Overstock.com, Inc v. A Kiansu
Claim Number: FA0802001142092
Complainant is Overstock.com, Inc (“Complainant”), represented by CitizenHawk,
Inc., of
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <oversstock.com>, <overstck.com>, <overstockk.com>, <overstokc.com>, and <ovrstock.com> registered with Dotregistrar.
The undersigned 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 4, 2008.
On February 1, 2008, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <oversstock.com>, <overstck.com>, <overstockk.com>, <overstokc.com>, and <ovrstock.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 February 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 25, 2008 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@oversstock.com, postmaster@overstck.com, postmaster@overstockk.com, postmaster@overstokc.com, and postmaster@ovrstock.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an online “closeout” retailer offering high-quality brand-name merchandise at discount prices.
Complainant was ranked number 25 in the 2007 edition of the Internet Retailer Top 500 Guide, with 2006 sales topping $796 million.
Complainant enjoys wide consumer recognition and acceptance of its brand.
Complainant registered the domain name <overstock.com>, which embodies its service mark, on February 10, 1999.
Complainant first used its OVERSTOCK.COM service mark in commerce on October 19, 1999.
Complainant registered the OVERSTOCK.COM service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2939764, issued April 12, 2008, filed September 29, 2003).
Respondent has not been commonly known by the disputed domain names.
Complainant has not given Respondent permission to use Complainant’s mark in a domain name.
Respondent registered the <oversstock.com>, <overstck.com>,
<overstockk.com>, and <ovrstock.com> domain names on
November 13, 2001, and the <overstokc.com> domain name on January
18, 2002.
Respondent
is using the disputed domain names to display websites featuring links to
third-party websites, some of which directly compete with Complainant’s
business.
Respondent
is a serial cyber-squatter.
Respondent’s domain names <oversstock.com>, <overstck.com>, <overstockk.com>, <overstokc.com>, and <ovrstock.com> are confusingly similar to Complainant’s OVERSTOCK.COM mark.
Respondent does not have any rights to or legitimate interests in the domain names <oversstock.com>, <overstck.com>, <overstockk.com>, <overstokc.com>, and <ovrstock.com>.
Respondent registered and uses the domain names <oversstock.com>, <overstck.com>, <overstockk.com>, <overstokc.com>, and <ovrstock.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In order to prevail in this proceeding, Complainant must first establish rights in its service mark meeting the requirements of the Policy. Complainant has provided evidence of a registration for the OVERSTOCK.COM service mark with the USPTO that was filed on September 29, 2003. This date is later in time than the dates of registration of the contested domain names. However, there is also evidence that Complainant registered the domain name <overstock.com>, which embodies its service mark, on February 10, 1999, and there is evidence that Complainant first used its OVERSTOCK.COM service mark in commerce on October 19, 1999. Both of these dates predate Respondent’s registration of the disputed domain names. Respondent does not contradict this evidence.
It is well-established that Complainant need not demonstrate
that its rights in the mark here in issue predate Respondent’s registration of
the disputed domain name in order to satisfy the requirements of Policy ¶ 4(a)(i). See Javacool Software Dev., LLC v. Elbanhawy
Invs., FA 836772 (Nat. Arb. Forum
Jan. 2, 2007) (holding that a complainant need not show that its rights in its
mark predate a respondent’s registration of a disputed domain name in order to
satisfy Policy ¶ 4(a)(i)); see also
Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007): “Although the domain name in dispute was first registered in 1996, four
years before Complainant’s alleged first use of the mark, the Panel finds that
Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶
4(a)(i).” Nonetheless,
on the record before us, it has done so. Therefore, we conclude that Complainant has
demonstrated rights in its mark sufficient to satisfy Policy ¶ 4(a)(i).
We are also persuaded that the disputed domain names are confusingly similar to Complainant’s OVERSTOCK.COM mark. All of Respondent’s <oversstock.com>, <overstck.com>, <overstockk.com>, <overstokc.com>, and <ovrstock.com> domain names contain the dominant portion of Complainant’s OVERSTOCK.COM mark, merely omitting or adding a letter or transposing two letters. These minor alterations fail to distinguish them from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the domain name <chuckcheese.com> was confusingly similar to a complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names
from the realm of confusing similarity in relation to the complainant’s mark
pursuant to Policy ¶ 4(a)(i).
See also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).
We therefore find that Complainant has satisfied Policy ¶
4(a)(i).
Under Policy ¶ 4(a)(ii), once Complainant makes out a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, the burden shifts to Respondent to refute that showing. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In the instant case, Complainant has established a prima facie case as required by the Policy. And, inasmuch as Respondent has not filed an answer to the Complaint in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint). However, we will nonetheless examine the evidence of record to determine if there is any basis for determining that Respondent has rights or interests as described in Policy ¶ 4(c).
We begin by noting that the Complaint alleges, and
Respondent does not deny, that Respondent’s domain names resolves to websites featuring
links to third-party websites, some of which directly compete with Complainant’s business. We may presume that Respondent receives
click-through fees when Internet users click on these links. We conclude, therefore, that Respondent is
not using the disputed domain names in connection with either a bona fide offering of goods or services,
under Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.” See also Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using
a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because that
respondent used the domain name to take advantage of a complainant's mark by
diverting Internet users to a competing commercial site).
We also observe that Respondent does not contest Complainant’s assertion that Respondent is not commonly known by the disputed domain names, which indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). This assertion is bolstered by the fact that the pertinent WHOIS information identifies Respondent as “A Kiansu,” and there is no evidence in the record to suggest that Respondent is known by the disputed domain name. Furthermore, Complainant alleges, and Respondent does not deny, that Complainant has not given Respondent permission to use its mark. Therefore, we conclude that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s rights in a domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).
The Panel thus finds that Complainant has satisfied Policy ¶
4(a)(ii).
It is apparent that Respondent is attempting to capitalize
on the likelihood that Internet users seeking Complainant will be confused as
to the possible source of the disputed domain
names or as to Complainant’s affiliation with the corresponding websites. This behavior demonstrates Respondent’s bad
faith registration and use of the domain names under Policy ¶ 4(b)(iv). See, for
example, Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003):
As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
See also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Complainant has
satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain names <oversstock.com>, <overstck.com>, <overstockk.com>, <overstokc.com>, and <ovrstock.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 12, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum