Etsy, Inc. v. Elizabeth McKinstry
Claim Number: FA1109001407949
Complainant is Etsy, Inc. (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Elizabeth McKinstry (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org>, registered with GoDaddy.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2011; the National Arbitration Forum received payment on September 20, 2011.
On September 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@etsysucks.com, postmaster@etsysucks.biz, postmaster@etsysucks.info, postmaster@etsysucks.net, and postmaster@etsysucks.org. Also on September 21, 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 October 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names are confusingly similar to Complainant’s ETSY mark.
2. Respondent does not have any rights or legitimate interests in the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names.
3. Respondent registered and used the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Etsy, Inc., provides an online platform at which people buy and sell handmade goods. Complainant offers this service under its ETSY mark that it has registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,179,782 registered December 5, 2006).
Respondent, Elizabeth McKinstry, registered the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names on February 26, 2008. The disputed domain names resolve to websites hosted by GoDaddy.com, the registrar, and contain hyperlinks to unrelated third-parties. Respondent has offered to sell the disputed domain names to Complainant and has implied it intends to sell the domain names to the general public.
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 claims it owns Policy ¶ 4(a)(i) rights based on its long standing use of the ETSY mark and its trademark registrations with the USPTO (e.g., Reg. No. 3,179,782 registered December 5, 2006). Previous panels have found that a trademark registration with the USPTO establishes a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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.”). The Panel agrees with this precedent and finds accordingly.
Complainant alleges that the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names are confusingly similar to Complainant’s ETSY mark because Respondent simply adds the generic term “sucks” and a generic top-level domain (“gTLD”) to Complainant’s mark. Past panels have found similar additions fail to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument); 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 concurs and holds that Respondent’s <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names are confusingly similar to Complainant’s ETSY mark for the purposes of Policy ¶ 4(a)(i).
The Panel holds that Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). 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.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names. Complainant asserts that it has not authorized Respondent to use Complainant’s ETSY mark in a domain name. The WHOIS information identifies the registrant of the disputed domain names as “Elizabeth McKinstry.” Respondent has not responded to this case and has, therefore, not presented any evidence that it is commonly known by the disputed domain names. Prior panels have found that a respondent is not commonly known by a disputed domain name when the respondent was not authorized to use a complainant’s mark and the WHOIS information did not support a finding that the respondent was commonly known by the disputed domain name. 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the 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 the complainant had not authorized the respondent to register a domain name containing its registered mark). Thus, the Panel concludes that Respondent is not commonly known by the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names pursuant to Policy ¶ 4(a)(ii).
Complainant does not make any allegations regarding the use of the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names except to say that Respondent fails to use the disputed domain names. However, Complainant does provide screen shot evidence of the resolving websites that show websites hosted by the registrar, GoDaddy.com, that contain hyperlinks to third-parties unrelated to Complainant. Past panels have found that such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Based on this precedent, the Panel concludes that Respondent has not established rights and legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has attempted to sell the disputed domain names to Complainant. Complainant provides an e-mail from Respondent that reads: “I’m interested in selling it (plus .biz, .info, .net, and .org). I thought that before I put it up on ebay or sedo or whatever, you folks might want it. Let me know.” Previous panels have held that an offer to sell a disputed domain name to a complainant is evidence that a respondent lacks rights and legitimate interests in a domain name. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark). The Panel agrees and finds that Respondent lacks rights and legitimate interests in the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names pursuant to Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant claims that Respondent’s offer to sell the disputed domain name to Complainant is evidence of bad faith registration and use. Prior panels have found that a respondent has registered and used a disputed domain name in bad faith under Policy ¶ 4(b)(i) when the respondent offered to sell the disputed domain name to a complainant. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). The Panel finds that Respondent both registered and uses the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also alleges that Respondent’s registration and use of five domain names that contain Complainant’s ETSY mark is evidence of bad faith registration and use. Past panels have determined that the registration of multiple domain names containing a complainant’s mark is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). The Panel finds similar bad faith registration and use under Policy ¶ 4(b)(ii) in this case.
Complainant’s screen shots reveal websites that contain hyperlinks to third-parties unrelated to Complainant. The Panel presumes that Respondent commercially benefits from these hyperlinks by way of click-through fees. Previous panels have concluded that a respondent’s registration and use of a disputed domain name to offer unrelated hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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)); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel concludes that Respondent registered and uses the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etsysucks.com>, <etsysucks.biz>, <etsysucks.info>, <etsysucks.net>, and <etsysucks.org> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 1, 2011
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