Cabela's, Inc. v. Domain Dotter
Claim Number: FA1104001385890
Complainant is Cabela's, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Dotter (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com>, <xabelas.com> and <xcabelas.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2011; the National Arbitration Forum received payment on April 27, 2011.
On April 28, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com>, <xabelas.com> and <xcabelas.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 April 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2011 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@cabelads.com, postmaster@cabwelas.com, postmaster@canbelas.com, postmaster@csabelas.com, postmaster@vcabelas.com, postmaster@xabelas.com and postmaster@xcabelas.com. Also on April 29, 2011, 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 May 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com>, <xabelas.com> and <xcabelas.com> domain names are confusingly similar to Complainant’s CABELAS mark.
2. Respondent does not have any rights or legitimate interests in the <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com>, <xabelas.com> and <xcabelas.com> domain names.
3. Respondent registered and used the <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com>, <xabelas.com> and <xcabelas.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cabela’s Inc., is a mail-order, retail and Internet outdoor outfitter. Complainant registered its CABELAS trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,130,554 issued August 15, 2006).
Respondent registered the <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com>, <xabelas.com> and <xcabelas.com> domain names on October 31, 2007. Each of the disputed domain names resolves to a website that redirects Internet users to Complainant’s website in an attempt to receive click-through fees from Complainant’s affiliate program.
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.
Complainant contends it has established rights in the CABELAS mark based on its registration of the mark with the USPTO (e.g., Reg. No. 3,130,554 issued August 15, 2006). Registration with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel concludes Complainant’s trademark registration of the CABELA’S mark with the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges the disputed domain names are confusingly similar to its CABELAS mark. The the <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com> and <xcabelas.com> domain names each have a single letter inserted into Complainant’s mark. The <xabelas.com> domain name was created by removing the beginning letter of Complainant’s mark and replacing it with the letter “x.” Additionally, each of the disputed domain names includes the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s actions have not resulted in unique domain names that are not confusingly similar to Complainant’s CABELAS mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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 established.
Complainant contends Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that a complainant making a prima facie showing in support of its allegations shifts the burden to the respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the disputed domain names under 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant argues Respondent is not commonly known by the disputed domain names and that Respondent never received authorization to use the CABELAS mark. After examining the record, the Panel cannot find any evidence that would provide a basis for finding Respondent is commonly known by the disputed domain names. Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant alleges that the <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com>, <xabelas.com> and <xcabelas.com> domain names each resolve to Complainant’s website in an attempt to receive click-through fees from Complainant’s affiliate program. The Panel finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor).
Complainant alleges the disputed domain names are evidence of Respondent’s typosquatting activities. Internet users who mistakenly misspell Complainant’s mark in an attempt to reach Complainant’s official website are likely to be redirected through Respondent’s domain names. Complainant contends Respondent’s domain names are all common spelling mistakes of its CABELAS mark and that Respondent’s typosquatting activities are evidence Respondent lacks rights or legitimate interests in the domain names. The Panel, pursuant to Policy ¶ 4(a)(ii), finds that Respondent has engaged in typosquatting which is evidence that Respondent lacks rights and legitimate interests in the disputed domain names. IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 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’”); 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”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent uses the disputed domain names to resolve Internet users to Complainant’s website. Complainant alleges that Respondent is in breach of Complainant’s affiliate program which results in financial gain for Respondent. The Panel finds this to be evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). See Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
As established previously, Complainant has engaged in typosquatting. The Panel finds that typosquatting is evidence of bad faith registration and use of the disputed domain names 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cabelads.com>, <cabwelas.com>, <canbelas.com>, <csabelas.com>, <vcabelas.com>, <xabelas.com> and <xcabelas.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 25, 2011
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