The Dress Barn, Inc. v. Pham Dinh Nhut
Claim Number: FA1503001611220
Complainant is The Dress Barn, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Ho Chi Minh City, Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com>, registered with April Sea Information Technology Company Limited.
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 Forum electronically on March 24, 2015; the Forum received payment on March 24, 2015. The Complaint was received in both Vietnamese and English.
On March 25, 2015, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 April 7, 2015, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of April 27, 2015 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@ddressbarn.com, postmaster@dressbaen.com, postmaster@dressbarnd.com, postmaster@dressbarne.com, postmaster@dressbran.com. Also on April 7, 2015, the Vietnamese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the DRESSBARN mark in connection with its business as a retailer of women’s clothing. Complainant has registered the DRESSBARN mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,785,570, registered November 25, 2003), evincing rights in the mark. Respondent’s <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names are confusingly similar to the DRESSBARN mark because the domain names either add a letter or transpose letters within the DRESSBARN mark while adding the “.com” generic top-level domain (“gTLD”). Respondent has thus exhibited “typosquatting” behavior.
2. Respondent has no rights or legitimate interests in the disputed domain names.
3. Respondent is not commonly known by the disputed domain names.
4. Respondent has never been licensed or authorized to use Complainant’s DRESSBARN mark. Further, Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Such use constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
5. Respondent is a serial cybersquatter with prior UDRP case decisions against it, which evinces a bad faith pattern of domain name registration per Policy ¶ 4(b)(ii). Next, Respondent has engaged in Policy ¶ 4(b)(iii) bad faith disruption by diverting Internet users to competitors of Complainant. Policy ¶ 4(b)(iv) attraction for commercial gain is evinced by Respondent’s use of hyperlinks to competing websites of Complainant for commercial gain. Finally, Respondent’s typosquatting behavior is in itself evidence of bad faith per Policy ¶ 4(a)(iii).
B. Respondent’s Contentions
1. Respondent did not submit a Response to the Complaint.
1. Respondent’s <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names are confusingly similar to Complainant’s DRESSBARN mark.
2. Respondent does not have any rights or legitimate interests in the <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names.
3. Respondent registered or used the <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names in bad faith.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making Vietnamese the language of the proceedings.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
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 the DRESSBARN mark in connection with its business as a retailer of women’s clothing. Complainant purports to have registered the DRESSBARN mark with the USPTO (e.g., Reg. No. 2,785,570, registered November 25, 2003), and argues that such a registration is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). Panels have agreed that where a valid trademark registration in a mark exists, Policy ¶ 4(a)(i) rights in such a mark are imputed to the complainant, even where the respondent operates in a different country. 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.”). Therefore, this Panel agrees that Complainant has established rights in the DRESSBARN mark per Policy ¶ 4(a)(i).
Next, Complainant posits that Respondent’s <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names are confusingly similar to the DRESSBARN mark because the domain names either add a letter, transpose letters within the DRESSBARN mark, or replace a letter within the mark, all while adding the “.com” generic top-level domain (“gTLD”). Panels have seen such alterations to a mark as insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerworld.com> is confusingly similar to the complainant’s mark, COMPUTERWORLD); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel therefore agrees that Respondent has exhibited typosquatting behavior through the <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names and has failed to overcome a finding of confusing similarity with the DRESSBARN mark pursuant to Policy ¶ 4(a)(i).
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 asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant argues that Respondent is not commonly known by the disputed domain names. In light of the relevant WHOIS information and Respondent’s failure to provide additional evidence for the Panel’s consideration, the Panel agrees that there is no basis for finding Respondent commonly known by the disputed <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names under Policy ¶ 4(c)(ii). 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).
Further, Complainant argues that Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Such links include: “Womens Clothing”, “Credit Card Processing”, and “Dressbarn.com”. See Compl., at Attached Ex. H. The Panel may agree that incorporating competing hyperlinks as well as hyperlinks that may resolve to Complainant’s own site constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also 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).
Complainant argues that Respondent is a serial cybersquatter with prior UDRP case decisions against it, which evinces a bad faith pattern of domain name registration per Policy ¶ 4(b)(ii). The Panel’s attention is directed to Complainant’s Attached Exhibit N, which includes the decisions from the following cases: Pentair, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut, D2014-2161 (WIPO Feb. 9, 2015); ESTEVA OOMMM, S.L. v. Pham Dinh Nhut / Vietnam Domain Privacy Services, D2014-2095 (WIPO Jan. 27, 2015); and The Royal Bank of Scotland Group plc v. Vietnam Domain Privacy Services, FA1378748 (Nat. Arb. Forum Apr. 16, 2011). In light of the available evidence, this Panel finds Respondent as having engaged in a bad faith pattern of domain name registrations per Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Next, Respondent is alleged by Complainant to have engaged in Policy ¶ 4(b)(iii) bad faith disruption by diverting Internet users to competitors of Complainant. Complainant has included screenshots of the resolving sites for the <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names at Complainant’s Attached Exhibit H. Panels have thoroughly agreed that a respondent’s inclusion of competing hyperlinks on a website with a confusingly similar domain name to complainant’s mark imputes a finding of bad faith per Policy ¶ 4(b)(iii). 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)).
Additionally, Complainant asserts that Policy ¶ 4(b)(iv) attraction for commercial gain is evinced by Respondent’s use of hyperlinks to competing websites of Complainant for commercial gain. See Compl., at Attached Ex. H (hyperlinks include: “Womens Clothing”, “Credit Card Processing”, and “Dressbarn.com”). The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some of which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent’s typosquatting behavior is in itself evidence of bad faith per Policy ¶ 4(a)(iii). The panel in Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) found the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting.’” The Panel agrees with the finding in Canadian Tire Corp. and conclude that Respondent in this dispute has evidenced “typosquatting” behavior in the <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names because they create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location, and find bad faith per 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 <ddressbarn.com>, <dressbaen.com>, <dressbarnd.com>, <dressbarne.com>, and <dressbran.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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