Just Fabulous, Inc. v Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1410001583169
Complainant is Just Fabulous, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <justfa.com> and <justfb.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2014; the National Arbitration Forum received payment on October 3, 2014.
On October 5, 2014, and October 8, 2014, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <justfa.com> and <justfb.com> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 October 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2014 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@justfa.com, postmaster@justfb.com. Also on October 30, 2014, 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 November 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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’s Contentions
1. Complainant uses JUST FAB to market and sell its line of product accessories. The JUST FAB mark has been duly registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,183,739, registered July 31, 2012). The <justfa.com> and <justfb.com> domain names are confusingly similar in that they remove a single letter from the mark.
2. Respondent does not have rights or legitimate interests in the <justfa.com> and <justfb.com> domain names. First, Respondent is not commonly known by either of these <justfa.com> and <justfb.com> domain names. Second, the domain names are used to promote various hyperlinked offers.
3. Respondent registered and is using the domain names in bad faith. First, the domain names are held out for sale. Respondent is a repeat cybersquatter. The use of the domain names is disrupting Complainant’s commercial endeavors. Further, Respondent is able to profit from the likelihood of confusion among Internet users. The domain names are clearly typosquatted versions of Complainant’s marks.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <justfa.com> and <justfb.com> domain names are confusingly similar to Complainant’s JUST FAB mark.
2. Respondent does not have any rights or legitimate interests in the <justfa.com> and <justfb.com> domain names.
3. Respondent registered or used the <justfa.com> and <justfb.com> domain names 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 uses JUST FAB to market and sell its line of product accessories. The JUST FAB mark has been duly registered with the USPTO (e.g., Reg. No. 4,183,739, registered July 31, 2012). The Panel finds this USPTO registration as sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights in the JUST FAB mark. 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.”).
Complainant argues that the <justfa.com> and <justfb.com> domain names are confusingly similar in that they remove a single letter from the mark. The Panel agrees that neither adding the gTLD “.com” nor removing a single letter from the mark creates a meaningful difference, and as such this spaceless domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO 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); 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 commonly known by either of these <justfa.com> and <justfb.com> domain names. Complainant also claims that it has never authorized or endorsed Respondent’s use of the JUST FAB mark in domain names. The Panel notes that “Private Registrations Aktien Gesellschaft” is listed as the registrant of record for these domain names. The Panel concludes that Respondent is not commonly known by any of these domain names under Policy ¶ 4(c)(ii). See . St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name)
Complainant further claims that the domain names are used to promote various hyperlinked offers. The Panel notes Exhibit H, showing how the domain name resolves to websites featuring related hyperlink ads. This Panel agrees that Respondent’s use of the domain names merely for advertising shows that Respondent has no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, in store for this domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant claims that the domain names are held out for sale. The Panel notes that the WHOIS information for the disputed domain names includes an offer to sell the domain names for over $2,000. See Compl., at Attached Ex. H. Here the Panel finds these offers to constitute Policy ¶ 4(b)(i) bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant argues that Respondent is a repeat cybersquatter. The Panel notes the prior UDRP decisions cited by Respondent. See Mediacom Communications Corporation v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1561964 (Nat. Arb. Forum June 27, 2014); Exhibit N. The Panel agrees that these prior UDRP decisions are evidence of Policy ¶ 4(b)(ii) bad faith. See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”).
Complainant claims that the use of the domain names is disrupting Complainant’s commercial endeavors. The Panel notes how the domain names include hyperlinks to competing websites, including “High Heels Shoe” and “Shoe Fashion.” See Compl., at Attached Ex. H. The Panel finds Policy ¶ 4(b)(iii) bad faith disruption based on the presence of these competing links. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant believes that the Respondent is able to profit from the likelihood of confusion among Internet users. The Panel again takes note of the domain names’ use for advertisements related to shoes and fashion accessories. Seer Compl., at Attached Ex. H. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found Policy ¶ 4(b)(iv) bad faith when the domain name was used to promote a series of hyperlinks that send users to competing websites. Here the Panel similarly finds Policy ¶ 4(b)(iv) bad faith.
Complainant argues that the domain names are clearly typosquatted versions of Complainant’s marks. In Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005), the panel acknowledged typosquatting as the use of a domain name that was so confusingly similar to the mark as to be little more than a common misspelling that Internet users could reasonably be expected to make. The Panel believes that these domain names (created by removing a single letter from Complainant’s mark) suggest bad faith, and finds accordingly under 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 <justfa.com> and <justfb.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 9, 2014
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