Thaminder Anand v. Gurpreet Johar
Claim Number: FA1312001532918
Complainant is Thaminder Anand (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Gurpreet Johar (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <milanoformal.com>, registered with 1&1 Internet AG.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2013; the National Arbitration Forum received payment on December 4, 2013.
On December 9, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <milanoformal.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 December 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@milanoformal.com. Also on December 9, 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 January 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant owns registrations for its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,679,224 registered January 21, 2003).
2. Complainant owns registrations for its mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 3,695,038 registered June 12, 2005).
3. Complainant’s official website is located at <milanoformals.com>.
4. Respondent’s <milanoformal.com> domain name is confusingly similar to Complainant’s MILANO FORMALS mark.
5. Neither the WHOIS information nor the evidence on the record indicates that Respondent is commonly known by the disputed domain name.
6. Complainant has not authorized Respondent to use or register the disputed domain name.
7. Respondent registered the disputed domain name on May 4, 2004.
8. Respondent uses the disputed domain name to directly compete with Complainant by redirecting internet users to the <ginocerruti.com> domain name’s website.
9. Respondent’s disputed domain name is a typosquatted version of Complainant’s mark because it merely removes the letter “s.”
10. Respondent registered and is using the disputed domain name in bad faith.
11. Respondent uses the resolving website to collect personal information from Internet users.
12. Respondent’s typosquatting behavior indicates bad faith use and registration.
13. Respondent had actual knowledge of Complainant’s rights in the MILANO FORMALS mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MILANO FORMALS mark. Respondent’s domain name is confusingly similar to Complainant’s MILANO FORMALS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <milanoformal.com> domain name, and that Respondent registered and uses 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 owns the MILANO FORMALS trademark and has submitted evidence of its ownership through registrations for its mark with the USPTO (Reg. No. 2,679,224 registered January 21, 2003). Complainant additionally owns registrations for its mark with OHIM (Reg. No. 3,695,038 registered June 12, 2005). Evidence of a registration for a trademark with a recognized trademark authority is sufficient to establish rights in a given mark. See Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Moreover, a complainant need not own a registration for a trademark in the location of a respondent. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). The Panel therefore concludes that Complainant has rights in its MILANO FORMALS mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <milanoformal.com> domain name is confusingly similar to Complainant’s MILANO FORMALS mark under Policy ¶ 4(a)(i). Complainant notes that Respondent’s disputed domain name removes the letter “s” from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” Removing a single letter and adding a gTLD does not sufficiently distinguish a domain name from a registered 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 Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). The Panel therefore concludes that Respondent’s <milanoformal.com> domain name is confusingly similar to Complainant’s MILANO FORMALS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant states that Respondent is not commonly known by the disputed domain name because neither the WHOIS information nor the evidence in the record indicates that Respondent is known by the disputed domain name. Complainant further states it has not authorized Respondent to use or register thedomain name. Complainant notes that according to the WHOIS information for Respondent’s domain name, Respondent is “Gupreet Johar.” A respondent is not commonly known by a domain name where there is no indication in the WHOIS information or otherwise that the respondent is commonly known by the domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel concludes that Respondent is not commonly known by the <milanoformal.com> domain name under Policy ¶ 4(c)(ii).
Complainant additionally claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant argues that Respondent uses the domain name to directly compete with Complainant by redirecting internet users to the <ginocerruti.com> website. Complainant states that Respondent’s <milanoformal.com> domain name resolves to a website with the heading “Gino Cerruti” and displays bridal wear and prom dresses. Using a domain name to resolve to a website that competes with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel therefore concludes that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant further claims that Respondent’s <milanoformal.com> domain name is a typosquatted version of Complainant’s mark because it merely removes the letter “s.” Typosquatting has been found in similar circumstances.. 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”). The Panel agrees that Respondent has engaged in typosquatting.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant states that Respondent’s domain name resolves to the “Gino Cerruti” website displaying either wedding gowns or prom dresses. Using a confusingly similar domain name to redirect Internet users away from a complainant’s website and to a respondent’s competing website indicates bad faith under Policy ¶ 4(b)(iii) because it disrupts complainant’s business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). The Panel agrees, and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant adds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent uses the disputed domain name to intentionally attract Internet users to its website by taking advantage of consumers searching for Complainant on the Internet. As noted previously, Respondent’s domain name resolves to a “Gino Cerruti London” website displaying formal and bridal wear—goods that compete directly with the MILANO FORMALS brand of goods. Bad faith use and registration under Policy ¶ 4(b)(iv) may be found where a respondent uses a confusingly similar domain name to attempt to attract Internet users to a website offering similar services as a complainant’s business. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel therefore concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues further that Respondent’s typosquatting behavior indicates bad faith use and registration. Typosquatting exists where there is a “simple misspelling” or a typographical error in a domain name. 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).”). Respondent merely removes the “s” in Complainant’s MILANO FORMALS mark to establish the <milanoformal.com> domain name. This constitutes bad faith under Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration of this domain name indicates that Respondent knew of the MILANO FORMALS mark when the domain name was registered. The Panel agrees that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied 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 <milanoformal.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 16, 2014
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