Cabela's, Inc. v. Elisa Browning
Claim Number: FA1009001345984
Complainant is Cabela's, Inc. ("Complainant"), represented by CitizenHawk, Inc., California, USA. Respondent is Elisa Browning ("Respondent"), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cableas.com> (“the Disputed Domain Name”) , registered with DIRECTNIC, 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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2010; the National Arbitration Forum received payment on September 13, 2010.
On September 14, 2010, DIRECTNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <cableas.com> domain name is registered with DIRECTNIC, LTD and that Respondent is the current registrant of the name. DIRECTNIC, LTD has verified that Respondent is bound by the DIRECTNIC, LTD registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@cableas.com. Also on September 14, 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.
A timely Response was received and determined to be complete on October 4, 2010.
On October 20, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
On October 25 the Panel issued an Order for Additional Submissions and Extending Time for rendering a decision giving 7 further days for the Complainant to respond and a timely response was received.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s submissions can be summarized as follows:
The Complainant is the largest mail order, retail and Internet outdoor outfitter in the world. It produces nearly 100 different catalogues per year and these are shipped to 50 states of the U.S. and 125 countries. A significant proportion of its retail sales are conducted at cabelas.com. It has used the mark CABELAS continuously since 1961 in relation to retail services and since 1998 for on line retail store services. It has spent hundreds of thousands of dollars in advertisement and promotion of the CABELAS mark in the media and on the Internet. It has U.S. federal trade mark registrations for the mark for its services and goods.
The Disputed Domain Name is confusingly similar to the Complainant’s CABELAS mark because it differs by only the juxtaposition of two characters from it. It is a typosquatting registration designed to take advantage of users typographical errors and so it must be confusingly similar by design.
Respondent has not been commonly known by the Disputed Domain Name, is not legitimately affiliated with the Complainant in any way and has no consent from the Complainant and is using the Disputed Domain Name to point to a website featuring generic links to third party web sites some of which compete directly with the Complainant’s business. This is not a bona fide offer of goods or services or a legitimate non commercial or fair use.
The Respondent registered the Disputed Domain Name at the earliest on June 12, 2000 significantly after the Complainant’s registration of its domain name cabelas.com.
The Domain Name had been registered and used in bad faith as it is a typosquatting registration, the Respondent owns other typosquatting registrations, and the Respondent has caused the Disputed Domain Name to display content directly related to the Complainant’s business showing that the misspelling was intentionally designed to improperly capitalize on the Complainant’s famous mark and business.
B. Respondent
The Respondent sent an e mail to the Forum the content of which can be summarized as follows:
The Disputed Domain Name was part of a generic domain name portfolio she attained a few months ago. There was never any interest in using it in a way which would step into trade mark or copyright territory. As a misspelling of “cables” a fair use term she was assured that the domain was mapped to a cables only related page. A Google search product that she was not aware of and did not give permission for was used on the page and brought up the unintended results. The Domain is now being used for cable content only and will only be used for such.
C. Additional Submissions
The Complainant in its answer to the Order of the Panel confirmed that the Respondent placed content on the Disputed Domain Name relating to cable products sold by the Complainant as well as the content placed directly in the centre of the web site that related to outdoor gear. The content placed in the centre relating to outdoor gear was directing any Internet user to look at that content first, however the content around also competes with the Complainant with goods such as coax cable, ethernet cables and fiber optic cables which the Complainant sells. The Complainant has a federal registration for CABELAS covering metal goods. The Complainant began retailing in cables prior to the date the Disputed Domain Name was registered. In addition the screen shot dated July 27, 2009 contained terms such as “Camping Hiking Gear” and “Discount Outdoor Gear.” Nearly one year later on August 20, 2010 the Registrant changed the content in the centre of the web site and added a link entitled “Cabelas Web Site” clearly indicating a link to the Complainant’s web site as well as to its competitors. As such the majority of the content on the Disputed Domain Name competes with the Complainant’s operations and industry.
