Backcountry.com, LLC v. Belroots Pty Ltd c/o Luis de Carvalho a/k/a Chin-Hui Wu c/o Chin-Hui Wu a/k/a Domain Administrator a/k/a ZincFusion Limited c/o Vivian Cox
Claim Number: FA1007001337669
Complainant is Backcountry.com,
LLC (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com>, registered with GoDaddy.com.
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 July 27, 2010.
On July 29, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 August 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@backckuntry.com, postmaster@backcoeuntry.com, postmaster@backcointry.com, postmaster@backcoujtry.com, postmaster@backcoundry.com, postmaster@backcountrg.com, postmaster@backcounttry.com, postmaster@backdountry.com, postmaster@bacocountry.com, postmaster@bavkcountry.com, postmaster@eackcountry.com, postmaster@abckcountry.com, postmaster@bacekcountry.com, postmaster@backc0untry.com, postmaster@backceountry.com, postmaster@backcounfry.com, postmaster@backcountdy.com, postmaster@backcountri.com, postmaster@backcoyntry.com, postmaster@badkcountry.com, postmaster@gackcountry.com, postmaster@bacicountry.com, postmaster@backcluntry.com, postmaster@backco8ntry.com, postmaster@backcoubtry.com, postmaster@backcountrh.com, postmaster@backcounyry.com, postmaster@backcouuntry.com, postmaster@backxountry.com, postmaster@bafkcountry.com, postmaster@hackcountry.com, postmaster@backc9untry.com, postmaster@backcojntry.com, postmaster@backcoungry.com, postmaster@backcountfy.com, postmaster@backcountru.com, postmaster@backcoyuntry.com, postmaster@backsountry.com, postmaster@bacmcountry.com, postmaster@baskcountry.com, and postmaster@beackcountry.com by e-mail. Also on August 2, 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 September 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a provider of online retail and e-commerce outdoor products for backcountry excursions, including backpacking, climbing, skiing, snowboarding, and trail running.
Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its BACKCOUNTRY.COM mark (including Reg. No. 3,243,545, registration application filed September 27, 2004, registration issued May 22, 2007).
Respondent is not commonly known by the disputed domain names, and Complainant has not given Respondent permission to use its mark in any way.
Respondent registered the disputed <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com> domain names on August 24, 2006.
Respondent’s domain names resolve to websites that display links to the websites of Complainant’s commercial competitors as well as to unrelated websites, and Respondent receives click-through fees from the linked websites.
Respondent’s disputed domain names are confusingly similar to Complainant’s mark BACKCOUNTRY.COM.
Respondent does not have any rights to or legitimate interests in any of the disputed domain names.
Respondent registered and uses the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) Each of the same domain names 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.
Preliminary Issue: Multiple Respondents
Complainant alleges that the entities which control all of the
domain names at issue are effectively the same person or entity, which is
operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides
that a “complaint may relate to more than one domain name, provided that the
domain names are registered by the same domain name holder.” Complainant has submitted sufficient evidence
to show that Respondent is one entity operating under a variety of aliases.
Therefore, we conclude that Respondent is a single entity that controls all of the
domain names at issue, and we will proceed accordingly.
Complainant has established rights in its BACKCOUNTRY.COM mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, complainant has met the
requirements of Policy ¶ 4(a)(i).
Further, although the disputed domain names were registered
on August 24, 2006, which is before Complainant’s registration date with the
USPTO, Complainant’s rights in its mark date from its original trademark registration
application filing date of September 27, 2004.
See Hershey
Moreover, it is of
no consequence that Complainant’s rights derive from registration of its mark
in the
The <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com> domain names are confusingly similar to Complainant’s BACKCOUNTRY.COM mark. Each domain name contains a misspelled version of Complainant’s BACKCOUNTRY.COM mark. Misspelling a mark in forming a domain name does not render the domain name distinct from the mark under Policy ¶ 4(a)(i). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s domain names were confusingly similar to a complainant’s mark because the disputed domain names were common misspellings of the mark); see also 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 a complainant’s NEIMAN MARCUS mark, which was evidence that the domain name was confusingly similar to the mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights to or legitimate interests in the disputed domain names. Complainant is required to make out a prima facie case in support of these allegations. Once Complainant has produced such a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
See also 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.”).
Complainant has produced a prima facie case under this head of the Policy. And, owing to Respondent’s failure to respond
to the Complaint filed in this proceeding, the Panel may presume that Respondent
does not have rights to or legitimate interests in the disputed domain names. 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.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent failed to respond to a complaint filed under the Policy).
Nonetheless, we will review the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by observing that Complainant argues, and
Respondent does not deny, that Respondent is not commonly known by the disputed
domain names, and that Complainant has not given Respondent permission to use
its mark in any way. Moreover, the WHOIS
information for the disputed domain names does not indicate that Respondent is
commonly known by any of the domain names.
0n this record, we must conclude that Respondent is not commonly known
by the disputed domain names so as to have demonstrated that it has rights to
or legitimate interests in any of the contested domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a
respondent was not commonly known by the <lilpunk.com> domain name, where
there was no evidence in the record showing that that respondent was commonly
known by the domain name, and where a complainant asserted that it did not
authorize or license that respondent’s use of its mark in a domain name); 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 disputed
domain name).
Complainant also contends, without objection
from Respondent, that Respondent is using the disputed domain names to redirect
Internet users to websites that feature links to the websites of businesses
that compete with Complainant, and that Respondent receives click-through fees
from the linked websites. Such a use is
not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair used under Policy
¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
Finally, it is evident that Respondent is taking advantage
of Internet users who are trying to reach Complainant’s official
<backcountry.com> website by using common misspellings of Complainant’s
BACKCOUNTRY.COM mark in forming the disputed domain names, thus redirecting
Internet users to competing businesses.
This is typo-squatting, which is evidence that Respondent lacks rights to
or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
typosquatting, which
provides additional evidence that respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii).
See also 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 a complainant's LTD COMMODITIES mark, and that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Therefore, the Panel finds that Respondent has no rights to or legitimate interests in any of the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent is using the disputed
domain names to redirect Internet users to websites for the businesses of
Complainant’s competitors, thus disrupting Complainant’s business. This use of the disputed domain names is
evidence that Respondent registered and uses the domain names in bad faith
pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v.
Respondent receives click-through fees from the businesses
and websites that are advertised on and linked to Respondent’s website. This is evidence of Respondent’s bad faith
registration and use of the contested domain names under Policy ¶ 4(b)(iv). See
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).
See also 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 under Policy ¶ 4(b)(iv) where a domain name that was confusingly similar to a complainant’s mark was used to host links to third-party websites featuring services similar to those offered by a complainant).
We have already concluded that Respondent’s registration and use of the contested domain names constitutes typosquatting. This is also evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii). See 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typosquatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 each of the <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 7, 2010
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