.

 

On December 15, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

In its contentions, the Complainant has addressed each of the three principal requirements as set forth in the Policy ¶ 4(a), and ¶ 3(b)(ix) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).

 

(1)     The Domain Name is Identical or Confusingly Similar to Trademark in which Complainant has Rights

                            

Complainant contends that it has established rights (including statutory and common law rights) in the HARLAND name through its trademark registrations with the United States Patent and Trademark Office (“USPTO”), through long, continuous use and marketing of its marks in commerce, and through registration of its name as a domain name.  In short, Complainant asserts that the HARLAND trademark is strong and well-known in the industry. 

 

Complainant contends that the Domain Name is confusingly similar to its trademarks and domain names.  Complainant claims that Respondent relies on the typing errors of customers seeking Complainant’s web site and that this strategy of “typosquatting” dictates that it acquire and use domain names that are confusingly similar to Complainant’s mark, such as by adding the word “checks” to Complainant’s company name to form the Internet address.  Complainant asserts Respondent is a well-known typosquatter who seeks, through the enormous number of websites it has registered, to redirect Internet users to its own commercial websites, where it earns revenues through affiliated marketing – paid click links for identical or similar products.  In this case, Respondent uses the Domain Name to resolve to a website featuring links to third-party commercial websites that directly compete with Complainant’s business, marketing checks and other banking products to the same customers as Complainant.  To turn a profit, Respondent’s business model depends on customers’ confusion regarding the Internet site for which they are searching.  On arriving at Respondent’s site, customers are faced with paid click links for competing products that redirect Internet users to online stores offering both similar and wholly-unrelated services to those offered by Complainant.  Complainant argues that Respondent’s intentional exploitation of this confusion is evidence that Complainant has satisfied ¶ 4(a)(i) of the Policy.

 

(2)          Respondent has No Rights or Legitimate Interests

 

Complainant asserts that Respondent is not a licensee or affiliate of Complainant, and is not authorized to utilize any of its marks.  Further, Respondent has never been known by HARLAND or “Harland Checks” or any other name incorporating the word or mark HARLAND.  Respondent has never registered the name HARLAND in any form with any governmental body of which Complainant is aware.  Respondent’s own name is not part of the Domain Name.  Complainant contends that Respondent’s diversionary use of Complainant’s marks and domain names to attract Internet users to its own website is neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the Domain Name.  Thus, because of Respondent’s improper purposes, it has no rights or legitimate interests with respect to the Domain Name.

 

(3)     Registration and Use in Bad Faith

Complainant contends that through Respondent’s use of a confusingly similar variation of Complainant’s marks and domain names, Respondent has intentionally attempted to ensnare unsuspecting Internet users.  The Domain Name is tailored to attract the same audience as Complainant’s business, and creates a false impression of an association with the Complainant.  Respondent aims to use the confusion created by the Domain Name with Complainant’s registered and unregistered trademarks as a hook for customers who, once on its site, will be lured into visiting the sponsored links and advertisements.  Complainant contends that the evidence unambiguously establishes that Respondent’s practice of typosquatting and diversion, motivated by commercial gain, which constitutes bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).  Moreover, a conclusion of bad faith is inescapable whenever a respondent repeatedly engages in such illegitimate conduct and has been involved in a large number of cases under the Policy.

B. Respondent

 

Respondent has made a number of points in response, which it urges the Panelist to take into account and give weight.  First, Respondent observes that the words HARLAND CHECKS have not been registered as a trademark by Complainant or anyone else.  Respondent indicates it has held the Domain Name for six years and no action has previously been taken by Complainant, nor has Respondent previously been contacted by the Complainant.  Complainant is thus overstepping its trademark rights and protection.

 

Respondent asserts that his purpose for the Domain Name was to create an “affiliate website,” that is, one in which the web site is partnered with the on-line merchant (in this case, the Complainant).  The affiliate web site has links to promote the merchant’s products, and the web site operator receives a commission for all valid transactions it has referred.  Respondent states that if Complainant had contacted him, he would have explained his intentions and they could have come to some arrangement.

 

Respondent also uses an analogy to real estate to support his contentions.  Domain names can be viewed as real estate on the Internet.  Indicating that the Domain Name is like a prime corner location which the Complainant failed to buy, Respondent asks, “Should [Complainant] have the right to go and take it when [it] never took action to purchase it in the first place? . . . Why didn’t they buy this domain before I did?” 

 

Respondent claims that the Domain Name is currently parked for free by the registrar, Go Daddy.  Respondent alleges that “Go Daddy added these links recently and [he] wasn’t aware that this was happening.”  Respondent asserts that he “does not receive anything for these links” and indicates he would be willing to make changes and host his web site elsewhere.

 

Finally, with respect to bad faith, Respondent contends that he was never contacted by Complainant regarding this domain and his intention was to bring referrals to Complainant’s business.  He states that he is open to amicable resolution and his wish is to become business partners.

 

FINDINGS

 

Founded in 1923, Complainant focuses on, among other things, software, marketing and check printing services for financial institutions.  Complainant is very well-known, in particular, for its check printing products and services for financial institutions.   Complainant has used its trademark in commerce for many years and has registered the HARLAND mark with the USPTO (Reg. No. 2,078,696 issued July 15, 1997).  Since as early as 1996, Complainant has used the domain names <harland.net> and <harland.com> to promote its products and services.

 

Respondent registered the <harlandchecks.com> domain name on October 25, 1999.  The disputed domain name resolves to a directory website that displays links to various third-party websites, including some of Complainant’s competitors. 

