Provide Commerce, Inc v. Amador Holdings Corp / Alex Arrocha
Claim Number: FA1311001529347
Complainant is Provide Commerce, Inc (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Amador Holdings Corp / Alex Arrocha (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <personalcreationns.com> and <personalcrestions.com>, registered with URL SOLUTIONS 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2013; the National Arbitration Forum received payment on November 11, 2013.
On November 12, November 14, and November 18 of 2013, URL SOLUTIONS INC confirmed by e-mail to the National Arbitration Forum that the <personalcreationns.com> and <personalcrestions.com> domain names are registered with URL SOLUTIONS INC and that Respondent is the current registrant of the names. URL SOLUTIONS INC has verified that Respondent is bound by the URL SOLUTIONS 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 November 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@personalcreationns.com, postmaster@personalcrestions.com. Also on November 26, 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 December 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
1. Complainant, Provide Commerce, Inc., is a wholly owned subsidiary of Liberty Media Interactive. Complainant, together with its subsidiaries, Provide Gifts, Inc., and Provide Creations, Inc., is a leading online provider of high quality gifts including flowers, chocolates, jewelry, clothing, and other unique gift selections.
2. Complainant owns rights in the PERSONAL CREATIONS mark registration with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,271,728 registered August 24, 1999).
3. Respondent’s <personalcreationns.com> and <personalcrestions.com> domain names are confusingly similar to Complainant’s PERSONAL CREATIONS mark as well they are typographically flawed variations of Complainant’s mark.
4. Respondent has no rights or legitimate interests in the <personalcreationns.com> and <personalcrestions.com> domain names.
5. Respondent is not commonly known by the disputed domain names. Respondent has no trademark rights or intellectual property rights in the disputed domain names. Complainant also has not licensed or authorized Respondent to use the PERSONAL CREATIONS mark in any way.
6. Respondent registered the disputed domain names on April 26, 2004.
7. Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
8. Respondent uses the disputed domain names to resolve to websites featuring generic links to third-parity websites.
9. Respondent registered the <personalcreationns.com> and <personalcrestions.com> domain names in bad faith.
10. Respondent’s uses the disputed domain names to divert Internet users away from Complainant’s official website to third-party websites.
11. Respondent uses the disputed domain names in correlation with generating revenue through pay-per-click links that compete with Complainant.
12. Respondent’s typosquatting behavior indicates bad faith.
13. Respondent intended to infringe on Complainant’s PERSONAL CREATION MARK, as illustrated by the presence of the correctly-spelled mark on the domain names’ resolving websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Provide Commerce, Inc., is a wholly owned subsidiary of Liberty Media Interactive. Complainant, together with its subsidiaries, Provide Gifts, Inc., and Provide Creations, Inc., is a leading online provider of high quality gifts including flowers, chocolates, jewelry, clothing, and other unique gift selections.
Complainant owns rights in the PERSONAL CREATIONS mark registration with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,271,728 registered August 24, 1999).
Respondent, Amador Holdings Corp / Alex Arrocha, registered the disputed domain names on April 26, 2004. Respondent uses the disputed domain names to resolve to websites featuring Complainant’s mark and generic links to third-parity websites. Respondent uses the disputed domain names in correlation with generating revenue through pay-per-click links that compete with Complainant.
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 has rights in the PERSONAL CREATIONS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”); see also Toyota Motor Sales, U.S.A., Inc. v. Indian Springs Motor, FA 157289 (Nat. Arb. Forum June 23, 2003) (“Complainant has established that it has rights in the TOYOTA and LEXUS marks through TMC’s registration with the USPTO and Complainant’s subsidiary relationship with TMC.”).
Respondent’s <personalcreationns.com> and <personalcrestions.com> domain names are confusingly similar to Complainant’s PERSONAL CREATIONS mark. The disputed domain names differ from Complainant’s PERSONAL CREATIONS mark by a mere letter or two. The <personalcreationns.com> domain name adds the additional letter-word “ns,” while the <personalcrestions.com> domain name replaces a letter “a” with the letter “s.” Both disputed domain names also feature the generic top-level domain (“gTLD”) “.com” and remove the space in Complainant’s mark. Adding additional letters and a gTLD while removing a space in a given mark are insufficient to differentiate a disputed domain name from a given mark. 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); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Incorporating minor errors does not differentiate the domain name from the registered trademark. See, e.g., Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). The Panel finds that the <personalcreationns.com> and <personalcrestions.com> domain names are confusingly similar to Complainant’s PERSONAL CREATIONS mark.
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).
Respondent is not commonly known by the disputed domain names. Respondent has no trademark rights or intellectual property rights in the disputed domain names. Complainant also has not licensed or authorized Respondent to use the PERSONAL CREATIONS mark. The WHOIS information for Respondent’s <personalcreationns.com> and <personalcrestions.com> domain names lists “Alex Arrocha” as registrant. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. 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 disputed domain names to resolve to websites featuring generic links to third-parity websites. The <personalcreationns.com> domain name resolves to a parked website featuring links including, “Personal Creations,” “Groceries Coupons,” “Personalized Gifts,” and “Taylor Gifts Coupons.” The <personalcrestions.com> domain name resolves to a website featuring links such as “Personalized Wedding Gifts,” “Bride Wedding Gifts,” and “Wedding Gift Registry.” The use of a confusingly similar domain name to host a parked website featuring links that compete with the complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). 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).
Respondent’s use of the <personalcreationns.com> and <personalcrestions.com> domain names diverts Internet users away from Complainant’s official website to competing third-party websites, thus disrupting complainant’s business. 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).”). The Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Respondent uses the disputed domain names with pay-per-click links that compete with Complainant. The use of a confusingly similar domain name to host competing hyperlinks is bad faith registration and use 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 website which features links to competing and non-competing commercial 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).”).
Respondent’s <personalcreationns.com> and <personalcrestions.com> domain names are typosquatted versions of Complainant’s PERSONAL CREATIONS mark and as such are evidence of 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).”).
Further, Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <personalcreationns.com> and <personalcrestions.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 3, 2014
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