national arbitration forum

 

DECISION

 

Redcats USA, L.P. v. Texas International Property Associates

Claim Number: FA1008001339543

 

PARTIES

Complainant is Redcats USA, L.P. (“Complainant”), represented by Stephen M. Werner, of Redcats USA, Indiana, USA.  Respondent is Texas International Property Associates (“Respondent”), Texas, USA

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <romanscatalogue.com>, registered with Compana LLC.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2010.

 

On August 11, 2010, Compana LLC confirmed by e-mail to the National Arbitration Forum that the <romanscatalogue.com> domain name is registered with Compana LLC and that Respondent is the current registrant of the name.  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 August 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@romanscatalogue.com by e-mail.  Also on August 11, 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 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <romanscatalogue.com> domain name is confusingly similar to Complainant’s ROAMAN’S mark.

 

2.      Respondent does not have any rights or legitimate interests in the <romanscatalogue.com> domain name.

 

3.      Respondent registered and used the <romanscatalogue.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Redcats USA, L.P., is a marketer and distributor of women’s apparel, footwear, and accessories that operates through mail order catalogue merchandising as well as online retail catalogue services.  Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ROAMAN’S mark (e.g., Reg. No. 1,169,405 issued September 15, 1981).

 

Respondent, Texas International Property Associates, registered the <romanscatalogue.com> domain name on December 6, 2005.  Respondent’s disputed domain name resolves to a website that features third-party hyperlinks to Complainant’s official website and to both competing and unrelated websites.

 

Complainant offers evidence that Respondent has a history of registering domain names that infringe on the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants.  See Benchmark Brands, Inc. v. Tex. Int’l Prop. Assocs. – NA NA, FA 1331222 (Nat. Arb. Forum July 28, 2010); see also Redcats USA, L.P. v. Tex. Int’l Prop. Assocs., FA 960604 (Nat. Arb. Forum June 11, 2007); see also Goya Foods, Inc. v. Tex. Int’l Prop. Assocs. NA NA, FA 1316364 (Nat. Arb. Forum May 12, 2010); see also VistaPrint USA, Inc. v. Tex. Int’l Prop. Assocs. NA NA, FA 1219057 (Nat. Arb. Forum Sept. 24, 2008); see also LegalZoom.com, Inc. v. Tex. Int’l Prop. Assocs. NA NA, FA 1312819 (Nat. Arb. Forum April 27, 2010).

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in its ROAMAN’S mark under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO (e.g., Reg. No. 1,169,405 issued September 15, 1981).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant contends that the <romanscatalogue.com> domain name is confusingly similar to Complainant’s ROAMAN’S mark.  Complainant argues that the disputed domain name merely removes the letter “a” and the apostrophe from its mark while adding the descriptive term “catalogue” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent’s <romanscatalogue.com> domain name is confusingly similar to Complainant’s ROAMAN’S mark under Policy ¶ 4(a)(i).  See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also 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 finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights and legitimate interests in the <romanscatalogue.com> domain name under Policy ¶ 4(a)(ii).  Complainant is required to make a prima facie case in support of these allegations.  Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show it does have rights 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.”); 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.”).  The Panel finds that the Complainant has produced a prima facie case.  Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <romanscatalogue.com> 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.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  The Panel will review the evidence on record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complaint argues that Respondent is neither commonly known by the <romanscatalogue.com> domain name, nor has Complainant given Respondent permission to use Complainant’s mark.  The WHOIS information identifies “Texas International Property Associates” as the registrant of the <romanscatalogue.com> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name.  The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to 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 known by the disputed domain name); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).

 

Complainant further asserts that Respondent’s <romanscatalogue.com> domain name is not being used in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the domain name.  Respondent’s disputed domain name resolves to a website that displays third-party links to Complainant’s official websites and to websites offering women’s apparel, footwear, and accessories in competition with Complainant as well as links to unrelated businesses, presumably for profit.  The Panel finds that Respondent’s use of the disputed name to redirect Internet users to Complainant’s competitors as well as to unrelated websites, presumably for financial gain, does not constitute 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).  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).

 

Respondent is taking advantage of Internet users that are trying to reach Complainant’s official <roamanscatalogue.com> website by using common misspellings of Complainant’s ROAMAN’S mark.  The Panel finds that Respondent’s engagement in typosquatting is evidence that Respondent lacks any rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See 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).”); 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 Complainant's LTD COMMODITIES mark and 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 or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is a pattern cybersquatter with a history of registering domain names that infringe upon the trademark rights of others.  Further, Complainant argues that Respondent has been the respondent in numerous previous UDRP proceedings and has been ordered by the respective panels to transfer the disputed domain names to the complainants. See Benchmark Brands, Inc. v. Tex. Int’l Prop. Assocs. – NA NA, FA 1331222 (Nat. Arb. Forum July 28, 2010); see also Redcats USA, L.P. v. Tex. Int’l Prop. Assocs., FA 960604 (Nat. Arb. Forum June 11, 2007); see also Goya Foods, Inc. v. Tex. Int’l Prop. Assocs. NA NA, FA 1316364 (Nat. Arb. Forum May 12, 2010); see also VistaPrint USA, Inc. v. Tex. Int’l Prop. Assocs. NA NA, FA 1219057 (Nat. Arb. Forum Sept. 24, 2008); see also LegalZoom.com, Inc. v. Tex. Int’l Prop. Assocs. NA NA, FA 1312819 (Nat. Arb. Forum April 27, 2010).  The Panel finds that Respondent’s registration and use of the <romanscatalogue.com> domain name was made in bad faith under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); 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 the respondent previously registered domain names incorporating well-known third party trademarks). 

 

Complainant argues that Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s official <roamanscatalogue.com> domain name to Respondent’s website creates a disruption to Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  Complainant argues that Respondent’s use of the confusingly similar domain name to display third-party links to competitors of Complainant leads to a loss of sales for Complainant.  The Panel agrees and finds that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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).

 

Complainant further alleges that Respondent’s use of the <romanscatalogue.com> domain name to intentionally attract Internet users to Respondent’s website for commercial gain is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  Complainant argues that Respondent’s disputed domain name creates a likelihood of confusion between the disputed domain name and Complainant’s mark as well as Complainant’s official <roamanscatalogue.com> domain name, and Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites in competition with Complainant that are displayed on Respondent’s website.  The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and this use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

Complainant alleges that Respondent is taking advantage of a common typing error by omitting the “a” in the ROAMAN’S mark to redirect Internet users seeking Complainant’s website to its own website.  Complainant argues that Respondent is using the disputed domain name for commercial gain by creating consumer confusion through exploitation of a typographical error and diverting web traffic intended for Complainant’s official <roamanscatalogue.com> website to Respondent’s website.  The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) where it is taking advantage of a common misspelling of Complainant’s mark.  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 The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <romanscatalogue.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 23, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum