Xerox Corporation v. Stonybrook Investments, Ltd.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Xerox Corp.

v. Stonybrook Investments, Ltd

Case No.

D2001-0380

1. The Parties

Complainant is Xerox

Corporation, 800 Long Ridge Road, Stamford, Connecticut 06904, USA.

Respondent is Stonybrook

Investments, Ltd. 18 Mopan Street Belize City, N/A 0000 in Belize.

2. The Domain Name

and Registrar

The domain name at

issue is <zerox.com> (hereinafter referred to as the Domain Name).

The Registrar of the

Domain Name is Tucows.com, Inc. (hereinafter referred to as the Registrar).

3. Procedural History

On March 15, 2001,

Complainant filed a complaint with the WIPO Arbitration and Mediation Center

(hereinafter referred to as the Center). The Complaint was received on March

15, 2001.

On March 21, 2001,

Acknowledgement of Receipt by the Center was sent to the Complainant.

On March 22, 2001,

the Center sent the Request for Registrar verification.

On March 27, 2001,

the Registrar provided the Center with the full contact details available

in its WHOIS database for the Domain Name registrant and confirmed that:

- a copy of

the Complaint was sent to it by the Complainant;

- it is the

current Registrar of the domain name registration;

- the Respondent

is the current registrant of the Domain Name registration;

- the Uniform

Domain Name Dispute Resolution Policy (hereinafter referred to as

the ICANN Policy) applies to the Domain Name.

The Center proceeded to

verify that the complaint satisfied the formal requirements of the Rules for

Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the

ICANN Rules) and the World Intellectual Property Organization Supplemental Rules

for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as

the WIPO Rules), including the payment of the requisite fees. The verification

of compliance with the formal requirements was completed in the affirmative

on March 28, 2001.

The Panel has reviewed

the documentary evidence provided by the parties and the Center and agrees

with the Center’s assessment that the Complaint complies with the formal

requirements of the ICANN Rules and the WIPO Rules.

On March 28, 2001,

the Center informed the Respondent of the commencement of the proceedings

as of March 28, 2001, and of the necessity of responding to the Complaint

within 20 calendar days, the last day for sending a response to the Center

being on April 16, 2001.

In a letter dated April

25, 2001, the Center informed the Respondent that it was in default pursuant

to the ICANN Policy and the WIPO Rules and that an administrative panel

would be appointed based on the number of panelists designated by the Complainant.

On May 8, 2001, the

Center issued a Notification of the Appointment of Administrative Panel

and of the projected decision date to the parties.

The Panel believes

it was constituted in compliance with the ICANN Rules and the WIPO Rules

and has also issued a Statement of Acceptance and Declaration of Impartiality

and Independence.

The Panel has received

no further submissions from either party since its formation.

The Panel is obliged

to issue a decision on or prior to May 22, 2001, in the English language.

4. Factual Background

The following uncontradicted

and unchallenged facts appear from the Complaint and documents submitted

with the Complaint:

Xerox is a global leader

in the document management field, offering a wide array of products including

copiers, printers, fax machines, scanners, desktop software, digital printing

and publishing systems, and related supplies.

The domain name, <xerox.com>

was registered by the Complainant on January 9, 1986. The XEROX website,

featuring information on many of these goods and services, can be accessed at

the URL <xerox.com>. A printout of the main page of the site is attached

as Exhibit 3 in the complaint.

Pursuant to the WHOIS record

filed by the Complainant, it seems that the Domain Name <zerox.com> was

registered on August 5, 1997.

The Domain Name redirects

to a website at the URL <casino44.com>, which offers online gambling services.

The domain name <casino44.com> is also owned by Respondent Stonybrook.

See Casino 44 website printout and WHOIS record for <casino44.com> attached

as Exhibit 7 in the Complaint.

5. Parties’ Contentions

A. Complainant

i) Contentions

of the Complainant with respect to its trademark rights

◆ The

Complainant alleges that it is the owner of the following registered

U.S. federal trademark registrations (Found in printouts from USPTO

database attached as Exhibit 5 of the Complaint). They are the following:

Registration

No. 525,717 for the mark XEROX (stylised), filed September

20, 1948, issued May 30, 1950, covering "copies of typewritten

or printed matter, drawings, maps, or any other records, sold

as such, made by an electrophotographic process."

