Charming Shoppes, Inc. v. Kiansu Thoi
Claim Number: FA1009001347369
Complainant is Charming Shoppes, Inc. ("Complainant"), represented by CitizenHawk, Inc., California, USA. Respondent is Kiansu Thoi ("Respondent"), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lanebyrant.com>, registered with DotRegistar.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 September 20, 2010; the National Arbitration Forum received payment on September 20, 2010.
On September 20, 2010, DotRegistar.com confirmed by e-mail to the National Arbitration Forum that the <lanebyrant.com> domain name is registered with DotRegistar.com and that Respondent is the current registrant of the name. DotRegistar.com has verified that Respondent is bound by the DotRegistar.com 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 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@lanebyrant.com. Also on September 21, 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 October 22, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 owns the exclusive rights to use its LANE BRYANT mark in connection with its retail business specializing in plus-size women’s clothing, shoes and accessories.
Complainant conducts business both in stores and online, and operates the website <lanebryant.com.>
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LANE BRYANT mark (including Reg. No. 1,293,460 issued September 4, 1984).
Respondent registered the <lanebyrant.com> domain name on May 20, 2004.
The disputed domain name resolves to a blank website of which Respondent is not currently making an active use.
Respondent’s <lanebyrant.com> domain name is confusingly similar to Complainant’s LANE BRYANT mark.
Respondent is not authorized to use the LANE BRYANT mark.
Respondent does not have any rights to or legitimate interests in the <lanebyrant.com> domain name.
Respondent has been a respondent in other UDRP proceedings in which disputed domain names were transferred from Respondent to the respective complainants in those cases.
Respondent registered and uses the <lanebyrant.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 trademark 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’s registrations with a national trademark authority are sufficient to establish its rights in the LANE BRYANT trademark pursuant to Policy ¶ 4(a)(i). 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).
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.”
Respondent’s <lanebyrant.com> domain name is confusingly similar to Complainant’s LANE BRYANT mark. The disputed domain name contains Complainant’s entire mark, misspells BRYANT by transposing the ‘r’ and ‘y,’ and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the misspelling of a famous mark and the addition of a gTLD do nothing to distinguish a respondent’s domain name from a competing mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that “[t]he 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 typographical error”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that Respondent’s <lanebyrant.com> domain name is confusingly similar to Complainant’s LANE BRYANT mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <lanebyrant.com> domain name. Previous panels have found that when a complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to a respondent to show that it does have rights to or legitimate interests in a contested 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 made out the requisite prima facie case under this head of the Policy. And, owing to Respondent’s failure to respond to the allegations of the Complaint, we are free to conclude that Respondent does not have rights to or legitimate interests in the <lanebyrant.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that there is no evidence in the record to indicate that Respondent is commonly known by the <lanebyrant.com> domain name. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Kiansu Thoi,” which does not resemble the disputed domain name. In addition, Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the LANE BRYANT mark. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have established rights to or legitimate interests in the <lanebyrant.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); 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 pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also note that there is no dispute as to Complainant’s assertion that Respondent does not currently make an active use of the <lanebyrant.com> domain name. This inactive use of a domain name 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 Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that a respondent lacked rights to or legitimate interests in a contested domain name as to which it had not made demonstrable preparations to use it since its registration seven months prior to the filing of a complaint under the Policy); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain).
Further, it is evident that, in forming the disputed domain name, Respondent took advantage of a common misspelling of Complainant’s mark. This constitutes typo-squatting, which is evidence that Respondent lacks rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that a respondent’s <wwwdinersclub.com> domain name, a typo-squatted version of a complainant’s DINERS CLUB mark, was itself evidence that that respondent lacked rights to or legitimate interests in the disputed domain name); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.
The Panel thus finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Respondent is a cybersquatter due to its previous registration and use of domain names which are confusingly similar to famous marks. See Amazon.com, Inc. v. Kiansu Thoi – NA NA, FA 231669 (Nat. Arb. Forum Mar. 19, 2004); see also Hotwire, Inc. v. Kiansu Thoi NA NA, FA 743605 (Nat. Arb. Forum Aug. 18, 2006). We agree. Respondent’s pattern of registration and misuse of disputed domain names, as alleged, constitutes evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(ii). See 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) where a respondent previously registered domain names incorporating well-known third party trademarks); see also N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Nat. Arb. Forum Nov. 3, 2003) (finding that evidence that listed a respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that that respondent had shown a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)).
Respondent is engaged in typo-squatting by using the contested domain name, formed by means of a misspelling of Complainant’s mark, to divert Internet users searching for Complainant’s website. This use of the domain is in bad faith pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005):
Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] … mark.
See also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004):
By engaging in typosquatting, Respondent has registered and used the … domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) is 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 the <lanebyrant.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 2, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page