 

DISCUSSION

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

 

(2)   the 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the HARLAND mark by registering it with the USPTO and using it continuously in commerce for many years.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Tuxedos by Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing).

 

The <harlandchecks.com> domain name incorporates Complainant’s HARLAND mark, with the difference between the mark and the Domain Name being the addition of (i) the generic term “checks,” which refers to a key aspect of the Complainant’s business, and (ii) the generic top-level domain “.com.”  The Panel determines that these additions do not render the Domain Name distinct and are insufficient to negate the confusingly similar aspects of the Domain Name pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that a top-level domain such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).         

 

The Panel finds Policy ¶ 4(a)(i) is established.

 

Rights or Legitimate Interests

 

The initial burden under Policy ¶ 4(a)(ii) is on the Complainant to prove the Respondent does not have rights or legitimate interests in the Domain Name.  Once Complainant has made a prima facie case, the burden then shifts to Respondent to show it has rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests).

 

Complainant asserts that Respondent is using the Domain Name to redirect Internet users interested in Complainant’s HARLAND products and services to Respondent’s web site featuring links to third-party web sites that compete with Complainant’s business.  Respondent does not deny that the Domain Name resolves to a web site containing links to products and services that compete with Complainant’s business.  Instead, Respondent alleges that (i) the Domain Name is currently “parked”[1] for free by the registrar, Go Daddy Software; (ii) Go Daddy Software recently added these links to the web site and Respondent was not aware this was happening; and (iii) Respondent does not receive anything for these links and would be willing to make changes and host his web site elsewhere. 

 

Although Respondent’s allegations concerning conduct by Go Daddy Software raise questions about his credibility and could, if true, also raise serious concerns about Go Daddy Software’s conduct, the Panelist is not in position and does not need to decide upon their veracity.  The Respondent is bound by the Go Daddy Domain Name Registration Agreement, which contains (and passes through) conditions required by ICANN’s accreditation rules for registrars and makes clear that the Respondent, as the registrant of the Domain Name, is legally responsible for it.  In particular, in the Registration Agreement the Respondent warrants that it has registered the Domain Name in good faith and has “no knowledge of it infringing upon or conflicting with the legal rights of a third party or a third party's registration, trademark or trade name.” 

 

In this case, however, it is clear that Respondent targeted Complainant from the outset.  Respondent picked the Domain Name which incorporates Complainant’s name and mark.  Respondent freely acknowledges that his purpose for the Domain Name was and is to create an affiliate website to promote Complainant’s products and receive a commission for all transactions referred.  Respondent suggests that if Complainant had contacted him, he would have explained his intentions and they could have come to some arrangement.  Yet, it was not incumbent on Complainant to contact Respondent, and Complainant is well within its rights to refuse to contact or do business with the Respondent.  As Complainant asserted in its Complainant, Respondent has not been licensed or otherwise authorized by Complainant to use the HARLAND mark.  The fact that Respondent, on its side, did not contact Complainant for some six years to raise the prospect of an “affiliate website” deeply undercuts Respondent’s claims and credibility in this regard. 

 

The Panel therefore determines, in line with precedent, that the diversionary use of the Domain Name, which is confusingly similar to Complainant’s HARLAND mark, to attract Internet users to Respondent’s own website containing links to products and services that compete with Complainant’s business, is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enter., Inc. v. Dot Stop, FA 145227 (NAF Mar. 17, 2003) (finding respondent’s diversionary use of complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).

 

The Panel finds Policy ¶4(a)(ii) is established.  

 

Registration and Use in Bad Faith

 

Complainant contends that through Respondent’s registration and use of the Domain Name which is confusingly similar to Complainant’s Harland mark and domain names, Respondent has intentionally attempted to ensnare unsuspecting Internet users.  This practice of typosquatting and diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to ICANN Policy ¶ 4(b)(iv). 

 

Respondent argues in response that domain names should be viewed as real estate on the Internet.  Respondent reasons that since he registered the Domain Name first and Complainant failed to do so, he is now entitled to keep the Domain Name and Complainant should have contacted him so that he could have explained his intentions to become business partners and bring referrals to Complainant’s business. 

 

The Panelist is strongly tempted to view Respondent’s explanation as disingenuous.  However, it is sufficient to make clear that his proposed analogy to real estate lacks legal substance.  Simply because a particular domain name similar to a trademark might be available for registration, this does not permit a party like Respondent to register it and claim rights akin to real estate.  While there could be a legitimate basis for a party (e.g., a company with a similar name in an unrelated line of business) to register a domain name that is similar to a particular pre-existing trademark, that is not the situation in this case.  Trademark owners should not be put in the position of registering every conceivable variation on their trademarks, nor would this be good policy for the Internet.  As noted above, in Respondent’s domain name Registration Agreement he confirmed that he had registered the Domain Name in good faith and had no knowledge of it infringing upon or conflicting with the legal rights of a third party or that party's trademark or trade name.  Here, however, Respondent has admitted that his purpose for the Domain Name was to create an “affiliate web site” with Complainant.  It appears that while Respondent was quite aware of Complainant’s trademark and tradename, he was misinformed about his own legal obligations with respect to registration of the Domain Name.

 

The Panelist determines that the registration and use of the Domain Name that is confusingly similar to Complainant’s mark to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the respondent’s site).

The Panel finds the Complainant has established bad faith under ICANN Policy ¶¶ 4(a)(iii) and 4(b)(iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <harlandchecks.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Christopher Gibson, Panelist
Dated: January 3, 2006

 

 

 

 

 

 

 

 

National Arbitration Forum