Provide Commerce, Inc. v. Media International SA / Hector Ortega
Claim Number: FA1201001422445
Complainant is Provide Commerce, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Media International SA / Hector Ortega (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <profloweers.com>, registered with Power Brand Center Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2012; the National Arbitration Forum received payment on January 4, 2012.
On January 6, 2012, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <profloweers.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 January 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2012 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@profloweers.com. Also on January 23, 2012, 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 February 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <profloweers.com> domain name is confusingly similar to Complainant’s PROFLOWERS mark.
2. Respondent does not have any rights or legitimate interests in the <profloweers.com> domain name.
3. Respondent registered and used the <profloweers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Provide Commerce, Inc., operates an online retailer which sells flowers and other plants, as well as gifts such as chocolates, vases, and stuffed animals. Complainant does business under the PROFLOWERS mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,476,976 registered August 14, 2001).
Respondent, Media International SA / Hector Ortega, registered the disputed domain name on August 8, 2003. Respondent uses the disputed domain name to resolve to Complainant’s own site through Complainant’s affiliate program, of which Respondent is a member.
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.
In support of its claim to rights in the PROFLOWERS mark, Complainant has offered evidence of its registration of the mark with the USPTO (Reg. No. 2,476,976 registered August 14, 2001). UDRP precedent is clear that registration of a mark with the USPTO is sufficient to confer rights in the mark to the trademark holder. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Moreover, past panels found that a complainant is not required to register a mark within the country that respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant has adequately demonstrated its rights in the PROFLOWERS mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <profloweers.com> domain name is confusingly similar to Complainant’s PROFLOWERS mark within the meaning of Policy ¶ 4(a)(i). The disputed domain name differs from Complainant’s mark only by the addition of an extra “e,” as well as the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have held that the addition of a single letter to a complainant’s mark does not distinguish a disputed domain name under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Moreover, the affixation of a gTLD can never distinguish a disputed domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds the elements of Policy ¶ 4(a)(i) to be satisfied.
In UDRP proceedings, the complainant carries the initial burden of presenting a prima facie case. Once this requirement has been satisfied, as it has been here, the burdens shifts to the respondent to present a response. 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.”). Respondent in the immediate case has failed to satisfy its burden of presenting a Response. Under similar facts, some panels have inferred an admission that a respondent lacks rights or legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). In the interest of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests exist under the Policy ¶ 4(c) factors.
Complainant alleges that Respondent is not commonly known by the <profloweers.com> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “Media International SA / Hector Ortega.” The Panel fails to finds any resemblance to the <profloweers.com> domain name, providing evidence that Respondent is not commonly known by the disputed domain name. 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). Complainant also states that it has not licensed or otherwise authorized Respondent to use its mark in any way. Without the benefit of a Response, the record is devoid of any evidence tending to show that Respondent is indeed commonly known by the disputed domain name. Without such evidence, the Panel concludes that Respondent is not commonly known by the <profloweers.com> domain name for the purposes of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent is not using the disputed domain name in connection with 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). Respondent uses the disputed domain name to resolve to Complainant’s own website through Complainant’s affiliate program, of which Respondent is a member. Complainant states that this practice violates the terms of the parties’ affiliate program agreement. Previous panels have found similar uses exhibit a lack of rights or legitimate interests under Policy ¶ 4(c)(i) and 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 Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). The Panel holds that Respondent is not using the disputed domain name in connection with 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).
Complainant argues that Respondent’s <profloweers.com> domain name contains a common misspelling of Complainant’s PROFLOWERS mark. Complainant claims that Respondent’s use of this misspelling constitutes typosquatting because Respondent attempts to take advantage of Internet users that misspell Complainant’s mark on the Internet. The Panel finds that Respondent’s typosquatting behavior evidences Respondent’s lack of rights and legitimate interests in the <profloweers.com> domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 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 Policy ¶ 4(a)(ii).”); see also 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’”).
The Panel finds the elements of Policy ¶ 4(a)(ii) to be satisfied.
Complainant contends that Respondent registered the <profloweers.com> domain name with Complainant’s affiliate program so that Respondent can commercially benefit each time an Internet user accesses Complainant’s website through Respondent’s domain name. Complainant argues that Respondent takes advantage of Internet users that mistakenly type in the common misspelling found in the disputed domain name. Based on this use, the Panel determines that Respondent registered and uses the <profloweers.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); 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 the Panel previously determined that Respondent is engaged in typosquatting, the Panel finds that Respondent registered and uses the <profloweers.com> domain name in bad faith under 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 the elements of Policy ¶ 4(a)(ii) to be 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 <profloweers.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 6, 2012
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