Registration

No. 576,118 for the mark XEROX (stylised), filed October 7,

issued June 16, 1953, covering "developers consisting of

a mixture of electroscopic powder and granular material used for

producing powder images in making electrophotographic copies,

and toners comprising electroscopic powder used in connection

with granular material to produce developer powders used for making

electrophotographic copies."

Registration

No. 580,296 for the mark XEROX (stylised), filed October 7,

1952, issued September 22, 1953, covering "film removers

comprising liquid solvents capable of dissolving or emulsifying

the films of foreign material which accumulate on electrophotographic

plates during use."

Registration

No. 916,047 for the mark XEROX, filed June 23, 1970,

issued July 6, 1971, covering "administration of seminars,

courses and programs for the learning, development and improvement

of occupational, professional and personal skills, including effective

listening, reading, memory, note-taking, discussion, communications,

selling and management skills."

Registration

No. 957,267 for the mark XEROX, filed December 14, 1971,

issued April 17, 1973, covering "digital computers and associated

peripheral devices."

Registration

No. 1,000,990 for the mark XEROX, filed November 23,

1973, issued January 7, 1975, covering "electrophotographic

copying machines."

Registration

No. 1,008,036 for the mark XEROX, filed April 22, 1974,

issued April 1, 1975, covering "maintenance and repair of

electrophotographic copying and duplicating equipment" in

Class 37, and "leasing of electrophotographic copying and

duplicating equipment" in Class 42.

Registration

No. 1,010,557 for the mark XEROX, filed June 7, 1974,

issued May 13, 1975, covering "document reproduction and

finishing services-namely, electrophotographic copying and duplicating;

microfilming; providing paper copies from roll film and microfiche;

sorting, folding, collating, binding, covering, stapling, punching,

cutting, and trimming of copies, documents and printed matter."

Registration

No. 1,661,698 for the mark XEROX, filed October 10, 1990,

issued October 22, 1991, covering "photocopy and bond paper."

Registration

No. 1,662,340 for the mark XEROX, filed December 6, 1990,

issued October 29, 1991, covering "facsimile transmitting

and receiving machine."

Registration

No. 1,893,108 for the mark XEROX & Design, filed May 2,

1994, issued May 9, 1995, covering "copying, recycled, and

coloured paper."

Registration

No. 2,070,371 for the mark XEROX QUALITY SERVICES, filed March

17, 1995, issued June 10, 1997, covering "business management

consulting in work processes, productivity and problem solving"

in Class 35, and "educational and training services, namely

providing classes and workshops in the field of work processes,

productivity and problem solving" in Class 41.

Registration

No. 2,075,858 for the mark XEROX, filed September 26,

1996, issued July 1, 1997, covering "clothing, namely, jackets,

sweaters, shirts, vests, pants, shorts, hats, scarves, ties, gloves,

socks and shoes."

Registration

No. 2,091,852 for the mark THE XEROX COMPANY STORE, filed

July 3, 1995, issued August 26, 1997, covering "retail stores

featuring chemical supplies, computer supplies, and office supplies."

Registration

No. 2,175,549 for the mark INCONCERT, INC. A XEROX NEW ENTERPRISE

COMPANY & Design, filed September 26, 1996, issued July 21,

1998, covering "computer software, namely, for workflow and

document management."

Registration

No. 2,193,171 for the mark XEROX SCAN MANAGER, filed February

12, 1997, issued October 6, 1998, covering "computer software

used for high resolution document creation, scanning and printing

in the field of document management."

Registration

No. 2,232,757 for the mark XEROX PROFESSIONAL DOCUMENT SERVICES,

filed February 12, 1997, issued March 16, 1999, covering

"business management consultation."

Registration

No. 2,244,261 for the mark XEROX PRODUCTIVITY CENTRE, filed

July 22, 1997, issued May 11, 1999, covering "multifunctional

device, namely, photocopier, laser printer and optical scanner."

◆ The

Complainant also alleges that it owns the domain name <xerox.com>

and that the <xerox.com> domain name was registered on January

9, 1986, long before Respondent registered the Domain Name.

◆ The

Complainant alleges that its trademark rights in the mark XEROX

and variations thereof, based on its trademark filings and on its

common law rights acquired through the use of the XEROX mark, trade

name, and domain name, predate the registration of the Domain Name

by Respondent.

◆ The

Complainant alleges that the XEROX mark is unique and not diluted.

The Complainant argues that as a coined trademark, the XEROX mark

is inherently strong. Coined marks, such as XEROX or KODAK, are

considered the strongest marks and are accorded the highest degree

of trademark protection.

