Salomon Smith Barney, Inc. v. Amjad Kauser

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Salomon Smith Barney, Inc. v. Amjad Kauser

Case No. D2003-0034

1. The Parties

The Complainant is Salomon Smith Barney, Inc., New York, United States of America, represented by Salomon Smith Barney Inc. of United States of America.

The Respondent is Amjad Kauser, Karachi, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <solomonsmithbarney.com> is registered with eNom Inc, 16771 NE 80th Street, Suite # 100, Redmond, Washington 98052, United United States States of of America ("eNom").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on January 17, 2003. The Center transmitted the same day a request for registrar verification in connection with the domain name at issue by email to eNom. On January 17, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2003.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter, and sent a Notification of Appointment of Administrative Panel to the Parties on February 21, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

After considering the Complainant’s assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by Respondent because of its default, the Administrative Panel finds the following:

"Salomon Smith Barney" is a registered service mark of Salomon Smith Barney Inc. This service mark is used as a house mark for a full range of financial and investment services, and is currently registered in sixty-five (65) countries, including Argentina, Australia, Japan, Thailand and the United Kingdom. It also has pending applications in twenty-two (22) other countries.

The Complainant uses the domain name <salomonsmithbarney.com> in connection with online financial services.

The Respondent has registered the domain name <solomonsmithbarney.com>.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

The domain name at issue is nearly identical and clearly confusingly similar to the mark Salomon Smith Barney, in which the Complainant has rights, as the only difference is the replacement of the first letter "a" with an "o" which gives the impression to be a misspelling of the Complainant's mark.

This misspelling is quite common and, in view of the close similarity of "Solomon" to the Complainant’s mark "Salomon," the domain name will not be pronounced differently.

The domain name is a typographical variation of the Complainant's mark and domain name, which is likely to be erroneously typed by Internet users who intend to visit the Complainant’s website under its domain name <salomonsmithbarney.com> and are mistyping it.

Respondent’s domain name <solomonsmithbarney.com> directs such users to a gambling site. Such use is likely to mislead Internet users and, more importantly, Complainant’s customers (prospective and actual), into believing that the Respondent, and its gambling business, is somehow associated with the Complainant (i.e., affiliated, sponsored or otherwise endorsed). Such misspelling or typographical variation of a mark confusingly similar to the Complainant's mark has repeatedly been held in decisions under the Policy.

The Complainant alleges that Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent’s use of the domain name, which is so similar that it gives the impression to be a misspelling the Complainant’s mark. Respondent does not make any use of the domain name for its own legitimate commercial or non-commercial activities, if any.

Even if the Respondent does not use its domain name to promote commercial activities of its own, it is clear that such use cannot be considered to be non-commercial. It would make no sense for the Respondent to provide links to gambling sites if it where not to attract a fee, the more as such arrangements are common and have been addressed by the Panel many times.

Respondent uses the contested domain name in a manner which must be considered to be use in bad faith and that is at the same time a strong indication that the Respondent has registered its domain name in bad faith, as the Respondent cannot reasonably argue that it was unfamiliar with Complainant’s service mark.

Such conclusion cannot only be drawn from the actual use that the Respondent is making of its domain name, but also from the fact that it chose an apparent misspelling of the Complainant’s mark and domain name <salomonsmithbarney.com> (indeed, the very existence of the Complainant’s domain name most likely prevented the Respondent from registering <salomonsmithbarney.com>). This alone is already an indication of registration in bad faith.

By linking the domain name at issue to a pop-up dialog box in order to direct visitors, who are mistyping the Complainant's domain name, the Respondent intentionally attempts to attract Internet users to an on-line location, which creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that location. It is thus clear that Respondent is pursuing an activity, sometimes called "typosquatting."

The Complainant further alleges that Respondent’s use of the domain name should be considered having been used in bad faith also because: "(i) the Complainant’s service mark has a strong reputation and is widely known, as evidenced by its substantial use in the United States and in other countries, (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, (iii) the Respondent has taken active steps to conceal its true identity, by failing to provide a telephone number at which Respondent can be reached, in breach of its registration agreement, and (iv) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

The Complainant holds that it is obvious that the Complainant’s registration and use of the domain name is precisely the type of conduct the Policy, and the Panel’s decisions interpreting the same, seek to prevent.

