national arbitration forum

 

DECISION

 

CafePress.com, Inc. v. Dangelo Delicious a/k/a Amelie Nikita a/k/a Martin Faith a/k/a Jameson c/o Damiana a/k/a Roger Anise a/k/a Logan Feather a/k/a Rebekah Topaz a/k/a Noe Bird a/k/a Finley Traci a/k/a Anna Renee

Claim Number: FA0810001231366

 

PARTIES

Complainant is CafePress.com, Inc. (“Complainant”), represented by Andrea Moore, of 1850 Gateway Drive, California, USA.  Respondent is Dangelo Delicious a/k/a Amelie Nikita a/k/a Martin Faith a/k/a Jameson c/o Damiana a/k/a Roger Anise a/k/a Logan Feather a/k/a Rebekah Topaz a/k/a Noe Bird a/k/a Finley Traci a/k/a Anna Renee (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <cafepressbestrated.info>, <cafepressdiscounted.info>, <cafepressextravaganza.info>, <cafepressgreatdeals.info>, <cafepressgreatpriced.info>, <cafepresspremium.info>, <cafepressslickdeals.info>, <cafepresssuperb.info>, <cafepresssuperdeals.info>, and <cafepressbestdeals.info>, registered with Domain Discover.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2008.

 

On November 7, 2008, Domain Discover confirmed by e-mail to the National Arbitration Forum that the domain names <cafepressbestrated.info>, <cafepressdiscounted.info>, <cafepressextravaganza.info>, <cafepressgreatdeals.info>, <cafepressgreatpriced.info>, <cafepresspremium.info>, <cafepressslickdeals.info>, <cafepresssuperb.info>, <cafepresssuperdeals.info>, and <cafepressbestdeals.info> are registered with Domain Discover and that Respondent is the current registrant of the names.  Domain Discover has verified that Respondent is bound by the Domain Discover 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 November 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 8, 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@cafepressbestrated.info, postmaster@cafepressdiscounted.info, postmaster@cafepressextravaganza.info, postmaster@cafepressgreatdeals.info, postmaster@cafepressgreatpriced.info, postmaster@cafepresspremium.info, postmaster@cafepressslickdeals.info, postmaster@cafepresssuperb.info, postmaster@cafepresssuperdeals.info, and postmaster@cafepressbestdeals.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 16, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant holds several registrations of the CAFEPRESS service mark with the United States Patent and Trademark Office (“USPTO”) in connection with its online customized printing business, including Reg. No. 2,935,560, issued March 22, 2005). 

 

Complainant has operated its official commercial website since 1997, which is available through the <cafepress.com> domain name.

 

Respondent registered the <cafepressbestrated.info>, <cafepressdiscounted.info>, <cafepressgreatdeals.info>, <cafepressgreatpriced.info>, <cafepresspremium.info>, <cafepressslickdeals.info>, <cafepresssuperb.info>, and <cafepressbestdeals.info> domain names on March 30, 2008, and the <cafepressextravaganza.info> and <cafepresssuperdeals.info> domain names on March 31, 2008. 

 

As of April 3, 2008, all the disputed domain names resolved to websites that were blank except for a display of the respective domain name in large, bold letters followed by the phrase: “reserved through EvolvedNames.com.” 

 

As of September 9, 2008, all of the disputed domain names resolved to “address not found” error messages.

 

Each of the identified domain names is confusingly similar to Complainant’s CAFEPRESS mark.

 

Respondent does not have any rights to or legitimate interests in any of the identified domain names.

 

Respondent registered and uses each of the identified domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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 to or legitimate interests in respect of the domain names; and

(3)   these domain names were registered and are being used by Respondent in bad faith.

 

DISCUSSION

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.

 

Preliminary Issue – One or Multiple Respondents

 

We must first consider whether these proceedings have been properly instituted.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  For its part, the National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss a complaint in relation to domain names it deems to be insufficiently linked to a given respondent.  Complainant contends that Respondent is a single respondent operating under various aliases identified in the Complaint.  The pertinent information for each is set out below.

 

Disputed Domain Name	WHOIS name	WHOIS address	WHOIS e-mail
<cafepressbestrated.info>	Deangalo Delicious	Sunset Blvd Milton, FL	0g7jqm90@1yzks.com
<cafepressdiscounted.info>	Amelie Nikita	Longbeach rd Loretto, MI	r8vmhyh@r74ph5c4u.com
<cafepressgreatdeals.info>	Damiana c/o Jameson	Stanford sq. Ogallah, KS	0k03831r@ab4jzr6m.com
<cafepressgreatpriced.info>	Roger Anise	Stereostreet Coffman Cove, AK	1cmc4cq5a@dr00z449c.com
<cafepresspremium.info>	Logan Feather	Birdroad Rogers, OH	ks1avc4vh@jzn6v93i.com
<cafepressslickdeals.info>	Rebekah Topaz	Straight rd. Roosevelt, NJ	c017vpa@yvs7m0v.com
<cafepresssuperb.info>	Noe Bird	Forest rd Portland, OR	f63nb7z2@is73c.com
<cafepressbestdeals.info>	Anna Renee	Bunny blvd Waterfall, PA	55atn@1v6912f1.com
<cafepressextravaganza.info>	Martin Faith	Customs rd Basin, MT	jy3gp@tez6th43.com
<cafepresssuperdeals.info>	Finley Traci	Koestreet Goldvein, VA	43162h@6rrxuf0.com

