Russell Frey d/b/a edHelper.com v. Texas International Property Associates - NA NA
Claim Number: FA0910001289830
Complainant is Russell
Frey d/b/a edHelper.com (“Complainant”),
represented by Clifford D Hyra, of Hyra IP PLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <edelper.com>, <edheelper.com>, <edhrlper.com>, <edheloer.com>, <edhelpere.com>, <edjhelper.com>, <ehhelper.com>, <edhleperblog.com>, and <edlhelper.com>, registered with Compana, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2009.
On October 29, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <edelper.com>, <edheelper.com>, <edhrlper.com>, <edheloer.com>, <edhelpere.com>, <edjhelper.com>, <ehhelper.com>, <edhleperblog.com>, and <edlhelper.com> domain names are registered with Compana, LLC and that Respondent is the current registrant of the names. Compana, LLC has verified that Respondent is bound by the Compana, Llc 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 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 23, 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@edelper.com, postmaster@edheelper.com, postmaster@edhrlper.com, postmaster@edheloer.com, postmaster@edhelpere.com, postmaster@edjhelper.com, postmaster@ehhelper.com, postmaster@edhleperblog.com, and postmaster@edlhelper.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edelper.com>, <edheelper.com>, <edhrlper.com>, <edheloer.com>, <edhelpere.com>, <edjhelper.com>, <ehhelper.com>, <edhleperblog.com>, and <edlhelper.com> domain names are confusingly similar to Complainant’s EDHELPER mark.
2. Respondent does not have any rights or legitimate interests in the <edelper.com>, <edheelper.com>, <edhrlper.com>, <edheloer.com>, <edhelpere.com>, <edjhelper.com>, <ehhelper.com>, <edhleperblog.com>, and <edlhelper.com> domain names.
3. Respondent registered and used the <edelper.com>, <edheelper.com>, <edhrlper.com>, <edheloer.com>, <edhelpere.com>, <edjhelper.com>, <ehhelper.com>, <edhleperblog.com>, and <edlhelper.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Russell Frey d/b/a edHelper.com, provides its
customers with a wide-range of educational services. Complainant owns a trademark registration
with the United States Patent and Trademark Office (“USPTO”) for the EDHELPER
mark (Reg. No. 2,955,044 filed
Respondent’s <edelper.com> domain name was registered on May 7, 2005,
the <edheelper.com> and <edjhelper.com> domain names
was registered on December 13, 2005, the <edhrlper.com> domain
name was registered on October 18, 2005, the <edheloer.com> domain
name was registered on
Complainant offers
evidence that Respondent has a history of registering domain names infringing
upon the trademark rights of others, and has been ordered by previous UDRP
panels to transfer the disputed domain names to the respective
complainants. See Skyhawke
Tech., LLC v.
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 has established rights in the EDHELPER mark
pursuant to Policy ¶ 4(a)(i) through registration of
the mark with the USPTO (Reg. No. 2,955,044 filed
Complainant argues that Respondent’s <edelper.com>, <edheelper.com>, <edhrlper.com>, <edheloer.com>, <edhelpere.com>, <edjhelper.com>, <ehhelper.com>, <edhleperblog.com>, and <edlhelper.com> domain names are confusingly similar to Complainant’s EDHELPER mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names contain a misspelled version of Complainant’s mark and add the generic top-level domain (“gTLD”) “.com.” In addition, Respondent’s <edhleperblog.com> domain name also contains the generic term “blog.” The Panel finds that a disputed domain name that contains a misspelled version of a complainant’s mark fails to realize a distinguishing characteristic and creates a confusing similarity between the disputed domain name and the complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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 domain name confusingly similar to the complainant’s marks). The Panel also finds that the addition of the generic term “blog” fails to create a distinguishing characteristic within the disputed domain name. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Lastly, the Panel finds that the addition of a gTLD fails to distinguish a disputed domain name from a registered mark. See 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s EDHELPER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any
rights or legitimate interests in the disputed domain names. Once a prima facie case has been established by Complainant, the burden
then shifts to Respondent to demonstrate its rights or legitimate interests in
the disputed domain names pursuant to Policy ¶ 4(c). The Panel finds that Complainant has
adequately established a prima facie
case in these proceedings. Since
Respondent has failed to respond to the allegations against it, the Panel may
assume that Respondent lacks any rights or legitimate interests in the disputed
domain names. 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.”); see also 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.”).
Complainant contends that Respondent is not commonly known
by the disputed domain names
under Policy ¶ 4(c)(ii). The pertinent WHOIS information for the
disputed domain names identifies the registrant as “Texas International
Property Associates,” and there is no other evidence in the record to suggest
that Respondent is otherwise commonly known by the disputed domain names.
Thus, the Panel concludes that Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb.
Forum July 17, 2006) (concluding that the 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 the
respondent was commonly known by the disputed domain name).
Respondent’s disputed
domain names resolve to a website featuring advertisements and links relating
to Complainant’s competitors in the educational services industry. The Panel
may infer that Respondent profits through the generation of click-through fees
from the links to Complainant’s competitors. Therefore, the Panel finds
that Respondent’s use of the disputed domain names is not in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the disputed domain names under
Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
In addition, typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who commit those typographical errors. The disputed domain names take advantage of Internet users who mistype Complainant’s EDHELPER mark. Complainant contends that Respondent has engaged in typosquatting by misspelling Complainant’s mark in the disputed domain names. The Panel agrees and concludes that Respondent’s engagement in typosquatting is further evidence that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has been the respondent
in multiple other UDRP cases wherein the disputed domain names were transferred
to the respective complainants in those cases. See Skyhawke Tech., LLC v.
The Panel finds that Respondent intended to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its mark by displaying third-party links to Complainant’s competitors in the educational services industry. The Panel therefore finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent has created a likelihood of confusion for
commercial gain as to Complainant’s source and affiliation with the disputed domain names and the
resolving websites. Respondent is
presumably monetarily benefiting through the receipt of referral fees accrued
when Internet users click on the competitive links. This constitutes evidence that Respondent has
registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Asbury Auto. Group,
Inc. v.
Lastly, the Panel finds that Respondent’s disputed domain names are merely a typosquatted version of Complainant’s EDHELPER mark, and that such typosquatting constitutes bad faith registration and use 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 Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use…”).
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 <edelper.com>, <edheelper.com>, <edhrlper.com>, <edheloer.com>, <edhelpere.com>, <edjhelper.com>, <ehhelper.com>, <edhleperblog.com>, and <edlhelper.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 15, 2009
National
Arbitration Forum
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