Redcats USA v. Zhichao Yang
Claim Number: FA1209001462454
Complainant is Redcats USA (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <womanwithin.co>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2012; the National Arbitration Forum received payment on September 12, 2012.
On September 13, 2012, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <womanwithin.co> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. 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 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@womanwithin.co. Also on September 14, 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 October 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Redcats USA, is a dynamic, multi-channel, web-driven home-shopping leader, with numerous well-known brands in its portfolio: Woman Within®, Jessica London®, Roaman’s®, KingSize®, BrylaneHome® and BrylaneHome® Kitchen sold on OneStopPlus.com®, The Sportsman’s Guide® and The Golf Warehouse®, Bargain Outfitters and BCO®.
Complainant operates a home-shopping network that markets merchandise such as men and women’s plus-size apparel, home and lifestyle products, and sporting goods. Included among Complainant’s brands is Woman Within, a woman’s plus-size apparel line dedicated to comfort, style, and value. Complainant has used the WOMAN WITHIN mark since January 2, 1990.
Complainant sells its Woman Within products online at the domain name <womanwithin.com>. Complainant’s WOMAN WITHIN brand has been successful since the website was launched in 2006 and currently enjoys wide consumer recognition.
Complainant owns trademark registrations for its marks with the United States Patent and Trademark Office (“USPTO”), including registrations for its WOMAN WITHIN mark (Reg. No. 3,220,573 registered March 20, 2007), as well as its THE WOMAN WITHIN mark (Reg. No. 1,167,731 registered October 16, 1990).
Respondent registered the <womanwithin.co> domain name on September 27, 2011.
The <womanwithin.co> domain name is identical to Complainant’s WOMAN WITHIN mark.
Respondent is not affiliated with Complainant and has not received permission to use Complainant’s mark.
Respondent uses the disputed domain name to divert Internet users to a website containing links to third-party websites, some of which are competitors of Complainant. Respondent receives referral fees by from the competing businesses in exchange for linking their websites.
Respondent’s bad faith is shown by its use of the disputed domain name to disrupt Complainant’s business, as well as to confuse and attract Internet traffic to Respondent’s website in order to make a profit.
Use of the domain name is for the purpose of typosquatting.
Respondent holds other domain name registrations that appear to be examples of typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its WOMAN WITHIN mark, as well as its THE WOMAN WITHIN mark.
Respondent registered the <womanwithin.co> domain name subsequent to Complainant acquiring rights in its relevant trademarks.
Respondent is not authorized to use Complainant’s trademark(s).
The at-issue domain name addresses a website containing links to third-party webpages, some of which reference competitors of Complainant.
Respondent receives, or desires to receive, “click-through” fees via the links displayed on the website addressed by the at-issue domain name.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the WOMAN WITHIN mark under Policy ¶ 4(a)(i) through the registration of such mark with the USPTO. Respondent’s location outside of the United States is irrelevant to this determination. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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).
The only difference between Complainant’s trademark and the at-issue domain name is the addition of the country-code top-level domain, “.co.” and the elimination of the space between the terms of Complainant’s mark. Therefore, the Panel finds that the <womanwithin.co> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Mars, Inc. v. Dayal, FA 1381704 (Nat. Arb. Forum Apr. 30, 2011) (concluding that by adding only the ccTLD “.co,” the respondent “fails to sufficiently differentiate its disputed domain name” from the complainant’s SNICKERS mark, thereby making the two identical under Policy ¶ 4(a)(i)).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <womanwithin.co> domain name as “Zhichao Yang” and there is no evidence of record tending to prove that Respondent is commonly known by the at-issue domain name notwithstanding the WHOIS record. The Panel therefore concludes that Respondent is not commonly known by the <womanwithin.co> domain name for the purposes of Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the <womanwithin.co> domain name to divert unsuspecting Internet users to a website that displays generic links to commercial websites, some of which compete with Complainant’s business. Using the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the <womanwithin.co > domain name under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As alluded to above, the <womanwithin.co> domain name references a “click-through” website that offers hyperlinks to businesses that compete with Complainant. Using a domain name that is identical to Complainant’s trademark in this manner is likely to divert potential customers away from Complainant’s business and creates a disruption to such business. These circumstances demonstrate Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy ¶4(a)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that where the disputed domain name resolved to a website that listed links to the complainant’s competitors, such use provided evidence of the respondent’s intent to disrupt the complainant’s business and showed the respondent’s bad faith).
Additionally, Respondent apparently intends to collect revenue for every Internet user that is diverted to the webpages whose hyperlinks are displayed on Respondent’s <womanwithin.co> website. Respondent intends to create and exploit consumer confusion between the <womanwithin.co> domain name and Complainant’s mark in order to attract revenue generating Internet traffic to its website. These findings indicate Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, the at-issue domain name differs from Complainant’s domain name by a single top-level character. Respondent clearly desires that Internet users mistyping Complainant’s authorized URL by leaving off the “m” in “.com” when trying to access Complainant’s authorized website will instead be misdirected to Respondent’s <womanwithin.co> website. These circumstances indicate typosquatting and bad faith registration and use under Policy ¶4(a)(iii). See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'... through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith."); see also Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568, (holding that “[t]yposquatting” is virtually per se registration and use in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <womanwithin.co> domain name be TRANSFERRED from Respondent.
Paul M. DeCicco, Panelist
Dated: October 10, 2012
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