Euromarket Designs, Inc., d/b/a Crate & Barrel v. Cyber Domain Services Pvt.Ltd.
Claim Number: FA1211001470528
Complainant is Euromarket Designs, Inc., d/b/a Crate & Barrel (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Cyber Domain Services Pvt.Ltd. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <crateanbbarrel.com> and <crateandbbarrel.com>, registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED.
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 November 9, 2012; the National Arbitration Forum received payment on November 9, 2012.
On November 12, 2012, TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED confirmed by e-mail to the National Arbitration Forum that the <crateanbbarrel.com> and <crateandbbarrel.com> domain names are registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED and that Respondent is the current registrant of the names. TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED has verified that Respondent is bound by the TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED 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 December 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@crateanbbarrel.com, postmaster@crateandbbarrel.com. Also on December 4, 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 December 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed 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 <crateanbbarrel.com> and <crateandbbarrel.com> domain names, the domain names at issue, are confusingly similar to Complainant’s CRATE & BARREL 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 provides retail store and mail order products, including glassware, tableware, plates, saucers, cups, bowls, electric appliances, furniture, rugs, linens, bake ware, and other household accessories. Complainant uses the CRATE & BARREL mark to designate its brand, and owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CRATE & BARREL mark (e.g., Reg. No. 1,469,515 registered December 15, 1987). See Exhibit E. Complainant has used the CRATE & BARREL mark since 1962 to identify its products, which it currently offers at a website located at the <crateandbarrel.com> domain name, as well as in catalogues and in over 100 retail stores. Complainant’s CRATE & BARREL mark has developed substantial goodwill, through Complainant’s efforts to market and advertise its brand.
Respondent registered the <crateanbbarrel.com> and <crateandbbarrel.com> domain names on February 26, 2007, both of which are confusingly similar to Complainant’s CRATE & BARREL mark. Respondent has demonstrated a lack of rights or legitimate interests in the <crateanbbarrel.com> and <crateandbbarrel.com> domain names because of its use to resolve to a website that displays “click-through” hyperlinks in order to generate a profit for Respondent. Further, Respondent registered and uses the disputed domains in bad faith by disrupting Complainant’s business and providing hyperlinks to entities whose goods and services compete with those of Complainant. Respondent demonstrates typosquatting behavior by registering domain names that are intentional misspellings of Complainant’s CRATE & BARREL mark, and Respondent has proven itself to have engaged in an ongoing pattern of abusive domain name registrations, as shown by numerous adverse UDRP decisions involving Respondent.
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 owns rights in the CRATE & BARREL mark via its USPTO registrations (e.g., Reg. No. 1,469,515 registered December 15, 1987). Complainant has established its rights in the CRATE & BARREL mark for the purposes of Policy ¶ 4(a)(i) by having registered the mark with the USPTO. The Policy does not require Complainant to register its mark in the same country where Respondent resides and operates. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); 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 <crateanbbarrel.com> and <crateandbbarrel.com> domain names are confusingly similar to Complainant’s CRATE & BARREL mark because of the domain names’ incorporation of the entire mark, and either including replacing one character with an incorrect character, or adding an extra character. The Panel notes that the disputed domain names replace the ampersand symbol within the mark with misspelled versions of the related term “and.” The Panel concludes that both domain names are confusingly similar to Complainant’s CRATE & BARREL mark under Policy ¶ 4(a)(i) due to the inclusion of a gTLD and he replacement of the ampersand symbol in the mark with the misspelled term “and.” See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also 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 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 cannot be considered as commonly known by the <crateanbbarrel.com> and <crateandbbarrel.com> domain names, as the WHOIS record suggest that Respondent is known as a different entity and, further, Complainant has not licensed Respondent’s use of the CRATE & BARREL mark in any way. The WHOIS information discloses “Cyber Domain Services Pvt.Ltd.” to be both domain names’ registrant, and the WHOIS information does not support a finding that Respondent is commonly known by either of the domain names. Therefore, Respondent fails to demonstrate rights or legitimate interests in the <crateanbbarrel.com> and <crateandbbarrel.com> domain names pursuant to 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).
The websites resolving to the <crateanbbarrel.com> and <crateandbbarrel.com> domain names display a variety of hyperlinks to third-party businesses whose offered products are similar to those Complainant offers under its mark. Some of the hyperlinks resolve to Complainant’s own website. Accordingly, Respondent’s use of the resolving websites to link Internet users with competitors as well as Complainant’s website is evidence that Respondent does not use the <crateanbbarrel.com> and <crateandbbarrel.com> domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Moreover, Respondent’s registration of the <crateanbbarrel.com> and <crateandbbarrel.com> domain names constitutes typosquatting under the Policy, as both of the disputed domain names were designed to exploit Internet users’ spelling errors when attempting to reach Complainant’s website. The panel in LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), held that the respondent’s domain name registrations were intentionally misspelled versions of the complainant’s mark and that such typosquatting showed that the respondent lacked rights or legitimate interests in the disputed domain names. Clearly, Respondent engaged in typosquatting by registering domain names that are misspellings of Complainant’s CRATE & BARREL mark, and Respondent’s typosquatting is evidence of its lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has several UDRP decisions against it, removing names from Respondent’s possession that were found to be typosquatted versions of marks belonging to other entities. See Montres Breguet S.A. v. Cyber Domain Servs. Pvt.Ltd., FA1413687 (Nat. Arb. Forum Dec. 12, 2011); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Cyber Domain Servs. Pvt.Ltd., FA1332753 (Nat. Arb. Forum Aug. 10, 2010). In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel stated that where the respondent was subject to several UDRP proceedings resulting in transfer of the disputed domain name to the complainant, the respondent was found to register and use the domain name in bad faith. This Panel likewise finds that the evidence demonstrating Respondent’s history of registering domain names that contain the trademarks of others’ provides evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii) of the <crateanbbarrel.com> and <crateandbbarrel.com> domain names.
The links found at the websites resolving from the <crateanbbarrel.com> and <crateandbbarrel.com> domain names promote products that compete with Complainant, thereby disrupting Complainant’s business by drawing consumers towards the competition. Respondent’s effort to redirect Complainant’s potential customers away from Complainant’s website and to the websites associated with the featured hyperlinks demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
The <crateanbbarrel.com> and <crateandbbarrel.com> domain names are likely misspellings of the CRATE & BARREL mark and were designed to take advantage of Internet consumers’ errors when attempting to reach Complainant’s website; furthermore registering typosquatted domain names is evidence of Respondent’s bad faith registration and use 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).
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 <crateanbbarrel.com> and <crateandbbarrel.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 2, 2013
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