PersonalizationMall.com v. Bill Dash
Claim Number: FA1406001563874
Complainant is PersonalizationMall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Bill Dash (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <persomalizationmall.com> and <personalizationnall.com>, registered with GODADDY.COM, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2014; the National Arbitration Forum received payment on June 10, 2014.
On June 11, 2014, GODADDY.COM, LLC confirmed by email to the National Arbitration Forum that the <persomalizationmall.com> and <personalizationnall.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 June 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@persomalizationmall.com, postmaster@personalizationnall.com. Also on June 17, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 July 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant sells personalized merchandise and gifts. Complainant’s website, launched in 1998, attracts over 1 million unique visitors each month. Complainant uses PERSONALIZATION MALL and related marks in connection with this business. Complainant’s PERSONALIZATION MALL mark was registered in 2002.
Complainant contends that the disputed domain names are confusingly similar to its mark; that Respondent has no rights or legitimate interests in respect of the domain names; and that the domain names were registered and are being used in bad faith. In support thereof, Complainant states inter alia that Respondent has not been known by the domain names; that he is not sponsored by or legitimately affiliated with Complainant; and that Complainant has not given Respondent permission to use its mark in a domain name. Complainant asserts that Respondent is using the domain names to redirect Internet users to Complainant’s website in a manner that violates the terms of Complainant’s affiliate program. Complainant characterizes Respondent’s behavior as typosquatting, and asserts that Respondent must have known of Complainant when he registered the domain names due to the similarity between the domain names and the mark, and to the fact that Respondent was a member of Complainant’s affiliate program. Complainant also cites examples of other domain names registered by Respondent that appear to be straightforward instances of typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and have been used 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.”).
The disputed domain names incorporate Complainant’s registered mark PERSONALIZATION MALL, with the introduction of minor typographical errors, along with the “.com” top-level domain. These changes are insufficient to distinguish the domain names from Complainant’s mark. See, e.g., PersonalizationMall.com v. Above.com Domain Privacy, FA 1529553 (Nat. Arb. Forum Dec. 16, 2013) (finding <personalizatoinmall.com> and <personlaizationmall.com> confusingly similar to PERSONALIZATION MALL). The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in a disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain names incorporate typographical variations of Complainant’s mark without authorization, and apparently their sole use has been to defraud Complainant by violating the terms of its affiliate program. See PersonalizationMall.com v. Above.com Domain Privacy, supra (holding that use of domain names to divert Internet users in breach of affiliate program terms does not give rise to rights or legitimate interests). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that a domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in
a corresponding domain name, provided that [Respondent] ha[s] engaged in
a pattern of such conduct.” Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s registration of domain names that incorporate Complainant’s mark, with the introduction of a typographical error, together with the use of those domain names to profit from confusion with Complainant’s mark through Complainant’s affiliate program, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy; and Respondent’s pattern of typosquatting provides further evidence of bad faith under paragraph 4(b)(ii). See PersonalizationMall.com v. Above.com Domain Privacy, supra. Accordingly, the Panel finds that the disputed domain names were registered and have been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <persomalizationmall.com> and <personalizationnall.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 16, 2014
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