 

From our review of the Complaint and supporting documentation, it appears that all of the disputed domain names were registered with suspect postal and e-mail addresses.  These addresses follow a pattern.  All include street addresses without a number and an e-mail address comprised of a combination of apparently random letters and numbers on both sides of the  symbol “@”.  Moreover, all of the disputed domain names have resolved to sites that displayed the domain name in the same font, centered, made bold, and followed by the statement, “reserved through EvolvedNames.com.”  In addition, all of these domains list the same domain name servers, NS1.DOMAINDISCOVER.COM and NS2.DOMAINDISCOVER.COM.  This evidence is sufficient to justify the conclusion that the listed aliases identify the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is proper pursuant to Supplemental Rule 4(f)(ii).  See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent where the administrative contact information of the various subject domain names was the same or similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").

 

Identical and/or Confusingly Similar

 

By registering its mark with the USPTO, Complainant has established rights in the CAFEPRESS service mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”

 

The disputed domain names include Complainant’s CAFEPRESS service mark in its entirety, with the addition of the generic top-level domain (gTLD) “.info.”  The addition of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):

 

[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

Respondent has also added the generic or descriptive words or phrases “bestrated,” “discounted,” “extravaganza,” “great deals,” “great priced,” “premium,” “slick deals,” “superb,” “super deals,” and “best deals” to Complainant’s CAFEPRESS mark to create the disputed domain names.  However, the dominant element of each domain name is Complainant’s mark.  The addition of such generic or descriptive words or phrases to the several domains here in issue therefore does not negate the confusing similarity caused by the inclusion in each of the CAFEPRESS mark.  Therefore, we conclude that each of the disputed domain names is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to a complainant’s THE BODY SHOP trademark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” so that Policy ¶ 4(a)(i) is satisfied).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The initial burden under Policy ¶ 4(a)(ii) is upon Complainant to prove that Respondent does not have any rights to or legitimate interests in the disputed domain names.  Once Complainant has made out a prima facie case, however, the burden shifts to Respondent to show that it does have such rights or legitimate interests.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to 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 to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists). 

 

Complainant has established a prima facie case under this heading.  And, because Respondent has failed to respond, we may presume that Respondent has no rights to or legitimate interests in the disputed domain names.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):

 

[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.

 

However, we will nonetheless examine the record in consideration of the factors listed under Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has any rights or interests in its domain names cognizable under the Policy.

 

We begin by noting that Respondent does not dispute the allegation of the Complaint to the effect that it has failed to make any active use of the disputed domain names,, and, in particular, the assertion that, as of April 3, 2008, all the disputed domain names resolved to websites that were blank except for a display of the specific domain name in large, bold letters followed by the phrase: “reserved through EvolvedNames.com.”  Moreover, there is no dispute as to the allegation that, as of September 9, 2008, all the disputed domain names resolved to “address not found” error messages.  We conclude from this failure to make active use of the disputed domain names that Respondent is not using any of them to make 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

We also observe that there is no evidence in the record before us suggesting that Respondent is commonly known by any of the disputed domain names.  Indeed the WHOIS information for each disputed domain name lists a different alias, none of which has any decernable connection with the disputed domain name.  Thus Respondent has not established any rights to or legitmate interests in any of the disputed domain names under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

In order to find bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(a)(iii), it is not necessary that Respondent have put the disputed domain names to any active use.  Indeed, Respondent’s failure to make an active use of the disputed domain names can, in itself, be evidence of bad faith registration and use of the domains pursuant to Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).  On the evidence before us, we reach the same conclusion, namely, that Respondent’s failure to make active use of any of the disputed domains demonstrates that Respondent registered and uses these domain names in bad faith within the meaning of Policy ¶ 4(a)(iii). 

 

We further consider that there is no dispute as to Complainant’s allegation to the effect that, in a period of two days, Respondent registered ten domain names that are confusingly similar to Complainant’s registered service mark.  We find this to be evidence that Respondent is engaging in a pattern of conduct characterized by an attempt to prevent Complainant from reflecting its mark in the disputed domain names.  This is independent evidence that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent a mark holder from using its mark and provides evidence of a pattern of bad faith conduct).

 

For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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 <cafepressbestrated.info>, <cafepressdiscounted.info>, <cafepressextravaganza.info>, <cafepressgreatdeals.info>, <cafepressgreatpriced.info>, <cafepresspremium.info>, <cafepressslickdeals.info>, <cafepresssuperb.info>, <cafepresssuperdeals.info>, and <cafepressbestdeals.info> be TRANSFERRED from Respondent to Complainant.

 

 

 

_

 

Terry F. Peppard, Panelist

Dated:  December 30, 2008

 

 

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