Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp v. Above.com Domain Privacy
Claim Number: FA1410001586973
Complainants are Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp (collectively “Complainant”), represented by CitizenHawk, Inc., California. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amarimark.com>, <ameriamark.com>, <ameriimark.com>, <amerimarkpremier.com>, <amimark.com>, <carolwhitegifts.com>, <carolwritegifts.com>, <carolwrithtgifts.com>, and <carrollwrightgifts.com>, registered with ABOVE.COM PTY LTD.
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 October 27, 2014; the National Arbitration Forum received payment on October 27, 2014.
On October 30, 2014, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <amarimark.com>, <ameriamark.com>, <ameriimark.com>, <amerimarkpremier.com>, <amimark.com>, <carolwhitegifts.com>, <carolwritegifts.com>, <carolwrithtgifts.com>, and <carrollwrightgifts.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@amarimark.com, postmaster@ameriamark.com, postmaster@ameriimark.com, postmaster@amerimarkpremier.com, postmaster@amimark.com, postmaster@carolwhitegifts.com, postmaster@carolwritegifts.com, postmaster@carolwrithtgifts.com, postmaster@carrollwrightgifts.com. Also on October 31, 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 December 1, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses AMERIMARK and CAROL WRIGHT to promote the sale of direct-mail gifts and goods. The marks are registered with the United States Patent and Trademark Office ("USPTO") (e.g., AMERIMARK, at Reg. No. 2,648,156, registered Nov. 12, 2002; CAROL WRIGHT, at Reg. No. 1,571,260, registered Dec. 12, 1989).
2. The <amarimark.com>, <ameriamark.com>, <ameriimark.com>, <amerimarkpremier.com>, <amimark.com>, <carolwhitegifts.com>, <carolwritegifts.com>, <carolwrithtgifts.com>, and <carrollwrightgifts.com> domain names all misspelling the two marks in various ways, with some of the domain names seeing an additional generic or descriptive term.
3. None of the domain names were registered before 2008.
4. Respondent has no rights or legitimate interests in any of these domain names. Respondent has not ever been commonly known by any of these disputed domain names. Complainant claims that all of the <amarimark.com>, <ameriamark.com>, <ameriimark.com>, <amerimarkpremier.com>, <amimark.com>, <carolwhitegifts.com>, <carolwritegifts.com>, <carolwrithtgifts.com>, and <carrollwrightgifts.com> domain names are used for hyperlink advertisements.
5. Respondent has registered and used the domain names in bad faith. Respondent has registered and used the domain names to disrupt Complainant’s business.
6. Respondent’s typosquatting is in itself indicative of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AMERIMARK and CAROL WRIGHT marks. Respondent’s domain names are confusingly similar to Complainant’s AMERIMARK and CAROL WRIGHT marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <amarimark.com>, <ameriamark.com>, <ameriimark.com>, <amerimarkpremier.com>, <amimark.com>, <carolwhitegifts.com>, <carolwritegifts.com>, <carolwrithtgifts.com>, and <carrollwrightgifts.com> domain names, and that Respondent registered and uses the 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.”).
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Amerimark Direct, LLC and Dr. Leonard's Healthcare Corp. The latter corporation is a subsidiary of the former; both are engaged in providing direct-mail catalogues and on-line retail marketing.
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006); Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants; accordingly both are treated as a single entity in this proceeding.
Complainant uses the AMERIMARK and CAROL WRIGHT marks to promote the sale of direct-mail gifts and goods. The marks are registered with the USPTO (e.g., AMERIMARK, at Reg. No. 2,648,156, registered Nov. 12, 2002; CAROL WRIGHT, at Reg. No. 1,571,260, registered Dec. 12, 1989). These USPTO registrations satisfy Policy ¶ 4(a)(i). 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.”).
Complainant points out that the <amarimark.com>, <ameriamark.com>, <ameriimark.com>, <amerimarkpremier.com>, <amimark.com>, <carolwhitegifts.com>, <carolwritegifts.com>, <carolwrithtgifts.com>, and <carrollwrightgifts.com> domain names all misspell the two marks in various ways, with some of the domain names adding an additional generic or descriptive term. The misspelling of each of the two marks enhances confusing similarity between the domain names and Complainant’s marks. See, e.g., Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”). The removal of any spacing in these marks and the addition of the “.com” gTLD is not relevant in this analysis. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). Finally, the addition of generic terms related to Complainant’s business further creates confusion between the marks and the domain names. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. 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 claims that Respondent has never been commonly known by any of the domain names at issue in this matter. “Above.com Domain Privacy” is listed as the registrant of record for all of the domain names. Based on this evidence, and the lack of any response from Respondent, the Panel concludes that Respondent is not commonly known by the domain names. 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).
The record shows that all of the <amarimark.com>, <ameriamark.com>, <ameriimark.com>, <amerimarkpremier.com>, <amimark.com>, <carolwhitegifts.com>, <carolwritegifts.com>, <carolwrithtgifts.com>, and <carrollwrightgifts.com> domain names are used for hyperlink advertisements. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel held that hyperlink advertising was not in itself enough to create a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, of a website hosted on a confusingly similar domain name. The Panel here agrees.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and used the domain names to disrupt Complainant’s business. Because the resolving websites includes hyperlinks which lead Internet users to competing products which compete with those offered by Complainant, the Panel finds Policy ¶ 4(b)(iii) bad faith through commercial disruption. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant also claims that Respondent is profiting from a likelihood Internet users will mistake Complainant to be associated with the content viewable on the resolving websites. The Panel agrees. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
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<amarimark.com>, <ameriamark.com>, <ameriimark.com>, <amerimarkpremier.com>, <amimark.com>, <carolwhitegifts.com>, <carolwritegifts.com>, <carolwrithtgifts.com>, and <carrollwrightgifts.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 15, 2014
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