◆ The

Complainant alleges that by virtue of (i) the arbitrary nature and

hence the inherent strength of the XEROX mark as applied to Xerox’s

vast array of document-related goods and services, (ii) the millions

of consumers world wide that purchase Xerox’s goods and services

and (iii) Xerox’s extensive use, promotion, and registration of

its XEROX mark, the XEROX mark has become famous.

◆ The

Complainant alleges that the XEROX trademark is one of the most

famous trademarks in the world. To support this contention, the

Complainant states that in July 2000, one of the world’s leading

brand marketing and consulting firms – Interbrand – published its

annual report which ranks the world’s most valuable brands. The

XEROX brand is ranked 27th, valued at nearly $9.7 billion. (Found

in the Interbrand materials attached as Exhibit 4 of the Complaint)

◆ The

Complainant alleges that, having been used by the Complainant in

connection with its business for more than 50 years, and having

been widely promoted and advertised among members of the general

consuming public, the XEROX mark has become valuable property of

the Complainant. Furthermore, the Complainant alleges that the XEROX

Marks enjoy unquestionable fame as a result of favourable public

acceptance and recognition world-wide.

ii) Contentions

of the Complainant with respect to the Identity or Confusing Similarity

between the Domain Name and its Trademarks

◆ The

Complainant alleges that the Domain Name is a confusingly similar

variation of the famous XEROX mark, trade name, and <xerox.com>

domain name.

◆ The

Complainant alleges that, as a result of Respondent’s registration

and use of the Domain Name, Internet users attempting to reach the

<xerox.com> website may mis-type the domain name and mistakenly

believe that they arrived at Xerox’s own website, or may be misled

into believing that Xerox sponsors or endorses Respondent’s website.

The Complainant further alleges that Respondent maliciously preys

upon Internet users who do not view the address line of their browser

to realise that they had made a typographical error before being

taken to Respondent’s website.

◆ The

Complainant alleges that the Domain Name incorporates an obvious

typographical and phonetically identical misspelling of Complainant’s

unquestionably famous XEROX mark and <xerox.com> domain name,

and is confusingly similar to the XEROX mark.

To support these

contentions, the Complainant refers to the following decisions:

Aveda Corp. v. Evita Marketing,

Inc., 706 F. Supp. 1419 (D. Minn. 1989), (finding AVITA to be confusingly similar

to AVEDA);

Dr. Ing. h.c.f. Porsche

AG v. Zim, 481 F. Supp. 1247 (N.D. Tex. 1980), (finding PORSHA to be confusingly

similar to PORSCHE);

Krim-Ko Corp. v. Coca-Cola

Bottling Co., 390 F.2d 728, (C.C.P.A. 1968), (finding BEEP to be confusingly

similar to VEEP);

Kabushiki Kaisha Hattori

Tokeiten v. Scuotto, 228 U.S.P.Q. 461 (T.T.A.B. 1985), (finding SEYCOS to be

confusingly similar to SEIKO);

Caterpillar Tractor Co.

v. Katrak Vehicle Co., 172 U.S.P.Q. 409 (T.T.A.B. 1971), (finding KATRAK to

be confusingly similar to CAT TRAC);

Cluett, Peabody &

Co. v. Wright, 46 F.2d 711 (C.C.P.A. 1931), (finding AIR-O to be confusingly

similar to ARROW).

iii) Contentions of the

Complainant with respect to the Absence of Rights or Legitimate Interests of

the Respondent

◆ The

Complainant alleges that pursuant to Section 4(c) of the UDRP: (i)

Respondent is not using and has not used or is not demonstrating

and has not demonstrated an intent to use the Domain Name in connection

with a bona fide offering of goods or services; (ii) Respondent

is not and has not been commonly known by the Domain Name; and (iii)

Respondent is not making legitimate non-commercial or fair use of

the Domain Name, without intending to mislead and divert consumers

or to tarnish Complainant’s XEROX mark for commercial gain.

