FragranceNet, Inc. v ICS INC.
Claim Number: FA1307001508705
Complainant is FragranceNet, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fragrancenex.com>, registered with TUCOWS, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr.,as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2013; the National Arbitration Forum received payment on July 9, 2013.
On July 9, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <fragrancenex.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 July 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@fragrancenex.com. Also on July 10, 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 August 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights in the Mark / Confusingly Similar Domain Names
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
Respondent registered the <fragrancenex.com> domain name on March 8, 2008.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its FRAGRANCENET.COM mark.
2. Respondent’s <fragrencenex.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 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 argues that it uses the FRAGRANCENET.COM mark for online retail store services in the sale of perfumes and fragrances. Complainant claims that it has registered the mark with the USPTO (Reg. No. 3,559,768 registered January 13, 2009). Complainant also states that it uses the FRAGRANCENET mark, registered with the USPTO (Reg. No. 3,339,343 registered on Nov. 20, 2007). The Panel agrees that Complainant has rights in its marks sufficient to surpass the Policy ¶ 4(a)(i) threshold. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel agrees that it is irrelevant for the purposes of Policy ¶ 4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides. See Koninklijke v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates).
Complainant argues that Respondent’s <fragrancenex.com> domain name features a simple typo of the FRAGRANCENET mark, and gTLD “.com.”. The Panel agrees that merely changing the term “net” to “nex” is insufficient to defeat confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel agrees that a gTLD does not affect confusing similarity to Complainant’s mark under the Policy. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Pane therefore finds that the changes made within the domain name render the <fragrancenex.com> domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent is not known by this <fragrancenex.com> domain name based on the WHOIS information. Complainant also notes that Respondent is not sponsored, endorsed, or licensed by Complainant. The Panel notes that the WHOIS information lists “ICS INC.” as the registrant. The Panel agrees that Respondent does not have a Policy ¶ 4(c)(ii) association with this domain name, and therefore cannot be considered to be commonly known by the domain name, based upon the WHOIS information and a lack of authorization. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question)
Respondent uses the domain name to send Internet users to unsuspecting Internet users to a website that promotes unrelated third-party advertisements.).
Complainant argues that Respondent uses the domain name to send unsuspecting Internet users to a website that promotes unrelated third-party advertisements. The Panel notes that the domain name resolves to a website promoting an array of perfume and fragrance products. See Complainant’s Ex. H. The Panel agrees that the use of this domain name to promote a series of competing hyperlinks is evidence of neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant argues that Respondent’s typosquatting behavior undermines any rights or interests in this domain name. The Panel notes that Respondent registered this <fragrancenex.com> domain name that embodies no substantive alterations beyond the swapping of the letter “t” with the letter “x.” The Panel finds that Respondent’s typosquatting demonstrates a lack of Policy ¶ 4(a)(ii) rights or legitimate interests it may have had in the domain name. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Complainant claims that Respondent has listed the <fragrancenex.com> domain name for sale. The Panel notes that the domain name appears to be advertised on the domain name’s “DomainTools” WHOIS report. See Complainant’s Ex. I. The Panel agrees that a general offer of a domain name for sale is generally evidence of a respondent’s bad faith use and registration of a domain name, pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Thus, the Panel concludes that Respondent’s general offer to sell the <fragrancenex.com> domain name constitutes Policy ¶ 4(b)(i) bad faith use and registration.
Complainant also claims that Respondent is a serial cybersquatter, as noted through various NAF and WIPO decisions against Respondent. The Panel notes that Complainant cites decisions as Dogfish Head Mktg. LLC v. ICS inc., FA 1498990 (Nat. Arb. Forum June 13, 2013); HealthSouth Corp. v. ICS INC., FA 1496084 (Nat. Arb. Forum June 6, 2013); Morgan Stanley v. ICS INC., FA 1498532 (Nat. Arb. Forum June 8, 2013), as evidence of Respondent’s pattern of bad faith registration and use of the domain name at issue. The Panel agrees that such a record of multiple recent UDRP proceedings is sufficient evidence to find Policy ¶ 4(b)(ii) bad faith use and registration on behalf of Respondent. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant next argues that Respondent is promoting competing goods through commercial hyperlinks in an attempt to disrupt Complainant’s business. The Panel notes that several of the hyperlinks on the <fragrancenex.com> domain name send Internet users to other retailers of perfumes and fragrances. See Complainant’s Ex. H. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found Policy ¶ 4(b)(iii) bad faith commercial disruption when the respondent had hosted competing hyperlinks on the disputed domain name. The Panel here likewise agrees that hyperlinks such as “Eau De Parfum Fragrance” and “Discontinued Fragrances” evidence an attempt to disrupt Complainant’s business by sending Internet users to competing goods in bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent employs this <fragrancenex.com> domain name for purposes of generating click-through revenues through Internet users who are confused into associating the domain name with Complainant. The Panel notes that the domain name resolves to a website that promotes an array of perfume and fragrance hyperlinks, along with other unrelated links. See Complainant’s Ex. H. The Panel here finds that the use of the confusingly similar domain name to host competitive hyperlinks is evidence of a Policy ¶ 4(b)(iv) bad faith scheme to confuse Internet users into believing they are viewing hyperlinks endorsed by Complainant under its FRAGRANCENET mark. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant finally argues that Respondent’s typosquatting is in itself evidence of bad faith. The Pane agrees that this domain name is so similar to the FRAGRANCENET mark that it demonstrates that Respondent intended to capitalize on a common misspelling of this mark, in Policy ¶ 4(a)(iii) bad faith. 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).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fragrancenex.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 19, 2013
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