Macy's Inc. and its subsidiary Macy's West Stores, Inc. v. Private, Registration / George Yam
Claim Number: FA1303001488660
Complainant is Macy's Inc. and its subsidiary Macy's West Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private, Registration / George Yam (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maicys.com>, registered with GODADDY.COM, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2013; the National Arbitration Forum received payment on March 5, 2013.
On March 6, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <maicys.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 March 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2013 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@maicys.com. Also on March 6, 2013, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant, MACY’S INC., and its subsidiary MACY'S WEST STORES, INC. (formerly Federated Department Stores, Inc.) are one of the United States’ premier retailers.
2. Complainant is the owner of federal trademarks in the United States that consists of the word MACY’s.
3. Respondent’s<maicys.com> domain name is confusingly similar to Complainant’s MACYS Mark as it sounds phonetically identical.
4. The Disputed Domain Name is a classic example of "typosquatting".
5. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
6. Respondent has not been commonly known by the Disputed Domain Name.
7. Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
8. Complainant has not given Respondent permission to use Complainant's Mark in a domain name.
9. A "Cease and Desist” letter was sent to the Respondent but a reply has not been received.
10. Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding.
11. Respondent is using the Disputed Domain Name to redirect unsuspecting
Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii).
12. The Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:
(a) Respondent's typosquatting;
(b) Respondent has been using the Disputed Domain Name’s website in connection with generating revenue as a "click through" website;
(c) Respondent has been using the Complainant's registered trademark and providing links to the services and products offered by the Complainant to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain.
(d) Respondent's setting up of a "click through" website for which it likely receives revenue for each misdirected Internet user.
(e) The Respondent has registered and used the Disputed Domain Name in bad faith pursuant to Policy ¶4 (b)(iv) by using the Disputed Domain Name to attract and mislead consumers for its own profit.
(f) In addition to the above, the Respondent's advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant's business.
(g) Respondent has caused the websites reachable by the Disputed Domain Name to display content and/or keywords directly related to Complainant's business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is one of the United States’ premier retailers and has been so for many years.
2. Complainant is the owner of Federal trademark registrations in the United States that consists of the word MACY’s.
3. Respondent registered the disputed domain name on November 26, 2005 and has since been using it to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business.
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 first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant alleges that it does and in support of that contention has adduced evidence that the Panel accepts of multiple registrations with the United States Patent and Trademark Office) (”USPTO”) of the word MACEY’S. For example, Complainant has adduced evidence of its registration with USPTO of the word mark MACEY’S , Reg. No. 0078333, registered on June 7, 1910 with USPTO (“the MACEY’S mark”). Based upon the evidence of the registrations provided, the Panel finds that Complainant has established its rights in the MACEY’S mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the MACEY’S mark. Complainant argues that the domain name is confusingly similar to the trademark because the domain name consists of the whole of the trademark with only a minor spelling change, so that the letter “e” of the trademark has been removed and the letter “i” inserted and the apostrophe has also been removed. Otherwise, the spelling of the trademark has been retained and the domain name sounds phonetically identical. Complainant therefore submits that this is a classic case of typosquatting. It should also be noted that the generic Top Level Domain “.com” has also been removed but this is not relevant for present purposes. The Panel agrees with Complainant’s submissions as the internet user would assume that this domain name is evoking the famous MACEY’S mark. The Panel therefore finds that the disputed domain name is confusingly similar to the trademark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis) and Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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. Arab. 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. Gerber, FA 780200 (Nat. Arab. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous MACEY’S trademark and to use it in its domain name, making only minor spelling alterations, thus giving the false impression that it is an official domain names of Complainant that will lead to an official website of Complainant;
(b) Respondent has then used the domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per click fees from these linked websites. The Panel agrees with this submission , which is supported by the screenshot tendered in evidence that shows the use to which Respondent’s website has been put, namely to promote goods that in at least some cases are clearly in competition with those sold by Complainant. As such, Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See e.g., Fred W. Gretsch Enterprises, Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (finding that when a respondent used the domain name <gretschdrum.com> to link to products that competed with those of the Complainant, "[t]he competitive nature of Respondent's use of [the domain name] renders this use neither bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the [domain name] under Policy4(c)(iii)")). See also Meadowbrook, LLC d/b/a The Land of Nod v. Venkateshawara Distrib. Private Ltd, FA1112001419361 (Nat. Arb. Forum Jan. 24, 2012) (finding that using a domain name to display hyperlinks to the complainant's competitors and unrelated business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use);
(c) Complainant claims that Respondent is not commonly known by the domain name within the meaning of Policy, ¶ 4(c)(ii). Having regard to the whole of the evidence including the WHOIS record and the likelihood of the situation as contended for by Complainant, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise. See 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);
(d) Respondent has engaged in these activities without the consent or approval
of Complainant;
(e) There is no other evidence showing that on any other ground Respondent could have a right or legitimate interest in the domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the facts as established by Complainant, especially the evidence of Respondent having set up a website promoting goods in competition with those of Complainant and doing so under virtually the name of Complainant and its trademark, bring the case squarely within the express provisions of the Policy on bad faith and in particular Policy ¶ 4(b)(iii), prescribing that a respondent engages in bad faith by registering "the domain name primarily for the purpose of disrupting the business of a competitor") and Policy ¶ 4(b)(iv) , prescribing that a respondent engages in bad faith when "by using the domain name, [it has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [its] web site or location or of a product or service on [its] web site or location"). See Meadowbrook, LLC d/b/a The Land of Nod v. Venkateshawara Distributor Private Ltd., FA1112001419361 (Nat. Arb. Forum Jan. 24, 2012) (finding that setting up a "click-through" website for which respondent likely receives revenue for each misdirected Internet user is evidence of bad faith); La-Z-Boy Chair Company v. CSRUS Enterprises, FA1103001377835 (Nat. Arb. Forum Apr. 21, 2011) (respondent's use of a domain name "to earn click-through fees by attracting Internet users to [a] pay-per-click directory website" demonstrated bad faith registration).
Secondly, Complainant argues that Respondent’s typosquatting is in itself evidence that Respondent has acted in bad faith. The Panel agrees and finds that such conduct shows Respondent’s Policy ¶ 4(a)(iii) bad faith use. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MACEY’S mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
The Panel also agrees with the other arguments advanced by Complainant on the issue of bad faith and so finds.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maicys.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 9, 2013
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