Skinit, Inc. v. uPort Inc
Claim Number: FA1210001467702
Complainant is Skinit, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is uPort Inc (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ksinit.com>, <skiint.com>, and <skniit.com>, registered with Wild West Domains, Llc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2012; the National Arbitration Forum received payment on October 17, 2012.
On October 18, 2012, Wild West Domains, Llc confirmed by e-mail to the National Arbitration Forum that the <ksinit.com>, <skiint.com>, <skniit.com> domain names are registered with Wild West Domains, Llc and that Respondent is the current registrant of the names. Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, Llc 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 October 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@ksinit.com, postmaster@skiint.com, and postmaster@skniit.com. Also on October 22, 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 November 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <ksinit.com>, <skiint.com>, and <skniit.com> domain names, the domain names at issue, are confusingly similar to Complainant’s SKINIT mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant began operating its business under the SKINIT name and mark in 2004. Complainant, under the SKINIT mark, offers the largest selection of vinyl skins to personalize more than 500 mobile devices.
Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the SKINIT.COM (Reg. No. 3,241,843 registered May 15, 2007) and SKINIT marks (e.g., Reg. No. 3,279,765 registered Aug. 14, 2007). Respondent’s <ksinit.com>, <skiint.com>, and <skniit.com> domain names are confusingly similar to the SKINIT.COM mark, as each domain name contains a misspelled version of the mark by transposing letters within the domain names.
Respondent is not commonly known by the disputed domain names, has not been given permission to use the SKINIT marks, and is not sponsored by Complainant. Respondent is not using the disputed domain names in connection with active websites. Respondent’s failure to connect the disputed domain names with active websites is evidence of bad faith registration and use. Respondent’s typosquatting behavior, as evidenced through the intentional misspelling of Complainant’s marks within the disputed domain names, is also evidence of bad faith registration and use. Respondent registered the disputed domain names on or after December 11, 2008.
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 began operating its business under the SKINIT name and mark in 2004. Under the SKINIT mark, it offers the largest selection of vinyl skins to personalize more than 500 mobile devices. Complainant owns several trademark registrations with the USPTO for the SKINIT.COM (Reg. No. 3,241,843 registered May 15, 2007) and SKINIT marks (e.g., Reg. No. 3,279,765 registered Aug. 14, 2007). Such registrations are sufficient for Complainant to establish rights in the SKINIT and SKINIT.COM marks under Policy ¶ 4(a)(i), regardless of Respondent’s location. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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).
Further, Respondent’s <ksinit.com>, <skiint.com>, and <skniit.com> domain names are confusingly similar to the SKINIT.COM mark, as each domain name contains a misspelled version of the mark by transposing letters within the domain names. Aside from the noted transposition of letters there are no other changes to the mark within the domain names. The simple transposition of letters of a registered trademark within the disputed domain names renders the domain names confusingly similar to the mark for the purposes of Policy ¶ 4(a)(i). See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain names, has not been given permission to use the SKINIT marks, and is not sponsored by Complainant. The WHOIS information for the <ksinit.com>, <skiint.com>, and <skniit.com> domain names identifies “uPort Inc” as the registrant, which are wholly dissimilar from the disputed domain names. Therefore, Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Further, Respondent is not using the disputed domain names in connection with active websites, and such inactive use is not a use 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 has included screenshots of the resolving websites which state, “Unable to connect. Firefox can’t establish a connection to the server at www.shareasale.com.” Therefore, Respondent’s failure to connect the disputed domain names to active websites does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <ksinit.com>, <skiint.com>, and <skniit.com> domain names under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
While Complainant argues that Respondent registered and is using the disputed domain names in bad faith, Complainant’s arguments do not fall into one of the Policy ¶ 4(b) illustrations of bad faith under the UDRP. However, the Panel is not bound by the four Policy ¶ 4(b) factors in evaluating whether Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s failure to connect the disputed domain names with active websites is evidence of bad faith registration and use. As noted above, Complainant has submitted screenshots of the “Unable to connect” messages that can be found when one attempts to connect with the disputed domain names. Respondent’s failure to connect the disputed domain names with active websites is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Further, Respondent’s typosquatting behavior, as evidenced through the intentional misspelling of Complainant’s marks within the disputed domain names, is also evidence of bad faith registration and use. Respondent has engaged in typosquatting through its registration of the <ksinit.com>, <skiint.com>, and <skniit.com> domain names, and the Panel finds that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See 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 that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ksinit.com>, <skiint.com>, and <skniit.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 9, 2012
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