The Complainant also clarified that the Respondent was the owner of the domain name aspensnowmas.com, a misspelling of aspensnowmass.com a domain name held by The Aspen Skiing Company who also hold two federal U.S. trade marks for Aspensnowmass and the Aspensnowmass registered trade marks and domain name were all registered prior to the aspensnowmas.com name by the Respondent. The content on the aspensnowmas.com typosquatting name relates to the Aspen Skiing Company’s primary business and even contains text with the phrase “Aspen Snowmass”. As such the Registrant is a serial typosquatter and capable of intentionally squatting on and profiting from the squatting of any domain name similar to that of a trade mark.
The Complainant has registered trade marks for CABELAS and has been using it for outdoor gear since 1961 and for cables since at least 1999. The Disputed Domain Name was registered on June 12, 2000 and has displayed content relating to outdoor gear and cables. The Respondent also owns another domain name aspensnowmas.com which appears to be a typosquatting version of the trade mark of the Aspen ski company ASPENSNOWMASS and has pointed to goods competing with that company’s business
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."
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 Complainant has registered trade marks for CABELAS and has been using it for outdoor gear since 1961 and for cables since at least 1999. Accordingly the Complainant has registered and unregistered trade mark rights in the name CABELAS. The Disputed Domain Name is very similar to the complainant’s registered trade mark with only two letters transposed the “e” and the “l”. As such the Panel finds that the Disputed Domain Name registered by the Respondent is confusingly similar to a trade mark in which the Complainant has rights. See Google Inc v. Jon G, FA 106084 (Nat. Arb. Forum April 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “the transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographic error.”).
While the Respondent claims that the Disputed Domain Name is generic and she had no knowledge of the links to outdoor gear and the Complainant’s web site displayed on the Disputed Domain Name she appears to own at least one other domain name which is a typosquatting version of a third party trade mark which is used to link to competing goods. Further the content on the Disputed Domain Name seems to have been changed as recently as August 2010 to contain a link titled “Cabelas web site” and the Respondent must be taken to be responsible for the content of the site attached to the Domain Name.
See Vance Int’l Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain name parking service providers, that activity is legally and practically attributable back to respondent. [The] respondent has given those service providers permission to use the Disputed Domains [The] Respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that [the] respondent is aware of the general nature of the services provided by those organizations and the business model they employ. The key fact here is that [the] respondent in collaboration with the domain name parking service providers is exploiting [the] complainant’s goodwill.”).
The Panel holds that the Complainant has shown on the balance of probabilities that the Disputed Domain Name is a typosquatting registration. Accordingly as well as not being commonly known by the Disputed Domain name or having no consent to use it the Panel finds that in using the registration as a typosquatting domain name the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate commercial or fair use under the Policy. The Respondent has not explained her ownership of another typosquatting registration and has not rebutted the Complainant’s prima facie case that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. See Microsoft Corp. v. Domain Registration Phillipines, FA 877979 (Nat. Arb. Forum February 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 the Policy.”); see also IndyMac Bank FSB v. Ebeyer, FA 175292 (Nat. Arb. Forum September 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”).
This is in addition to the use of the Disputed Domain Name as a link farm to web sites competing with the Complainant. See Disney Enters. Inc. v. Kamble, FA 918556 (Nat. Arb. Forum March 27, 2007) (holding that the operation of a pay per click web site at a confusingly similar domain name was not a bona fide offering of goods and services or a legitimate non commercial or fair use under the Policy); see also 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 web site other than links to a variety of third party web sites, it was not using a domain name in connection with a bona fide offering of goods and services or a legitimate non commercial or fair use under the Policy.)
Complainant argues that the Respondent’s typosquatting behavior, as evidenced by Respondent’s registration and use of the Disputed Doman Name and the aspensnowmas.com domain name, is evidence of Respondent’s bad faith registration and use. The Panel finds that the Respondent’s registration and use of a misspelled version of Complainant’s mark to point to third party goods competing with the Complainant constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”). As such the Panel finds that the Disputed Domain name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cableas.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 7, 2010
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