Charlotte Russe Merchandising, Inc. v. Mike Morgan
Claim Number: FA1001001301250
Complainant is Charlotte Russe Merchandising, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <charlottrusse.com>, registered with Moniker.
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 4, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 5, 2010.
On January 4, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <charlottrusse.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 January 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of Janauary 25, 2010 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@charlottrusse.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 1, 2010, 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 uses the CHARLOTTE RUSSE service mark in association with its retail store services specializing in apparel, jewelry, cosmetics, handbags, and hair ornaments.
Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the CHARLOTTE RUSSE service mark (including U.S. Reg. No. 2,414,477, issued December 19, 2000).
Respondent registered the <charlottrusse.com> domain name on October 20, 2005.
Respondent is not commonly known by the disputed domain name.
Respondent’s domain name resolves to a website with generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent is a serial cyber-squatter / typo-squatter who has been the respondent in at least six other UDRP proceedings.
Respondent’s disputed <charlottrusse.com> domain name is confusingly similar to Complainant’s CHARLOTTE RUSSE service mark.
Respondent is capitalizing on a common misspelling of Complaint’s CHARLOTTE RUSSE mark to misdirect Internet users seeking Complainant’s online presence.
Respondent does not have any rights to or legitimate interests in the domain name <charlottrusse.com>.
Respondent registered and uses the <charlottrusse.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 service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same 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 has established rights in the CHARLOTTE RUSSE service mark for purposes of Policy ¶ 4(a)(i) through its mark registrations with the USPTO. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that a Complainant’s trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that Respondent’s disputed domain name is
confusingly similar to Complainant’s CHARLOTTE RUSSE mark pursuant to Policy ¶
4(a)(i). The
disputed domain name contains a misspelled version of Complainant’s CHARLOTTE
RUSSE mark which deletes the letter “e” in “charlotte” and deletes the space
between the two words of the mark, then adds the generic top-level domain
(“gTLD”) “.com.” The omission of one
letter fails to distinguish the disputed domain name from Complainant’s
mark. See Hallelujah Acres, Inc. v.
The addition of a gTLD does not prevent the disputed domain name from being confusingly similar to Complainant’s mark. See Trip Network Inc. v. Alveira, 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 deleted space in the domain name is similarly irrelevant in a Policy ¶ 4(a)(i) analysis and does not create a domain name distinguishable from the Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name <americangenerallifeinsurance.com> is confusingly similar to the complainant’s AMERICAN GENERAL mark.”).
Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s CHARLOTTE RUSSE mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant has set out a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name. See Intel Corp. V. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 adequately established a prima facie case in these proceedings. Because Respondent has failed to respond to the allegations against it, we may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name. 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.
We elect, however, to examine the evidence of record, in light of the considerations recited in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interest in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Moreover, the pertinent WHOIS information lists the registrant only as “Mike Morgan,” which bears no resemblance to the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), we conclude that Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that there is ‘nothing in Respondent’s WHOIS information [which 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 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 relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We also observe that there is no dispute as to Complainant’s allegation that Respondent’s domain name resolves to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s use of the disputed domain name as alleged is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that a respondent’s use of the <hpcanada.com> domain name to post links to commercial websites, and thereby to subject Internet users to pop-up advertisements, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent was merely using a domain name to operate a website containing links to various competing commercial websites, which the panel found not to be 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)).
In addition, Complainant contends, and Respondent does not
deny, that, in forming its domain name, Respondent is capitalizing on a common
misspelling of Complaint’s CHARLOTTE RUSSE mark to misdirect Internet users
seeking Complainant’s online presence.
This constitutes the practice of typo-squatting, which is separate and
independent evidence that Respondent lacks rights to and legitimate interests
in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel thus finds the requirements of Policy ¶ 4(a)(ii) have been satisfied.
That Respondent has engaged in a pattern of cyber-squatting as evidenced by several adverse UDRP proceedings against it. See, e.g., Anheuser-Busch, Inc. v. Mike Morgan, FA 785495 (Nat. Arb. Forum Oct. 9, 2006); Citigroup, Inc. and Diners Club Int’l Ltd. v. M Morgan a/k/a/ Mike Morgan, FA 797565 (Nat. Arb. Forum Oct. 31, 2006); Reed Elsevier, Inc. & Reed Elsevier Properties, Inc. v. Mike Morgan, FA 709198 (Nat. Arb. Forum Aug. 1, 2006). Because of Respondent’s pattern of registering domain names containing third-party marks, as shown by the prior UDRP proceedings, we conclude that this pattern of use evidences bad faith registration and use of the contested domain name under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) where a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber-squatting); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith, pursuant to Policy ¶ 4(b)(ii), when a respondent previously registered domain names incorporating well-known third party trademarks).
Respondent’s domain name resolves to a website containing links to third-party websites, some of which directly compete with the business of Complainant. Such activity disrupts Complainant’s business, because Internet users seeking Complainant’s products will be diverted to sites featuring competing products. This disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products of a complainant and that complainant’s business competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to a competing mark in order to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represented bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
Respondent’s evidently deliberate misspelling of
Complainant’s mark in forming the contested domain name in order to capitalize
on common typing mistakes made by Internet users when they are searching for
Complainant’s website, and is plainly intended to attract such Internet users to
Respondent’s website and from there to the sites which resolve from the links
carried on that site. We may safely presume
that Respondent receives pay-per-click fees from such activity. Respondent’s efforts thus to mislead Internet
users for its commercial gain constitutes bad faith registration and use of the
contested domain name under Policy ¶ 4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching
for a complainant to its own website, likely profiting from such diversion);
see also Univ. of
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 under this
head of the Complaint, we have already concluded that Respondent engaged in the
practice of typo-squatting in its formation of the contested domain name. The practice of typo-squatting is itself evidence
of bad faith registration and use of the subject domain name under Policy ¶ 4(a)(iii). See, e.g., Nextel Commc’ns Inc. v. Geer, FA 477183
(Nat. Arb. Forum July 15, 2005) (finding that a respondent’s
registration and use of the <nextell.com> domain name was in bad faith
because the domain name epitomized typosquatting in its purest form). See also Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Form Sept. 22, 2003) (finding that the domain name
<dermatologica.com> was a “simple misspelling” of a complainant’s
DERMALOGICA mark, which indicated typo-squatting and therefore bad faith
registration and use of the domain pursuant to Policy ¶ 4(a)(iii)).
For all of these
reasons, the Panel finds that Respondent has engaged in bad faith registration
and use of the contested domain name under 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 <charlottrusse.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 15, 2010
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