Etsy, Inc. v. Above.com Domain Privacy
Claim Number: FA1108001404127
Complainant is Etsy, Inc. (“Complainant”), represented by David A. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etsyy.com>, registered with Above, Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2011; the National Arbitration Forum received payment on August 23, 2011.
On August 22, 2011, Above, Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <etsyy.com> domain name is registered with Above, Pty Ltd and that Respondent is the current registrant of the name. Above, Pty Ltd has verified that Respondent is bound by the Above, Pty 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 August 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@etsyy.com. Also on August 24, 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 September 16, 2011, 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 provides an online platform from which Internet users from more than 150 countries buy and sell handmade goods.
Complainant owns trademark registrations for the ETSY mark on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 3,180,068, registered December 5, 2006.
Respondent registered the <etsyy.com> domain name on December 16, 2008.
The disputed domain name resolves to a generic website advertising pay-per-click links related to jewelry, part time work, online auctions, videos, and other competing and unrelated topics.
Respondent’s <etsyy.com> domain name is confusingly similar to Complainant’s ETSY mark.
Respondent is not commonly known by the <etsyy.com> domain name.
Complainant has not authorized Respondent to use the ETSY service mark.
Respondent does not have any rights to or legitimate interests in the domain name <etsyy.com>.
Respondent registered and uses the <etsyy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 a UDRP 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;
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 has rights in its ETSY service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). See, for example, AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), and Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007), each finding rights in a complainant’s mark owing to mark registration with a national trademark authority.
Respondent’s <etsyy.com> domain name is confusingly similar to Complainant’s ETSY mark because the disputed domain name is simply a misspelling of Complainant’s mark — it contains an extra letter “y” — combined with the generic top-level domain (“gTLD”) “.com.” In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), a panel found that a misspelling consisting of the addition of a single letter to the mark of another in forming a contested domain name did not avoid a finding of confusing similarity as to the disputed domain. Similarly, panels have frequently determined that the presence of an appended gTLD does not avoid a finding of confusing similarity as between the resulting domain name and the mark from which it was derived. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
The Panel therefore finds that Respondent’s <etsyy.com> domain is confusingly similar to Complainant’s ETSY service mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <etsyy.com> domain name. Once a complainant makes out a prima facie case in support of its allegations in this regard, under Policy ¶ 4(a)(ii), the burden shifts to a respondent to prove that it does have such rights or interests. 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.
Complainant has made out a sufficient prima facie case under this head of the Policy. Owing to Respondent’s failure to respond to the Complaint, we may therefore presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004), finding that, because a respondent failed to submit a response to a UDRP complaint:
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.
Nonetheless, 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 disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <etsyy.com> domain name, and that Complainant has not authorized Respondent to use the ETSY mark. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Above.com Domain Privacy,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested 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, and so had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that the 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 mark); see also St. Lawrence Univ. v. Nextnet Tech., FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the <etsyy.com> domain name to display pay-per-click links to a variety of commercial websites, including some that relate to the sale of goods and services identical to those of Complainant. Using the disputed domain name, which appropriates and is confusingly similar to Complainant’s mark, in this manner 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a domain name confusingly similar to the mark of a complainant was not 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a domain name confusingly similar to the mark of another does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or whether a respondent is itself profiting from click-through fees).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s website resolving from the disputed domain name displays links that direct Internet traffic to the websites of Complainant’s business competitors. This diversion disrupts Complainant’s business and demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a search engine with links to websites offering the products of both a complainant and of that complainant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to the mark of another to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent’s use of the ETSY mark in the <etsyy.com> domain name creates a likelihood of confusion as to the possibility that Complainant is the source of, or affiliated with, Respondent’s resolving website. Respondent presumably receives income from this behavior. This is thus an evident attempt to attract Internet users to Respondent’s website for commercial gain, which demonstrates bad faith registration and use of the domain name 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 T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <etsyy.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard , Panelist
Dated: September 30, 2011
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