◆ The

Complainant alleges that in at least six other cases decided under

the UDRP, Respondent Stonybrook (sometimes spelled "Stoneybrook"),

and the related entity Data Art Corp., have been found to be cybersquatters

engaged in a systematic pattern of registering domain names in bad

faith, as Respondent has done here. To support this contention,

the Complainant cites the following decisions:

Yahoo! Inc. and GeoCities

v. Data Art Corp. et al., WIPO Case No. D2000-0587 (finding that Data Art Corp.

and Stonybrook Investments were related entities);

Microsoft Corporation

v. Stoneybrook, WIPO Case No. D2000-1274 (finding use of disputed domain name

in connection with a gambling website constituted bad faith);

National Geographic Society

v. Stonybrook Investments, Ltd., NAF Case No. FA0012000096263 (finding that

Stonybrook’s taking possession of the disputed domain name from Data Art Corp.

after the original registrant received a cease and desist letter from complainant

constituted bad faith);

Wells Fargo & Co.

v. Stoneybrook, NAF Case No. FA0009000095690;

British Broadcasting Corporation

v. Data Art Corp./Stoneybrook, WIPO Case No. D2000-0683;

AltaVista Company v. Stonybrook,

WIPO Case No. D2000-0886.

◆ The

Complainant alleges that in addition to the misappropriation of

the famous XEROX mark, Respondent has registered variations of the

following famous trademarks and trade names as domain names: DELTA;

AMERICAN AIRLINES; BUDWEISER; SOUTHWEST AIRLINES; UNITED AIRLINES;

LOOKSMART; LONELY PLANET; TRAVELOCITY; FIDELITY; NETSCAPE; NORTHWEST

AIRLINES; NISSAN; REAL PLAYER; NORTON; MCAFEE; SUBARU; LEXUS; CBS

MARKETWATCH; FIAT; RAGINGBULL; SPORTS ILLUSTRATED; SATURN; AMERICA

WEST; ST. LOUIS RAMS; MERRYLL LYNCH; HOTMAIL; LYCOS; SPRINT PCS;

OFFICE MAX; NEW YORK TIMES; HOTBOT; and EXCITE.

To support this

contention, the Complainant attached NSI WHOIS printouts listing domain

names registered to "Stonybrook Investments" and "Stoneybrook

Investments" as Exhibit 8. The Complainant adds that these WHOIS

printouts are each limited to 50 records, so it is possible that the

Respondent owns more domain names than those listed in Exhibit 8 of

the Complaint.

◆ The

Complainant alleges that the Respondent is mentioned in a September

18, 2000, MSNBC article entitled "Making Money off Typosquatting".

The article explains that Respondent is one of several related companies

(in a group which includes Data Art Corp.) that has registered hundreds

of domain names that are slight variations of well-known trademarks,

and uses the domain names to generate revenue from online advertising

companies. To support this contention, the Complainant attached

a copy of the MSNBC article as Exhibit 9 of the Complaint.

◆ The

Complainant alleges that U.S. courts have held that "typosquatting",

such as Respondent’s registration and use of the Domain Name <zerox.com>,

violates the Anticybersquatting Consumer Protection Act ("ACPA").

To support this

contention, the Complainant cites the following decisions:

Shields v. Zuccarini,

54 U.S.P.Q.2d 1166 (E.D. Pa. 2000) (finding that defendant’s registration and

use of typographical variations of plaintiff’s mark as domain names for purposes

of diverting Internet traffic and reaping profit violated the ACPA);

Electronics Boutique Holdings

Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705 (E.D. Pa. 2000) (same).

iv) Contentions

of the Complainant with respect to the Registration and Use of the

Domain Name in Bad Faith

◆ The

Complainant alleges that Respondent’s registration and use of the

Domain Name meet the bad faith element set forth in Section 4(b)(iv)

of the UDRP. Specifically, Respondent uses the Domain Name to intentionally

attract, for commercial gain, Internet users to its website by creating

a likelihood of confusion with Xerox's XEROX mark as to the source,

sponsorship, affiliation and endorsement of Respondent’s website

and of the services offered at the site.

To support its

contention, the Complainant cites the following decisions:

The Channel Tunnel Group

Ltd. v. Powell, WIPO Case No. D2000-0038, (bad faith found where respondent

registered domain name with knowledge of complainant's mark and used website

to seek commercial gain);

Yahoo! Inc. v. David Ashby,

WIPO Case No. D2000-0241 (same).

◆ The Complainant

alleges that the Respondent’s registration and use of the Domain Name meet the

bad faith element set forth in Section 4(b)(ii) of the UDRP. Specifically, Respondent

has engaged in a pattern of registering dozens of domain names that incorporate

well-known trademarks owned by third parties.

