Cybertania, Inc v. RegistrarAds, Inc. aka Domain Admin
Claim Number: FA0904001259684
Complainant is Cybertania, Inc (“Complainant”), represented by Leo
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myfreecans.com>, registered with Dotster.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2009.
On April 28, 2009, Dotster confirmed by e-mail to the National Arbitration Forum that the <myfreecans.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 May 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 28, 2009 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@myfreecans.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <myfreecans.com> domain name is confusingly similar to Complainant’s MYFREECAMS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <myfreecans.com> domain name.
3. Respondent registered and used the <myfreecans.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cybertania, Inc,
has owned and operated a website located at the <myfreecams.com> domain
name since March 2002. Complainant has
used its MYFREECAMS.COM mark in connection with providing online chat rooms
concerning adult-themed interactive discussions. Since March 2002, Complainant has obtained
over one million registered members, four million unique visitors per month to
its website, and ranked in the top 2,000 websites in the
Respondent registered the <myfreecans.com> domain name on April 17, 2006. The disputed domain name resolves to a website that contains various hyperlinks to several third-party websites, some of which are in direct competition with Complainant.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant holds a registration of its MYFREECAMS.COM mark
with the USPTO. Usually, the Panel has
found that a registration is sufficient to establish rights in a mark under
Policy ¶ 4(a)(i).
However, since Respondent’s registration date of April 17, 2006 of the
disputed domain name predates Complainant’s filing date of February 3, 2008 of its application for federal
registration, the Panel finds that in addition to a registration,
Complainant may establish common law rights in the MYFREECAMS.COM mark under
Policy ¶ 4(a)(i) provided that Complainant can
establish common law rights in the mark through a sufficient showing of
secondary meaning.
Since March 2002, Complainant
has operated a website located at the <myfreecams.com> domain name under
its MYFREECAMS.COM mark, obtained over one million registered members, four
million unique visitors per month to its website, and ranked in the top 2,000
websites in the
Respondent’s <myfreecans.com> domain name contains a common misspelling of Complainant’s MYFREECAMS.COM mark by replacing the letter “m” with the letter “n.” The Panel finds that this alteration of Complainant’s mark does not sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <myfreecans.com> domain name is confusingly similar to Complainant’s MYFREECAMS.COM mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
In the beginning, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s <myfreecans.com>
domain name resolves to a website that
displays several hyperlinks to various websites, some of which are in direct
competition with Complainant’s business.
The Panel infers that Respondent receives click-through fees for such
hyperlinks. Therefore, the Panel finds
that Respondent’s use of the confusingly similar disputed domain name, along
with the aforementioned hyperlinks, diverts Internet users to competing
websites for commercial gain, and thus is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4 (c)(iii). See ALPITOUR
S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum
Feb. 27, 2007) (finding that “using the confusingly similar
<viaggidea.com> domain name to operate a website that features links to
various commercial websites from which Respondent presumably receives referral
fees….is neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate non-commercial or
fair use pursuant to Policy ¶ 4(c)(iii).”); see also Meyerson v. Speedy
Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a
respondent has failed to offer any goods or services on its website other than
links to a variety of third-party websites, it was not using a domain name in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)).
Furthermore, Respondent is listed in the WHOIS information
as “RegistrarAds, Inc. a/k/a Domain Admin,”
which does not indicate that Respondent is commonly known by the <myfreecans.com> domain name.
Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v.
Lee Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Finally, the Panel
finds that Respondent is taking advantage of a common misspelling of
Complainant’s MYFREECAMS.COM mark by diverting Internet users presumably for a
fee, commonly referred to as typosquatting, and thus is further evidence that
Respondent lacks rights and legitimate interests in the <myfreecans.com> domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds that
Respondent is using the confusingly similar disputed domain name to divert
Internet users to competing websites using the aforementioned hyperlinks. Therefore, the Panel find that this diversion
disrupts Complainant’s business and constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum
Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also Am. Airlines, Inc. v. Tex. Int’l
Prop. Assoc., FA 914854 (Nat.
Arb. Forum Apr. 10, 2007) (holding that where the
respondent’s website featured hyperlinks to competing websites and included a
link to the complainant’s website, the respondent’s use of the
<redeemaamiles.com> domain name constituted disruption under Policy ¶
4(b)(iii)).
In addition, Respondent is
using the <myfreecans.com> domain name and the aforementioned hyperlinks to collect click-through
fees. Accordingly, the Panel finds that
Respondent’s use of the disputed domain name to commercially gain from that use
creates a likelihood of confusion as to Complainant’s affiliation with the
disputed domain name and constitutes bad faith registration and use under
Policy ¶ 4(b)(iv). See
Finally, the Panel
finds that Respondent is taking advantage of a common misspelling of
Complainant’s MYFREECAMS.COM mark by diverting Internet users presumably for a
fee, and thus is engaged in typosquatting, which is evidence of bad faith
registration and use of the <myfreecans.com>
domain name under Policy ¶
4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in
typosquatting, which is evidence of bad faith registration and use under Policy
¶ 4(a)(iii)); see also The Vanguard
Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004)
(“By engaging in typosquatting, [r]espondent has registered and used the
<vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myfreecans.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: June 15, 2009
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