Shoedazzle.com, Inc. v. ICS inc.
Claim Number: FA1309001518883
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com>, registered with Tucows, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2013; the National Arbitration Forum received payment on September 10, 2013.
On September 12, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. 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 September 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@shedazzel.com, postmaster@shoedaizzle.com, postmaster@shoedasel.com, postmaster@shoedassel.com, postmaster@shoedazal.com, postmaster@shoedazell.com, postmaster@shoedazzell.com, postmaster@shoedazzla.com, postmaster@shoedizzal.com, postmaster@shoedizzel.com, postmaster@shoedozzle.com, and postmaster@shoesdazzled.com. Also on September 23, 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 October 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names, the domain names at issue, are confusingly similar to Complainant’s SHOEDAZZLE 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, Shoedazzle.com, Inc., provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SHOEDAZZLE mark (reg. No. 3,736,740, registered January 12, 2010). The disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark and are classic examples of typosquatting.
Respondent has not been commonly known by the disputed domain names and is using the disputed domain names 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 has also listed the disputed domain names for sale. Respondent is a recalcitrant serial cybersquatter. Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. Respondent registered the used the disputed domain names to attract and mislead consumers for its own profit. The earliest date on which Respondent registered a disputed domain name was December 9, 2011.
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 provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences. Complainant is the owner of a trademark registration with the USPTO for the SHOEDAZZLE mark (reg. No. 3,736,740, registered January 12, 2010). Although Respondent appears to reside in Canada, Policy ¶ 4(a)(i) does not require Complainant to register its mark in which Respondent resides, so long as it establishes rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel holds that Complainant’s registration of the SHOEDAZZLE mark with the USPTO sufficiently evidences its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent removes or adds letters to Complainant’s mark in the <shedazzel.com>, <shoedaizzle.com>, and <shoesdazzled.com> domain names. Addition or removal of letters in a mark is inconsequential to a Policy ¶ 4(a)(i) analysis. 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 Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent misspells the <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names. The Panel holds that Respondent’s misspelling of Complainant’s SHOEDAZZLE mark does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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). Further, Respondent adds the generic top-level domain (“gTLD”) “.com” to its disputed domain names. Respondent’s inclusion of a gTLD to Complainant’s mark in a disputed domain name is irrelevant to a Policy ¶ 4(a)(i) determination. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Accordingly, Respondent’s <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark pursuant to Policy ¶ 4(a)(i).
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 has not been commonly known by the <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names. Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s mark in a domain name. The WHOIS record for the disputed domain names lists “ICS inc.” as the registrant. Therefore, Respondent is not commonly known by the disputed domain names under Policy ¶ 4(a)(i). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is using the <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names 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 disputed domain names provide competing links titled “Shoedazzle Shoes,” “New Shoe Dazzle,” “Sexy Women’s Club Shoes,” and others. Respondent presumably receives pay-per-click fees from these linked websites. Accordingly, the Panel finds that Respondent is not using the <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has also listed the <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names for sale. The Panel observes that the WHOIS information for each of the disputed domain names states “[the domain name] is for sale. The owner of the domain you are researching has it listed for sale $[list price].” The list prices for the domain names range from $100 to $6,459. Id. In World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), the panel found that respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs. Accordingly, the Panel finds that Respondent is offering to sell the disputed domain names for excess out-of-pocket costs and holds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(i).
It appears that Respondent is a recalcitrant serial cybersquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. OneWest Banks, FSB v. ICS INC., FA 1515044 (Nat. Arb. Forum Sept. 18, 2013); Time Warner Inc. v. ICS INC., FA 1513884 (Nat. Arb. Forum Sept. 8, 2013); Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. ICS INC., FA 1511762 (Nat. Arb. Forum Sept. 8, 2013). Accordingly, the Panel finds that Respondent’s prior UDRP proceedings that resulted in findings of bad faith suggest a similar finding in this case. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. The Panel notes that Respondent’s <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names provide competing links titled “Shoedazzle Shoes,” “New Shoe Dazzle,” “Sexy Women’s Club Shoes,” and others. It appears that hese links divert potential customers away from Complainant to third-party websites, disrupting Complainant’s business. Accordingly, the Panel holds that Respondent has registered and is using the <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names in bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent has registered the used the disputed domain names to attract and mislead consumers for its own profit. Respondent’s disputed domain names provide competing links such as “Shoedazzle Shoes,” “New Shoe Dazzle,” “Sexy Women’s Club Shoes,” and others. It further appears that Respondent has registered the domain names to generate revenue as a “click through” website. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel concluded that “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.’” Thus, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Prior panels have typically found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. 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).”). Accordingly, Respondent was engaging in typosquatting when it registered its <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names.
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 <shedazzel.com>, <shoedaizzle.com>, <shoedasel.com>, <shoedassel.com>, <shoedazal.com>, <shoedazell.com>, <shoedazzell.com>, <shoedazzla.com>, <shoedizzal.com>, <shoedizzel.com>, <shoedozzle.com>, and <shoesdazzled.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 23, 2013
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