◆ The Complainant

alleges that Respondent’s registration and use of the Domain Name in connection

with a website offering online gambling tarnishes and thereby dilutes the distinctiveness

of Complainant’s famous XEROX mark. To support this contention, the Complainant

cites the following decisions:

Dow Jones & Company,

Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 (finding

respondent’s use of disputed domain names in connection with online gambling

tarnished complainant’s famous trademarks in contravention of Paragraph 4(c)(iii)

of the UDRP);

TicketMaster Online-CitySearch,

Inc. v. Alex Vlasov, NAF

Case No.: FA0005000094739 (same).

◆ The

Complainant alleges that given the uniqueness and fame of the XEROX

mark, there is no plausible explanation for Respondent’s registration

of the disputed Domain Name other than to trade on the goodwill

of Xerox and its famous and well-respected XEROX mark and name.

To support

this contention, the Complainant cites the following decisions:

Telstra Corp. Ltd. v. Nuclear

Marshmallows, WIPO Case No. D2000-0003 (holding that registration of coined,

well-known TELSTRA mark could not have been for any plausible reason other than

to trade on the goodwill of trademark owner);

Cellular One Group v. Paul

Brien, WIPO Case

No. D2000-0028 (inferring respondent’s bad faith intent to sell <cellularonechina.com>

domain name where name would not otherwise be commercially useful without violating

complainant’s rights in the "unique and inherently distinctive coined word"

CELLULARONE).

B. Respondent

The Respondent has

failed to file a timely response with the Center.

6. Discussion and

Findings

Pursuant to the ICANN

Policy, the Complainant must convince the Panel of three elements if it

wishes to have the domain name transferred. It is incumbent on the Complainant

to show:

i) that the

Domain Name is identical or confusingly similar to a trademark in

which it holds rights; and

ii) that the

Respondent has no rights or legitimate interests in the Domain Name;

and

iii) that

the Domain Name was registered and used in bad faith.

These three elements

are considered below.

Identity or Confusing

Similarity between the Domain Name and Complainant's trademark

The Panel has reviewed

the documentary evidence provided by the Complainant regarding its rights

in the trademark XEROX and finds that the Complainant has satisfactorily

shown that it owns such rights.

With respect to the

confusing similarity between Complainant's trademark and Respondent's Domain

Name, previous decisions extensively discussed the subcategory of cybersquatters

who are sometimes called "typosquatters". One of these decisions is The

Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571,

where the appointed panel held: "In determining whether a domain name is

confusingly similar to a trademark, the intention of the domain name registrant

is irrelevant. It is the objective likelihood of confusion that must be

assessed. The panel finds that the disputed domain name are likely to attract

customers of the broker seeking to access the broker’s website who misspell

or err in typing the domain address they seek. The close misspellings at

issue here are confusingly similar to the Complainant’s mark."

In this case, the second-level

part of the Domain Name, "zerox", is almost phonetically and visually identical

to the Complainant's trademark XEROX. Thus an average internet user who

has an imperfect knowledge or recollection of the name, XEROX, might accidentally

spell it with the letter Z instead of X at the beginning of the word, merely

because of the way the Complainant's trademark is pronounced. The Panel

is of the opinion that this fact alone is sufficient to conclude that the

Domain Name is confusingly similar to Complainant's XEROX trademark.

Notwithstanding the

previous paragraph, the Panel also notes that the letters "X" and "Z" are

situated side by side on a QWERTY computer keyboard, which, in the opinion

of the Panel, constitutes an additional element that increases the confusing

similarity between the Domain Name and the trademark, bearing in mind that

the Complainant uses its trademark in association with its web site.

Therefore, the Panel

finds that the Domain Name is similar to a trademark in which the Complainant

has rights.

Rights or Legitimate Interests

in the Domain Name by Respondent

Paragraph 4(c) provides

examples of circumstances that can demonstrate the existence of rights

or legitimate interests in a domain name: (i) use of, or preparations

to use, the Domain Name in connection with a bona fide offering

of goods or services; (ii) the fact that Respondents have commonly been

known by the Domain Name; and (iii) legitimate non-commercial or

fair use of the Domain Name.

In the present dispute,

the Complainant has introduced unchallenged evidence that it owns rights

in the trademark XEROX (see Exhibit 5) and that the domain name are used

to redirect consumers to an on-line casino (see Annex 6 and 7 to the Complaint).

In this case, there

is no evidence that would allow the Panel to conclude that some circumstances

enumerated at paragraph 4(c) of the ICANN Policy apply to Respondent's situation,

as the Complainant rightly asserts.