The Complainant requests the Administrative Panel issue a decision that the

domain name at issue must be transferred to the Complainant.

B. Respondent

The Respondent has not submitted a Response, and is thus in default. Nor has

Respondent made any submissions whatsoever after the Notification of Respondent

Default.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy

in order to succeed. The Complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark or

service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of such

domain name; and

(iii) the domain name has been registered in bad faith and is being used in

bad faith.

A. Identical or Confusingly Similar

As the domain name at issue is not identical to the service mark of Complainant,

the question is whether there is a confusing similarity between the two.

In accordance with established precedent under the UDRP, the Panel considers

that the suffix ".com" does not influence on the consideration of

similarity.

The contested domain name is thus almost phonetically and visually identical

to the service mark of the Complainant, as the only difference between the two

consists of the replacement of the first vowel "a" with an "o."

Examples that such domain names near identical to a Complainant’s trade mark

or service mark have been found confusingly similar under previous Panel decisions

are WIPO Case No. D2000-0776 regarding

the domain name <veuvecliquot.com>, WIPO

Case No. D2000-1449 regarding the domain name <dillbert.com>, WIPO

Case No. D2000-1698 regarding the domain name <guiness.com> and WIPO

Case No. D2001-0380 regarding the domain name <zerox.com>.

On the basis of these considerations, the Panel finds that the domain name

at issue is confusingly similar to the Complainant’s service mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides examples of circumstances that may demonstrate

rights or legitimate interests in a domain name. These are: (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 Respondent have commonly been known by the domain

name; and (iii) legitimate non-commercial or fair use of the domain name.

Under the present case, the Complainant has asserted that Respondent is not

licensed in any way by the Complainant to use his marks, and furthermore that

Respondent's web site has no affiliation with the Complainant. As a result of

Respondent’s default, none of these assertions have been contested by Respondent.

As a result, the Complainant has established prima facie that the Respondent

has no rights or legitimate interests in the domain name, as there is no evidence

allowing the Panel to conclude that any circumstances listed at paragraph 4(c)

of the ICANN Policy apply to Respondent’s situation.

The Panel may not draw any direct conclusions from the fact that Respondent

has failed to contradict the Complainant’s assertions by detailing any legitimate

rights of interests it might have had. As shown in previous cases under the

UDRP such as WIPO Case No. D2000-1080

and WIPO Case No. D2000-0848, under certain

circumstances a negative inference may however be drawn from Respondent’s lack

of justification.

Complainant’s service mark "Salomon Smith Barney" is in the opinion

of the Panel very distinctive, and is also very well known. Complainant has

provided evidence that Respondent has directed the domain name at issue to a

gambling site (see Annex D to the Complaint). The Panel finds it unlikely that

Respondent would have any rights or legitimate interests in the use of a domain

name that is confusingly similar to such a distinctive service mark in connection

to such a gambling site.

For the above reasons, the Panel concludes that, on balance of probabilities,

the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Panel has considered Complainant’s assertions and evidence with regard

to the Respondent’s registration and use of the domain name in bad faith. By

not submitting a response, Respondent has failed to invoke any circumstances

that could demonstrate that it did not register and use the domain name at issue

in bad faith.

Complainant has put forward evidence that his service mark is registered in

the United United States of America (see Annex C to the Complaint), and

holds that the mark is registered in a total of sixty five countries, and that

there are pending applications in another twenty-two countries. The Panel finds

that Complainant’s service mark has become well known through its use worldwide.

Given the distinctive and complex character of Complainant’s service mark,

and its strong reputation, the Panel finds that said service mark in all probability

have been known to Respondent when registering the domain name at issue.

The Panel agrees with Complainant that the phonetic and visual similarities

between Complainant’s service mark (and domain name) and the contested domain

name may very well cause Internet users to confuse the two.

Hence, the Panel finds that Respondent’s registration and use of the domain

name at issue appears to be an intentional attempt to attract, for commercial

gain, Internet users to its web site <solomonsmithbarney.com>, by creating

a likelihood of confusion with Complainant’s mark as to the source, sponsorship,

affiliation or endorsement of this web site.

These are circumstances which constitutes evidence of registration and use

of a domain name in bad faith pursuant to Paragraph 4(b) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name <solomonsmithbarney.com>

be transferred to the Complainant.

Peter G. Nitter

Sole Panelist

Dated: March 12, 2003