Adorama, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1503001611436
Complainant is Adorama, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Queensland, Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adoramo.com> and <adorana.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2015; the Forum received payment on March 25, 2015.
On March 28, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <adoramo.com> and <adorana.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 April 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@adoramo.com and postmaster@adorana.com. Also on April 8, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant uses the ADORAMA mark in connection with its business as a retailer for photography and electronic devices. Complainant has used its trademark in this manner since 1979. Complainant has registered the ADORAMA mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,296,024, filed August 30, 2005, Registered September 25, 2007). These registrations and Complainant’s use since 1979 evinces rights in the mark. Respondent’s <adoramo.com> and <adorana.com> domain names are confusingly similar to the ADORAMA mark as they differ from the mark by only one letter and merely add the generic top-level domain (“gTLD”) “.com.”
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domain names and has not been given authorization from Complainant to register domain names which incorporate any variation of the ADORAMA mark. Further, Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the disputed sites resolve to a page which displays links to third-party websites, some of which divert Internet users to competitors of Complainant. Respondent presumably gains click-through fees from such hyperlinks.
Respondent has used the disputed domain names in bad faith. Respondent has demonstrated a pattern of bad faith domain name registrations as evidenced by prior UDRP decisions. Respondent has attempted to disrupt Complainant’s business by including competing click-through hyperlinks on its resolving sites. Further, Respondent has attempted to attract, for commercial gain, Internet users to its click-through sites via the goodwill associated with the ADORAMA mark. Finally, Complainant alleges that Respondent’s typosquatting behavior is evidence of bad faith in itself.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Respondent registered the <adoramo.com> domain name on February 18, 2006 and <adorana.com> domain name on May 22, 2005.
As the Respondent has failed to file a Response in this matter, the Panel will makes its finding based on the reasonable allegations of the Complainant. As there is no evidence in the record to distrust any of the allegations made by the Complainant, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain names and that the Respondent has registered and is using the disputed 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 the ADORAMA mark in connection with its business as a retailer for photography and electronic devices. Complainant claims to have registered the ADORAMA mark with the USPTO (Reg. No. 3,296,024, filed August 30, 2005; registered September 25, 2007).
Complainant also claims that it has common law rights in the ADORAMA mark dating back to its first commercial use in July, 1987; registration of its primary website, <adorama.com>, in April, 1996; and various press releases of Complainant’s brand associated with the ADORAMA mark which all are argued to establish common law rights in the ADORAMA mark. See Compl., at Attached Ex. G (screenshots of press-releases, the earliest of which dates February, 1998); see also Compl., at Attached Ex. J (WHOIS information for <adorama.com>, registered April 3, 1996). Complainant states that it has continuously used the ADORAMA mark since 1987 in affiliation with its website <adorama.com>, its photography, and electronic equipment retail services. Traditionally, a complainant must establish secondary meaning in a mark to achieve common law rights. Prior panels have found that secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to a complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel concludes that Complainant has established common law rights by showing the ADORAMA mark has achieved secondary meaning in association with Complainant’s business. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Next, Complainant contends that the disputed domain names are confusingly similar to the ADORAMA mark as they differ from the Complainant’s trademark by only one letter and merely add the gTLD “.com.” Panels have agreed that minor misspellings and the addition of the “.com” gTLD are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See 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 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). Complainant further asserts that such misspellings of the mark are evidence of “typosquatting. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the ADORAMA mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent is not commonly known by the domain names and has not been given authorization from Complainant to register domain names which incorporate any variation of the ADORAMA mark. In light of the relevant WHOIS information, the Panel finds that the Respondent is not commonly known by the disputed domain names.
Further, Complainant contends that Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, Complainant asserts that the disputed sites resolve to a page which displays links to third-party websites, some of which divert Internet users to competitors of Complainant. Such links include: “Camera”, “Spy Pen Camera on Amazon”, and “Canon DSLR Cameras.” See Compl., at Attached Ex. H (screenshots of the resolving pages of the disputed domain names, with the resolving page of the “Canon DSLR Cameras” hyperlink included). Complainant argues that Respondent presumably gains click-through fees from such hyperlinks. Such use of disputed domain names constitute neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
Accordingly, the Respondent has no bona fide offering of goods or services or legitimate noncommercial or fair use by using the disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant argues that Respondent has demonstrated a pattern of bad faith domain name registrations as evidenced by prior UDRP decisions. Although Complainant has failed to represent examples of prior UDRP decisions against Respondent, this case does involve three distinct domain names.
Accordingly, the Panel agrees with Complainant that the Respondent has demonstrated a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Next, Complainant contends that Respondent has attempted to disrupt Complainant’s business by including competing click-through hyperlinks on its resolving sites. Complainant’s Attached Exhibit H displays screenshots of the resolving pages of the disputed domain names, as well as the resolving page of a competitor of Complainant which is accessed through clicking one of the included hyperlinks. Such use constitutes a diversion of Internet users to competitors of Complainant, thereby disrupting Complainant’s legitimate business purposes in bad faith per Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent has attempted to attract, for commercial gain, Internet users to its click-through sites via the goodwill associated with the ADORAMA mark. The Panel agrees that such hyperlinks as “Camera”, “Spy Pen Camera on Amazon”, and “Canon DSLR Cameras”, presumably net Respondent click-through fees, which is evidence of bad faith per Policy ¶ 4(b)(iv). See Comp., at Attached Ex. H; see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, Complainant asserts that Respondent’s alleged “typosquatting” behavior is evidence of bad faith in itself under Policy ¶ 4(a)(iii). Panels have found in the past where a respondent had taken advantage of Internet users’ typos to attract them to a confusingly similar domain name, such use is evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Here, because the disputed domain names merely differ from the ADORAMA mark by only one letter, this appears to constitute bad faith “typosquatting” behavior under Policy ¶ 4(a)(iii).
As such, the Panel finds that the Respondent registered and used the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <adoramo.com> and <adorana.com> domain names be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: May 13, 2015
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