FragranceNet.com, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1305001497906
Complainant is FragranceNet.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frangrancenet.net>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 2, 2013; the National Arbitration Forum received payment on May 2, 2013.
On May 7, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <frangrancenet.net> domain name is registered with PDR LTD. d/b/aPUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. d/b/a PUBLIC-DOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/aPUBLICDOMAINREGISTRY.COM 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 May 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2013 by which Re-spondent 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@frangrancenet.net. Also on May 13, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 June 12, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Operating continuously under the FRAGRANCENET name and mark since 1997, Complainant has become the leading online retailer of discounted genuine brand name fragrances and beauty products.
As a result of Complainant’s long and extensive advertising, promotion and mark-eting efforts, the FRAGRANCENET mark identifies Complainant to the consum-ing public as the source of its goods and services, and distinguishes its goods and services from those of others.
Complainant holds a registration, on file with the United States Patent and Trade-mark Office (“USPTO”), for the FRAGRANCENET service mark (Registry No. 3,339,343, filed September 19, 2005; registered Nov. 20, 2007).
Respondent registered the disputed <frangrancenet.net> domain name on or about July 10, 2006.
The domain name is confusingly similar to Complainant’s FRAGRANCENET service mark.
Respondent has not been commonly known by the disputed domain name.
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Respondent is not sponsored by or affiliated with Complainant, and Com-plainant has not given Respondent permission to use Complainant's FRAGRANCENET mark in a domain name. |
Respondent has no rights to or legitimate interests in respect of the disputed domain name.
For its own profit, Respondent uses 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.
Respondent’s domain name is an instance of typo-squatting.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the FRAGRANCENET service mark for purposes of
Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
And, because the application for registration of Complainant’s FRAGRANCENET mark was filed with the USPTO on September 4, 2005, whereas the disputed
<frangrancenet.net> domain name was registered later, on or about July 10, 2006, Complainant’s rights in its mark for purposes of Policy ¶ 4(a)(i) date from the filing date, rather than from the date of mark registration, and so take time precedence over Re-spondent’s domain name registration date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that a UDRP complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
All of this is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Saint Vincent and the Grenadines). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purposes of Policy ¶ 4(a)(i) whether a UDRP complainant’s mark is registered in a country other than that of a respondent’s place of business).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the disputed <frangrancenet.net> domain name is confusingly similar to Complainant’s FRAGRANCENET mark. The domain name differs from Complainant’s mark by only a single character, the insertion of an additional letter “n,” plus the addition of the generic top-level domain (“gTLD”) “.net.” These alterations of the mark, made in creating the domain name, do not save the do-main name from a finding of confusing similarity under the standards of the Pol-icy. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)).
See also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005):
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent is not sponsored by or affiliated with Complainant, and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “Private Registrations Aktien Gesellschaft / Domain Admin,” which does not resemble the domain name. On this record, we con-clude that Respondent has not been commonly known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), where the panel stated that “nothing in the respondent’s WHOIS information implied that respondent was ‘commonly known by’ the disputed domain name” which was a factor in deter-mining that Policy ¶ 4(c)(ii) would not support a finding of rights in favor of that respondent.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name, for its profit, to redirect un-suspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. This is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that Respondent has established a pattern of registering and using domain names in bad faith, making Respondent a serial cyber-squatter. See LIMITED STORES, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1491426 (Nat. Arb. Forum April 24, 2013); CheapCaribbean.com, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1489119 (Nat. Arb. Forum April 17, 2013); McLaren Health Care Corporation v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1476200 (Nat. Arb. Forum Feb. 11, 2013). Under Policy ¶ 4(b)(ii), this pattern of bad faith in the registration and use of other domain names stands as evidence of bad faith in the registration of the instant domain name. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (deter-mining that a respondent’s prior adverse UDRP rulings were evidence of bad faith registration of yet another domain name under Policy ¶ 4(b)(ii)).
We are likewise persuaded from the evidence that Respondent’s employment of the <frangrancenet.net> domain name to resolve to a website advertised pay-per-click links displayed on the resolving websites promotes the sale of products that compete with the business of Complainant. This disrupts Complainant’s business and shows evidence of bad faith registration and use of the domain name 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).
In addition, the evidence demonstrates that Respondent has registered and used the <frangrancenet.net> domain name, which is confusingly similar to Complain-ant’s FRAGRANCENET mark, to attract and mislead consumers for its own profit. This employment of the domain name illustrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a web-site which features links to competing and non-competing commer-cial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, we conclude that Respondent’s use of a domain name that employs a slightly misspelled version of Complainant’s FRAGRANCENET mark reflects an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name in order to take advantage of typing errors commonly made by Internet users when entering in a web browser the names of enterprises with which they wish to do business. Typo-squatting is independent evidence of bad faith in the registration and use of a domain name. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003), finding that the practice of typo-squatting:
diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evi-dencing bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel thus finds that Complainant has met its obligations of proof under Policy 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <frangrancenet.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 21, 2013
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