BuySeasons, Inc. v. Whois-Privacy.Net Ltd c/o DN Manager
Claim Number: FA1003001312926
Complainant is BuySeasons, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Whois-Privacy.Net Ltd c/o DN Manager (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <birthayexpress.com>, registered with Fabulous.com Pty Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2010.
On March 11, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <birthayexpress.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty 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 March 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@birthayexpress.com. Also on March 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of a Written Notice, as defined in Rule 1. 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 <birthayexpress.com> domain name is confusingly similar to Complainant’s BIRTHDAYEXPRESS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <birthayexpress.com> domain name.
3. Respondent registered and used the <birthayexpress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BuySeasons, Inc., has registered its BIRTHDAYEXPRESS.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,426,402 issued February 6, 2001). Complainant uses the mark in connection with retail, online, and mail order sales and services featuring party supplies.
Respondent registered the disputed domain name August 1, 2005. The disputed domain name resolves to a web directory of commercial third-party websites that include competitors of 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.
The Panel finds that Complainant’s registration of its BIRTHDAYEXPRESS.COM mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The disputed domain name is confusingly similar to
Complainant’s BIRTHDAYEXPRESS.COM mark.
Respondent’s <birthayexpress.com>
disputed domain name removes the letter “d” from Complainant’s mark. The Panel finds the misspelling of the mark
in the disputed domain name does not differentiate the disputed domain name
from Complainant’s mark and that the disputed domain name is confusingly
similar to Complainant’s mark, pursuant to Policy ¶ 4(a)(i). See Neiman
Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July
23, 2002) (finding that the <neimanmacus.com> domain name was a simple
misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example
of typosquatting, which was evidence that the domain name was confusingly
similar to the mark); see also Guinness
UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001)
(finding the <smirnof.com> domain name confusingly similar to the
complainant’s SMIRNOFF mark because merely removing the letter “f” from the
mark was insignificant).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case in support of this, the burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The WHOIS information for the <birthayexpress.com> domain name does not reflect that the registrant is commonly known by the disputed domain name. Complainant states that no license or other authorization has been given to Respondent to use the BIRTHDAYEXPRESS.COM mark. Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name); 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 uses the <birthayexpress.com> domain name for a web directory with links to third-party competitors of Complainant. The Panel finds that Respondent’s use of the <birthayexpress.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a making legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of 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)”).
Complainant asserts that the disputed domain name is an
intentional misspelling of the BIRTHDAYEXPRESS.COM mark. Complainant further
asserts that Respondent is capitalizing on this misspelling to misdirect
Internet users seeking Complainant’s services.
The Panel finds that this constitutes the practice of typosquatting,
which is evidence that Respondent lacks rights and legitimate interests in the
disputed domain name under 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 Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Microsoft Corp. v. Domain Registration Philippines, FA
877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the
<microssoft.com> domain name, the respondent had “engaged in
typosquatting, which provides additional evidence that [the] respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a web directory with links to third-party competitors of Complainant. The Panel finds Respondent’s registration and use of the <birthayexpress.com> domain name to operate a web directory that contains links to third-party websites that compete with the Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also 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)).
Internet users, searching for Complainant’s services, will be confused by the disputed domain name when it resolves to a web directory with links to third-party competitors of Complainant. Further, Internet users may become confused as to Complainant’s sponsorship or affiliation with the disputed domain name and resolving website. Respondent attempts to profit from this confusion through its presumed receipt of click-through fees by linking to third-parties. Therefore, the Panel finds Respondent’s use of the <birthayexpress.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent is engaged in the practice of typosquatting
through the use of the <birthayexpress.com>
domain name. The Panel finds that this
practice is also evidence of bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the 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. Forum Sept. 22, 2003) (finding
that the <dermatalogica.com> domain name was a “simple misspelling” of
the complainant's DERMALOGICA mark which indicated typosquatting
and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds 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 <birthayexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 3, 2010
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