BUYSEASONS, INC. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1205001444579
Complainant is BUYSEASONS, INC. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coustumeexpress.com>, registered with Answerable.com (I) Pvt Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2012; the National Arbitration Forum received payment on May 17, 2012.
On May 18, 2012, Answerable.com (I) Pvt Ltd confirmed by e-mail to the National Arbitration Forum that the <coustumeexpress.com> domain name is registered with Answerable.com (I) Pvt Ltd and that Respondent is the current registrant of the name. Answerable.com (I) Pvt Ltd has verified that Respondent is bound by the Answerable.com (I) Pvt 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 May 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@coustumeexpress.com. Also on May 18, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its COSTUME EXPRESS mark (e.g., Reg. No. 3,349,346 filed July 9, 2004; registered December 4, 2007). Complainant has used its COSTUME EXPRESS mark in its business as a party and costume retailer in the United States since 2003, offering costumes, costume accessories, and Halloween decorations. Complainant owns the <buycostumes.com>, <celebrateexpress.com>, <birthdayexpress.com>, and <costumeexpress.com> domain names through which Complainant offers its products for sale.
Respondent registered the <coustumeexpress.com> domain name on September 15, 2005. Respondent’s domain name resolves to a website that features a list of hyperlinks to competing third-party websites. The domain name is confusingly similar to Complainant’s mark. Respondent’s registration of the disputed domain name is a classic example of “typosquatting.” Respondent is not commonly known by the <coustumeexpress.com> domain name, and Complainant has not authorized Respondent’s use of the COSTUME EXPRESS mark. Respondent has no legitimate affiliation with Complainant. Respondent receives “pay-per-click” revenue from the hyperlinks posted on the resolving website, and is not using the disputed domain name in a way that demonstrates a bona fide offering of goods or services or a legitimate noncommercial use. Respondent is involved in a pattern of bad faith registration of other infringing domain names not involved in the current dispute.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark for the COSTUME EXPRESS mark with the USPTO. Respondent did not 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."
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 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.”).
Complainant alleges that it owns a trademark registration for its COSTUME EXPRESS mark with the USPTO (e.g., Reg. No. 3,349,346 filed July 9, 2004; registered December 4, 2007). Registration of a mark with the USPTO satisfies the requirement of Policy ¶ 4(a)(i). Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007). Furthermore, under Policy ¶ 4(a)(i), the Complainant need not register its mark in St. Vincent and the Grenadines, where Respondent resides and operates. See 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).
Complainant contends that the <coustumeexpress.com> domain name is confusingly similar to its COSTUME EXPRESS mark, because the disputed domain name differs by only one letter (“u”) and adds the generic top-level domain (“gTLD”) “.com.” The panel in CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002), found that a domain name was confusingly similar to the complainant’s mark because only one letter was different between the mark and the domain name. The Panel also notes that the disputed domain name does not include the space between the words in the COSTUME EXPRESS mark. In Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel concluded that the addition of a gTLD is irrelevant in relation to a Policy ¶ 4(a)(i) analysis. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel stated that eliminating spaces between a mark’s words and adding a gTLD does not create distinctiveness from a mark pursuant to the Policy. The Panel therefore determines that the addition of one letter and a gTLD to the disputed domain name does not change the <coustumeexpress.com> domain name’s confusing similarity to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <coustumeexpress.com> domain name, alleging that the WHOIS information identifies “Private Registrations Aktien Gesellschaft / Domain Admin” as the registrant. Complainant contends that it has not given Respondent permission or license to register any domain names using Complainant’s COSTUME EXPRESS mark. The Panel finds that as the foregoing contentions are uncontradicted, the Respondent is not commonly known by the <coustumeexpress.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <coustumeexpress.com> domain name to redirect Internet users to a website displaying a list of hyperlinks to competing businesses does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. The panel in Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005), found that the respondent’s use of the disputed domain name to offer services which competed with services offered by the complainant was not a bona fide offering of goods or services. In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel stated that using a confusingly similar domain name to redirect Internet traffic to competing websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent has not demonstrated 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) by displaying various competing hyperlinks at the resolving website.
Complainant argues that Respondent engages in classic “typosquatting” behavior by registering a domain name that uses a misspelled version of its COSTUME EXPRESS mark. The panel in Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007), concluded that the <miscrossoft.com> disputed domain name demonstrated typosquatting, which was evidence that the respondent lacked rights and legitimate interests in the disputed domain name. In IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), the panel found that the respondent did not have rights and legitimate interests in the disputed domain name because it took advantage of mistakes by Internet users who misspell the complainant’s mark when attempting to access the complainant’s website. The Panel determines that Respondent’s registration of a misspelled version of Complainant’s mark amounts to typosquatting, which indicates that Respondent lacks rights and legitimate interests in the <coustumeexpress.com> domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is the subject of numerous other UDRP decisions against it, and provides evidence of adverse decisions transferring disputed domain names from Respondent to the holder of the mark. See, e.g., GOLFNOW, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1430960 (Nat. Arb. Forum Mar. 30, 2012); Panduit Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1417221 (Nat. Arb. Forum Jan. 11, 2010). The Panel concludes that prior UDRP decisions ordering the transfer of disputed domain names containing trademarks belonging to other entities establishes Respondent’s pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Time Warner Inc. v. Zone MP3, FA 1008035 (Nat. Arb. Forum July 25, 2007) (stating that numerous adverse panel decisions involving the respondent’s registration of confusingly similar domain names demonstrates a pattern of bad faith registrations).
Complainant argues that Respondent reveals bad faith registration and use by hosting a website at the disputed domain name that offers visitors a series of generic “click-through” hyperlinks for third-party businesses in competition with Complainant’s business. Complainant alleges that the hyperlinks lead to services and products also offered by Complainant’s business, and that Respondent takes advantage of Complainant’s well-known mark in order to gain a competitive edge over Complainant. The Panel finds that Respondent is engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by its use of a confusingly similar domain name to attract Internet traffic to its website, where it displays hyperlinks that presumably contribute to Respondent’s commercial gain. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”)
Complainant alleges that by registering a domain name created from a misspelled version of Complainant’s COSTUME EXPRESS mark, Respondent is involved in typosquatting behavior, which provides evidence of bad faith.[1] The panel in Canadian Tire Corp., Ltd., v. domain administrator no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003), concluded that the respondent demonstrated bad faith in its registration and use of the disputed domain name by attempting to foster confusion between its website and the complainant’s mark through the respondent’s “persistent practice of ‘typosquatting.’” In The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004), the panel stated that the respondent’s use of typosquatting is evidence of its bad faith registration and use. The Panel concludes that Respondent’s registration and use of the <coustumeexpress.com> domain name amounts to bad faith under Policy ¶ 4(a)(iii) because the disputed domain name is a misspelled version of Complainant’s COSTUME EXPRESS mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coustumeexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 18, 2012
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