U.S. Auto Parts Network, Inc. v. Elias Skander / Jean Lucas / Domcharme Group / cwhitney.com / jcwhirney.com / jcwhitner.com / jcwihtney.com / jvwhitney.com / jxwhitney.com
Claim Number: FA1210001469349
Complainant is U.S. Auto Parts Network, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Elias Skander / Jean Lucas / Domcharme Group / cwhitney.com / jcwhirney.com / jcwhitner.com / jcwihtney.com / jvwhitney.com / jxwhitney.com, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cwhitney.com>, <jcwhirney.com>, <jcwhitbey.com>, <jcwhitner.com>, <jcwihtney.com>, <jvwhitney.com>, and <jxwhitney.com>, all registered with Enom, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2012; the National Arbitration Forum received payment on October 26, 2012.
On October 29, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cwhitney.com>, <jcwhirney.com>, <jcwhitbey.com>, <jcwhitner.com>, <jcwihtney.com>, <jvwhitney.com>, and <jxwhitney.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2012 by which respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on respondents’ registration as technical, administrative, and billing contacts, and to postmaster@cwhitney.com, postmaster@jcwhirney.com, postmaster@jcwhitbey.com, postmaster@jcwhitner.com, postmaster@jcwihtney.com, postmaster@jvwhitney.com, and postmaster@jxwhitney.com. Also on November 5, 2012, the Written Notice of the Complaint, notifying respondents of the e-mail addresses served and the deadline for a Response, was transmitted to respondents via post and fax, to all entities and persons listed on respondents’ registration as technical, administrative and billing contacts.
Having received no response, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law deemed applicable, without the benefit of a response from any of the named respondents.
Complainant requests that the domain names be transferred from respondents to Complainant.
A. Complainant
Complainant asserts trademark rights in J.C. WHITNEY and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that respondents have no rights or legitimate interests in the respective disputed domain names.
Complainant alleges that respondents registered and used the respective disputed domain names in bad faith.
Complainant submits that all of the disputed domain names are controlled by the same person or entity. Complainant asserts in particular that:
“Respondent is using (some or all of) the Disputed Domain Name(s) to redirect Internet users to Complainant's own website through Complainant's affiliate program, which is in direct violation of the affiliate agreement which governs Respondent's relationship as an affiliate of Complainant. As a member of Complainant's affiliate program, Respondent was aware of Complainant's rights in Complainant's Mark(s) when registering the Disputed Domain Name(s). By registering confusingly similar domain names while a member of this affiliate program, Respondent has attempted to opportunistically benefit from its registration and use of the Disputed Domain Name(s) at Complainant's expense. Respondent's registration and use of the Disputed Domain Name(s) while a member of Complainant's affiliate program constitutes additional evidence of bad faith under Policy 4(a)(iii).”
B. Respondent
Each of the respondents failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark J.C. WHITNEY in connection with its retail store catalogue and mail order services for automotive equipment and accessories.
2. Complainant owns United States Trademark Reg. No. 1,624,212 for J.C. WHITNEY registered November 20, 1990 and Reg. No. 2,569,233 for JCWHITNEY registered May 14, 2002.
3. Complainant’s principal website is associated with the domain name <jcwhitney.com>.
4. The disputed domain names were registered no earlier than December 29, 2002 and no later than July 9, 2003.
5. The domain names redirect Internet users to Complainant’s website.
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."
Preliminary Issue: Multiple respondents
Paragraph 3(c) of the Rules for the Policy provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
According to the WhoIs information, the disputed domain names do not have a common registrant and so the Complaint does not comply with Rule 3(c). Nevertheless, Complainant alleges that the disputed domain names are controlled by the one person or entity and in support of that claim provides material to show that all disputed domain names are registered with the same Registrar; all have a common registered e-mail addresses; all share the same Administrative and Technical contact information, and all use the same subnet IP address.
In the absence of any response, Panel finds that Complainant has presented sufficient evidence to allow a reasonable inference to be made that the disputed domain names are controlled by the same person or entity (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.”)).
Panel finds substantial compliance with Rule 3(c) and so hereinafter the listed respondents will collectively be referred to as “Respondent”.
Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
For the purposes of comparing the disputed domain names with the trademark to test for confusing similarity, it is accepted that the gTLD, “.com”, can be disregarded (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The comparison resolves a comparison of
J.C. WHITNEY (or, so much as it makes a difference) JCWHITNEY with the terms:
cwhitney
jcwhirney
jcwhitbey
jcwhitner
jcwihtney
jvwhitney
and
jxwhitney.
Panel observes that each term differs from the trademark by a single character, either by removing a letter or replacing one letter with another. None of the resulting terms is significantly different from the trademark, either visually or aurally, so as to be distinct from the trademark. Panel is satisfied that the disputed domain names are all confusingly similar to Complainant’s trademark. Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in relation to each disputed domain name.
As a preliminary remark, Panel finds that Complainant’s repeated reference to its
affiliate program and to Respondent’s violation of the affiliate agreement is largely a distraction from the simple application of the Policy. All that need to noted is Complainant’s statement that “Respondent is using (some or all of) the Disputed Domain Name(s) to redirect Internet users to Complainant's own website”. That statement is particularly unhelpful but is at least supported by Exhibit H to the Complaint which carries screenshots of the resolving website for each disputed domain name. In each case it is the Complainant’s website which is shown.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
In broad terms Respondent has not shown any right, interest or legitimacy in or to the domain names. They are, in the first place, typosquatted renditions of Complainant’s trademark. They are not associated with any commercial or non-commercial use by Respondent in connection with an enterprise of its own, nor connected with any legitimate or fair use in relation to another’s goods or services. The only connection is a link from inaccurate, misrepresented machinations of Complainant’s trademark to Complainant’s website via mechanisms likely to indirectly benefit Respondent.
Panel finds that Complainant has make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and so the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in relation to each of the disputed domain names.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. Panel accepts as more likely than not to be true Complainant’s allegation that Respondent benefits financially from linking the disputed domain names to its website. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to an on-line location by creating a likelihood of confusion with the Complainant’s trademark.
Panel finds bad faith use and registration in relation to each of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cwhitney.com>, <jcwhirney.com>, <jcwhitbey.com>, <jcwhitner.com>, <jcwihtney.com>, <jvwhitney.com>, and <jxwhitney.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 28, 2012
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