Cafepress.com, Inc v. Web Services Pty c/o Aditya Roshni
Claim Number: FA0906001271229
Complainant is Cafepress.com,
Inc (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cafeepress.com>, registered with Answerable.com (I) Pvt. Ltd.
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 June 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 1, 2009.
On July 2, 2009, Answerable.com (I) Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <cafeepress.com> domain name is registered with Answerable.com (I) Pvt. Ltd. and that Respondent is the current registrant of the name. Answerable.com (I) Pvt. Ltd. has verified that Respondent is bound by the Answerable.com (I) Pvt. Ltd. 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 July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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@cafeepress.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2009, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant provides the capabilities for individuals and businesses to create, buy, and sell customized merchandise including apparel, bags, books, and posters.
Complainant owns of the CAFEPRESS.COM trademark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,571,049, issued May 21, 2002).
Respondent registered the <cafeepress.com> domain name on June 16, 2006.
Respondent’s <cafeepress.com> domain name is confusingly similar to Complainant’s CAFEPRESS.COM mark.
Respondent is not commonly known by the <cafeepress.com> domain name.
The disputed domain name resolves to a website featuring links that further resolve to the websites of Complainant’s business competitors and other third-party websites.
Respondent is intentionally attempting to attract Internet users to its confusingly similar disputed domain name by creating a likelihood of confusion with Complainant’s CAFEPRESS.COM mark.
Respondent does not have any rights to or legitimate interests in the <cafeepress.com> domain name.
Respondent registered and uses the <cafeepress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is 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.
Complainant’s trademark registration with the USPTO for the CAFEPRESS.COM mark sufficiently conveys rights in the mark to Complainant for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):
Complainant’s
trademark registrations with the USPTO adequately demonstrate its rights in the
[EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).
Additionally, it is not necessary under the Policy for Complainant to have registered its CAFEPRESS.COM mark in the country of Respondent’s residence. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; rather, it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <cafeepress.com> domain name contains the distinctive portion of Complainant’s CAFEPRESS.COM mark with the only alteration being the addition of the letter “e” after the word “CAFE.” This modification fails to negate a finding of confusing similarity between the mark and the domain name under Policy ¶ 4(a)(i). See 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 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 resulting domain name confusingly similar to a complainant’s marks).
Similarly, the further addition of the generic top level domain (“gTLD”) “.com” to Complainant’s mark in forming the disputed domain name does not remove the domain name from the realm of confusing similarity. See, for example, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore finds that Respondent’s <cafeepress.com> domain name is confusingly similar to Complainant’s CAFEPRESS.COM mark within the meaning of Policy ¶ 4(a)(i).
For purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must first make out a prima facie showing that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant satisfies this burden, the Respondent then has the burden to show that it has relevant rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”
Complainant has made the necessary prima facie showing, while Respondent has failed to respond to Complainant’s allegations. This failure permits us to infer that Respondent lacks rights to or legitimate interests in the <cafeepress.com> domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
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).”
Nonetheless, we elect to review the record before us to determine whether there is any basis for concluding that Respondent has such rights or interests by reference to the criteria set out in Policy ¶ 4(c).
We begin by noting that there is no dispute as to Complainant’s assertion to the effect that the disputed domain name resolves to a website featuring links that further resolve to the websites of Complainant’s business competitors. We may presume from this allegation that Respondent receives click-through fees for each Internet user that is redirected to the sponsored websites, and we further conclude that Respondent’s use of the <cafeepress.com> domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links to a complainant’s business competitors, was not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), where a respondent presumably received “click-through” fees for each consumer it redirected to other websites).
Next we observe that Complainant contends, and Respondent
does not deny, that Respondent is not commonly known by the <cafeepress.com>
domain name. We also take note of the
fact that the pertinent WHOIS information identifies the registrant as “Web
Services Pty c/o Aditya Roshni.”
Therefore we conclude that Respondent is not commonly known by the <cafeepress.com>
domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see
also 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 WHOIS
information, suggesting that that respondent was commonly known by the disputed
domain name).
Finally in this
connection, we cannot ignore the fact that Respondent is evidently taking
advantage of a common misspelling of Complainant’s CAFEPRESS.COM mark in
forming its disputed domain name, and that Respondent is using this common
misspelling to divert Internet users to Respondent’s website, a practice commonly referred to as typo-squatting. Respondent’s typo-squatting behavior is
further evidence that it lacks rights to and legitimate interests in the <cafeepress.com>
domain name under Policy ¶ 4(a)(ii). See, for
example, Microsoft Corp. v. Domain Registration
Complainant has thus satisfied Policy ¶ 4(a)(ii).
We have already determined that links appearing on the
website resolving from the <cafeepress.com> domain name promote businesses
that compete with the business of Complainant.
This constitutes disruption of Complainant’s business and thus provides
evidence of bad faith registration and use of the disputed domain name under
Policy ¶ 4(b)(iii).
See David Hall Rare Coins v.
Complainant contends that Respondent is intentionally
attempting to attract Internet users to its domain name by creating a
likelihood of confusion with the CAFEPRESS.COM mark. Respondent does not deny this allegation. Nor does Respondent deny the further
allegation of the Complaint to the effect that the disputed domain name’s
resolving website contains links that further resolve to the websites of
Complainant’s business competitors. We may
presume from the circumstances here presented that Respondent profits from such
use through the accrual of click-through fees.
Thus we concludes that Respondent has engaged in bad faith registration
and use of the disputed domain name under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a
respondent engaged in bad faith registration and use of a domain name that was
confusingly similar to a complainant’s mark to offer links to third-party
websites featuring services similar to those offered by that complainant); see
also Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing commercial
websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial
gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, we consider
under this heading that Respondent is engaged in typo-squatting because the
evidence shows that Respondent is taking advantage of a common misspelling of
Complainant’s CAFEPRESS.COM mark to divert Internet users to the disputed domain name’s resolving
website. Typo-squatting is itself evidence
of bad faith registration and use of the contested domain under Policy ¶ 4(a)(iii).
See Canadian Tire Corp. v.
domain adm’r, D2003-0232 (WIPO May 22, 2003) (finding that a
respondent registered and used a domain name in bad faith because that respondent
“created ‘a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of the Respondent’s web site
or location’. . . through Respondent’s persistent
practice of ‘typosquatting’”); see also Microsoft Corp. v. Domain Registration
Philippines, FA
877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use
of the <microssoft.com> domain name as it merely misspelled a
complainant’s MICROSOFT mark).
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 <cafeepress.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 7, 2009
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