By demonstrating its

rights in its trademarks, by asserting that Respondent is not licensed by

the Complainant to use those marks and by stating that Respondent's web

site has no affiliation with the Complainant, and taking into account Respondent's

failure to respond to the Complaint, the Complainant has established prima

facie that the Respondent has no rights or legitimate interests in the Domain

Name.

While no direct conclusion

can be drawn from a failure by Respondents to provide explanation, in some

circumstances, a negative inference can be drawn from the lack of justification

by the Respondents, especially when direct evidence, such as the correspondence

submitted by Complainants, points in the direction of an absence of rights

or legitimate interest, in particular in regard of paragraphs 4(c)(i), (ii)

and (iii) of the Policy. In the present case, the Panel so finds.

In this case, as was the

case in LLS International v. Mark Freeman, WIPO Case No. D2000-1080 and Altavista

Company v. Grandtotal Finances Ltd., WIPO Case No. D2000-0848, the Panel finds

it appropriate in this regard to draw an adverse inference from the Respondent’s

failure to reply to the Complaint and detail any legitimate rights or interests

it might have had in the Domain Name of the type defined in paragraph 4(c) of

the ICANN Policy.

For those reasons,

and in absence of any evidence to the contrary from the Respondent, the

Panel concludes that, on balance of probabilities, the Respondent has no

rights or legitimate interests in the Domain Name.

Bad faith in Registration

and Use of the Domain Name by the Respondent

Pursuant to paragraph

4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to

prove that the Respondent has registered and is using the

Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy

provides a number of circumstances which, if found to be present, are evidence

of the registration and use of a domain name in bad faith.

As to Registration

in Bad Faith

Paragraph 2 of the

ICANN Policy provides that, when someone registers a domain name, he represents

and warrants to the registrar, notably, that, to his knowledge, the registration

of the domain name will not infringe upon or otherwise violate the rights

of any third party. The same paragraph also provides that it is incumbent

on the person who registers the domain name to determine whether the domain

name registration infringes or violates someone else's rights.

In the present case,

the Panel finds that, since Complainant's trademark is well-known throughout

the world, it is very unlikely, if not nearly impossible, that, when Respondent

registered the Domain Name, it wasn't aware that it was infringing on Complainant's

trademark rights, specially given that the Complainant is a coined word.

In addition, the Panel

is of the opinion that the way in which the domain name is chosen, i.e.

common spelling errors in well-known domain name and corresponding trademarks,

clearly shows, as the Complainant argues, that the sole possible purpose

for which Respondent has registered or acquired the Domain Name is to intentionally

attempt to attract, for commercial gain, Internet users to its web site.

This finding is supported

by the allegation made by the Complainant purporting to establish that the

domain name is leading to an online casino, a fact that the Panel has been

able to corroborate on its own, and by the evidence showing that numerous

other domain names confusingly similar to trademarks of others were also

registered by the Respondent for the same purpose. (See Exhibit 8.)

The Panel therefore

concludes that the Respondent has registered the Domain Name in bad faith.

As to Use in Bad Faith

With respect to bad

faith in the use of the Domain Name, the Complainant cited six domain name

administrative panel decisions in which Respondent was found to be involved.

In Yahoo! Inc. and

GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook

Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search,

Inc. (WIPO Case No. D2000-0587), the Respondent in the present dispute

had registered the domain names <ayhoo.com>, <chatyahoo.com>,

<eeeyahoo.com>, <eocities.com>, <foreleven.com>, <gecities.com>,

<geocitie.com>, <citiesyahoo.com>, <geocitis.com>, <geocties.com>,

<geosities.com>, <gocities.com>, <goecities.com>, <iahoo.com>,

<myahoo.com>, <myyahoo.com>, <our11.com>, <wwwchatyahoo.com>,

<wwwfour11.com>, <wwwgeocities.com>, <wwwmyyahoo.com>,

<yafoo.com>, <yahll.com>, <yahooguide.com>, <yahoonews.com>,

<yahoosearch.com>, <ahomail.com>, <yahos.com>, <yahow.com>,

<yahu.com>, <yahuu.com>, <yahwho.com>, <yahwoo.com>,

<yanoo.com>, <yauoo.com> and <yyahoo.com>.

