Decision for dispute CAC-UDRP-108734

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of number of registered trademarks for the CASETIFY trademark, including the following:

• International trademark registration No. 1409914 for CASETIFY, registered on April 4, 2018; and 
• United States trademark registration No. 4707090 for CASETIFY, registered on March 24, 2015.

The Complainant also owns domain names that include its trademark CASETIFY, such as the domain name <casetify.com>, registered on November 22, 2013.

The Complainant is a Hong Kong-based company founded in 2011 that designs and sells technology accessories, including phone cases and watch bands. The Complainant has offices in Los Angeles, Seoul, and Tokyo, and its cases sold under the CASETIFY brand have been used to protect over 20 million devices worldwide. The Complainant further indicates that it has collaborated with over 500 global artists and offered 30,000 different designs.

The disputed domain name was registered on July 9, 2020, and resolves to a parking page featuring sponsored ("pay-per-click" or "PPC") links, many of which directly refer to the Complainant, its activities and its CASETIFY trademark.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its CASETIFY trademark, as it represents a purposeful misspelling of this trademark. The disputed domain name differs from the Complainant’s trademark only by the addition of the letter “s” and, as such, must be considered a prototypical example of typosquatting.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant contends that the Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not licensed, authorized, or permitted the Respondent to use its trademarks in any manner, including in domain names. The Respondent is also not commonly known by the disputed domain name, which evidences a lack of rights or legitimate interests. The Respondent is using the disputed domain name to direct Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. Presumably, the Respondent receives pay-per-click fees from the linked websites listed on the website to which the disputed domain name resolves. Prior UDRP decisions have consistently held that respondents who monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name.

With reference to the circumstances evidencing bad faith, the Complainant states that it and its CASETIFY trademarks are known internationally and that it has marketed and sold its goods and services using the CASETIFY trademark since 2011, well before the Respondent’s registration of the disputed domain name. By registering a domain name that is a one-letter typo of the Complainant’s trademark, the Respondent has demonstrated knowledge of and familiarity with the Complainant’s trademark and business. The Complainant further states that it is clear that the Respondent is attempting to capitalize on typing errors made by the Complainant’s customers when trying to locate the Complainant on the Internet. Numerous panels have found that registering a domain name to take advantage of traffic generated by typing errors made by another’s customers, as here, is evidence of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. By creating a likelihood of confusion between the Complainant’s trademarks and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the website to which the disputed domain name resolves for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links on the Respondent’s website, which directly reference the Complainant. In addition to the disputed domain name, the Respondent’s email address is currently associated with registrations of several other domain names that misappropriate the trademarks of well-known brands and businesses. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting and typosquatting, which is evidence of bad faith registration and use of the disputed domain name.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy stipulates that the complainant must prove each of the following:

• that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
• that the disputed domain name has been registered and is being used in bad faith. 

I. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name, as stipulated in section 1.7 of WIPO Overview of WIPO Panel Views on Select UDRP Questions ("WIPO Overview 3.1").

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy (WIPO Overview 3.1, section 1.2.1).  

The second-level domain (“SLD”) of the disputed domain name, “cassetify”, is very close to the CASETIFY trademark. The difference consists of the addition of the letter “s”, thereby doubling the original letter "s" in the Complainant's trademark. This addition is insufficient to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. A domain name which consists of a variation of a trademark (typically a common, obvious, or intentional misspelling, referred to as typosquatting) is considered by panels to be confusingly similar to the relevant trademark for purposes of the first element (WIPO Overview 3.1, section 1.9).

In addition, it is well established that “.com”, as a gTLD, is disregarded in the assessment of confusing similarity between the disputed domain name and the trademark (WIPO Overview 3.1, section 1.11.1).

The Panel, therefore, finds that the first element of the Policy has been established.

II. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that there appears to be no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s CASETIFY trademark or any variation thereof. There appears to be no element from which the Panel could infer the Respondent’s rights or legitimate interests in the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

The Panel also finds that the use of the disputed domain name for a parking page with pay-per-click links does not represent a bona fide offering having in mind that many of links in this case refer to the Complainant and therefore they capitalize on the reputation and goodwill of the Complainant’s trademark and mislead Internet users (see WIPO Overview 3.1, section 2.9).

Having in mind the above, the Panel finds the second element of the Policy has been established.

III. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.  

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (see WIPO Overview 3.1, section 3.2.1).

In the present case, the Panel considers that the Respondent was likely aware of the Complainant and its CASETIFY trademark. Namely, the first registration and use of the CASETIFY trademark predate the registration of the disputed domain name by several years, making it unlikely that the Respondent was not aware of the Complainant’s trademark at the time of registration of the disputed domain name. The fact that the Respondent has chosen the domain name that differs from the CASETIFY trademark only by the addition of a single letter further indicates that the Respondent intentionally selected the domain name that is confusingly similar to the Complainant’s trademark. Misspelling of trademark (the practice known as typosquatting) that enjoys certain reputation has been commonly recognized as evidence of bad faith by prior panels (see WIPO Overview 3.1, section 3.1.4).

Due to the above, the Panel finds that the disputed domain name has been registered in bad faith. 

As mentioned above, the disputed domain name resolves to a parking page with PPC links, many of which refer to the Complainant, meaning that they capitalize on the reputation and goodwill of the Complainant’s trademark. Therefore, the Panel deems that by such use of the disputed domain name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy. This constitutes bad faith use of the disputed domain name.

In accordance with the above, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the disputed domain name has been both registered and is being used in bad faith, and consequently that the Complainant has established the third element of the Policy.