Twitter wins domain Twitter.org in UDRP in shady circumstances

Twitter, Inc. won the domain name Twitter.org at the WIPO Arbitration and Mediation Center.

The owner was accueil des solutions inc of Vancouver, Canada, did not reply to the Complainant’s contentions.

The Center appointed Richard Tan as the sole panelist in this matter on March 18, 2013.

The decision transferring the domain name to Twitter was published on April 1, 2013 but the domain name has already been transferred to Twitter despite the UDRP policy requiring a 10 business day period before transferring a domain name to a Complainant:
If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision.

The domain Twitter.org was already in Twitter’s possession on the 8th of April and is even in a PENDING TRANSFER status meaning that before the 10 business day period ends not only the domain name was transferred to the Complainant but the domain will be gone from the current registrar.

Being Twitter gets you to bend UDRP rules? I guess there is a reason that ICANN is trying to fix this issue by creating new rules about the domain name lock during UDRP proceedings.

To make matters worse the domain name twitter.org is said to be registered in June 2011 when in fact the domain name was registered in October 2005. That is before Twitter was founded in 2006. The registration date was not contested as the Respondent did not file a response. It might be that the current owner bought the domain in 2011 but that is not explained anywhere in the decision and is not included in Complainants contentions that simply states: “The disputed domain name was registered in June 2011 well after the Complainant started its business and used its trademark. At the time of the disputed domain name registration, the Complainant’s website had more than 27 million visitors a month and was one of the most visited websites in the world.”

Again being Twitter gets you to state anything you want without explaining it and the Panelist will accept that at face value?

Details of the decision:

The Complainant was founded in 2006 and offers a social networking and micro blogging service, enabling its users to send and read other users’ messages called “tweets”. Users can “tweet” through the Complainant’s <twitter.com> website, compatible external applications on smart phones including Twitpic, Tweetie, Twitterrific, Uber Twitter or through SMS (Short Message Service). “Tweets” are text based posts of up to 140 characters displayed on the user’s profile. Users may subscribe to other users.

The Complainant is the owner of the trademark TWITTER at the United States Patent and Trademark Office, with the registration number 3619911 since May 12, 2009 with its first use in commerce on August 31, 2006, among all other trademarks used in connection with the TWITTER brand in relation to telecommunication and other goods and online services. The Complainant is also the owner of the Community Trademark of the mark TWITTER”, at the Office for Harmonization in the Internal Market, “OHIM”, with the registration number 006392997 since January 7, 2009, under the Nice Classifications 38, 42 and 45.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the TWITTER mark. The mark has been registered in many countries and the evidence adduced by the Complainant clearly and amply demonstrates that the Complainant’s mark is well-known throughout the world and that the Complainant has acquired rights in the TWITTER mark.

The Panel further accepts that the disputed domain name is confusingly similar to the Complainant’s mark.

The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain names, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is satisfied. The disputed domain name reproduces the TWITTER mark in its entirety.

The addition of a generic top-level domain (gTLD) “.org” is insufficient to avoid a finding of confusing similarity as that is a requirement of registration.

In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainant contends that the Respondent registered the disputed domain name well after the Complainant established its rights in the well-known TWITTER mark. The widespread use of the well-known services provided by the Complainant, with over 500 million users worldwide, and at the time of the registration of the disputed domain name, with more than 27 million visitors a month to the Complainant’s website making it one of the most visited websites in the world, makes it difficult if not impossible to believe that the Respondent was unaware of the Complainant’s mark at the time of the registration of the disputed domain name.

The Panel also finds that there is no evidence that the Respondent has been known by the disputed domain name. There is no evidence that the Respondent has been granted any license or other rights to use the Complainant’s marks for any purposes or evidence that the Complainant is associated or affiliated with the Respondent. Indeed, all the evidence points the other way.

The Complainant further contends that the website associated with the disputed domain name is just a malware website. It creates great confusion among the users of the Complainant’s services and those who visit the Respondent’s website thinking it belongs to the Complainant and puts them at risk.

This Panel accepts the Complainant’s contention that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. It further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith.

The disputed domain name was registered well after the Complainant’s mark was in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain name.

The Panel finds that the incorporation of the mark in question in its entirety as part of the disputed domain name is an indication of bad faith under the circumstances.

The Panel further notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product may suggest opportunistic bad faith: See for example Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmid v. PrivacyProtect.org, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.

The Panel also infers that that the Respondent’s registration and use of the disputed domain name was intended to disrupt the Complainant’s business, in particular by damaging the Complainant’s reputation, as a result of members of the public visiting the Respondent’s website thinking that it was related to the Complainant or its business, but running the risk of being infected by malware instead as asserted by the Complainant without rebuttal from the Respondent. The distribution of malware through a deceptive domain name is in this Panel’s view to be regarded as deceptive and malicious conduct sufficient to show that a domain name has been registered and is being used in bad faith: Spoke Media Hodlings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303; 24/7 Real Media Inc. v. Thomas Schultz, WIPO Case No. D2009-0043; DivX, LLC v. Domain Admin / CSRUS Enterprises, WIPO Case No. D2011-0600.

Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <twitter.org> be transferred to the Complainant.