In its decision, the

appointed panel wrote: "Respondent is obviously engaging in "typosquatting,"

a practice that has been condemned and been found to be confusingly similar

to the marks which they mimic. See, e.g., American Media Operations,

Inc. v. Erik Simons, ICANN Case No. AF-0134; AOL v. Asian On-Line

This Domain For Sale, ICANN Case No. FA 00040000094636; Yahoo! Inc.

v. Zviely, et al, ICANN Case No. D2000-0273. (...) Respondent is trading

on the value established by Complainant in its marks to attract users who

misspell or mistype Complainant's mark when entering the URL, which includes

Complainant's, domain name. Clearly, Respondent is deriving economic benefit

from this practice, either by attracting users to Respondent's web site,

where goods and services are offered, or by the receipt of compensation

from the owners of other web sites for delivering users to those sites.

This constitutes bad faith registration and use as defined by paragraph

4(b)(iv) of the Policy." The appointed panel then ordered that the disputed

domain names be transferred to the Complainants.

In AltaVista Company

v. Stoneybrook aka Stonybrook Investments, (WIPO Case No. D2000-0886),

the Respondent in the present dispute had registered the domain names <alfavista.com>,

<algavista.com>, <altavisfa.com>, <altavisha.com>, <altavitsa.com>,

<altavsta.com>, <altawista.com>, <atavista.com>, <atlavista.com>,

<atlavisa.com> and <wwwalavista.com>.

In its decision, the

appointed panel wrote: "Respondent has registered a number of domain name

that Internet users are likely to employ inadvertently as they misspell

Complainant’s mark and domain name when attempting to address Complainant’s

website. Respondent’s choice of multiple misspelled versions of Complainant’s

mark and domain name was deliberate. This is evidenced by the well-known

nature of Complainant’s mark and Respondent’s similar multiple-misspelled

registrations of other well-known marks and domain name. Respondent has

intentionally sought to use Complainant’s mark to confuse consumers as to

sponsorship of, or location of a service on, a website or websites that

Respondent operates for commercial gain. This constitutes bad faith within

the meaning of paragraph 4(b)(iv) of the Policy." The appointed panel ordered

that the disputed domain names be transferred to the Complainant.

Considering the striking

similarities between previous cases involving the Respondent and the present

dispute, the Panel finds that those cases constitute "logically probative"

evidence of Respondent's bad faith, within the meaning that was given to

that notion by Lord Denning in Mood Music Publishing Co. v. De

Wolfe Ltd., (1976), 1 All E.R. 763 (C.A.). (The plaintiffs, in an action

for infringement of copyright, sought to adduce evidence that in three other

cases, the defendants had reproduced musical works, which were subject to

copyright.) In that decision, Lord Denning stated the test of admissibility

of the similar fact evidence in civil cases as follows: "In civil cases

the courts will admit evidence of similar facts if it is logically probative,

that is, if it is logically relevant in determining the matter which is

in issue; provided that it is not oppressive or unfair to the other side;

and also that the other side has fair notice of it and is able to deal with

it."

The Panel finds that

the circumstances surrounding the current dispute are strikingly similar

to the circumstances prevailing in the previous domain name disputes cited

by the Complainant in which the Respondent was involved. Those circumstances

indicate not only that the Respondent attempts to piggyback on the goodwill

vested in Complainant's trademarks in this case, but also that it has engaged

in a pattern of such behavior on a fairly large scale.

Furthermore, the Panel

is of the opinion that the Domain Names are so obviously connected with the

Complainant and its services that their very use by someone with no connection

with the Complainant suggests "opportunistic bad faith" (see Parfums

Christian Dior v. Javier Garcia Quintas and Christiandior.net WIPO Case No.

D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The

Polygenix Group Co., WIPO Case No. D2000-0163).

The Panel finds that

this behavior, in accordance with paragraph 4(b) of the ICANN Policy, constitutes

evidence of bad faith in the registration and use of the Domain Name.

7. Decision

For the foregoing reasons,

the Panel finds that:

- the Domain

Name registered by the Respondent is confusingly similar to trademarks

in which the Complainant has rights; and

- the Respondent

has no rights or legitimate interests in respect of the Domain Name;

and

- the Domain

Name has been registered and is being used by the Respondent in bad

faith.

Pursuant to Paragraphs

4(i) of the Policy and 15 of the Rules, the Panel therefore orders that

the Domain Name:

<zerox.com> be

transferred to the Complainant.

Jacques

A. Léger

Sole Panelist

Dated: May

22, 2001

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