Nordstrom, Inc. v. Above.com Domain Privacy
Claim Number: FA1512001654490
Complainant is Nordstrom, Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huatelook.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2015; the Forum received payment on December 29, 2015.
On December 30, 2015, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <huatelook.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. 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 January 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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@huatelook.com. Also on January 4, 2016, 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 January 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the HAUTE LOOK mark in connection with its computerized on-line ordering feature dedicated to fashion, and offering discounted sales events in women’s and men’s clothing. Complainant has registered the HAUTE LOOK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,979,985, registered July 26, 2005), which demonstrates its rights in the mark. Respondent’s <huatelook.com> domain name is confusingly similar to the HAUTE LOOK mark because the domain name transposes the letters “a” and “u” within the HAUTE LOOK mark while removing space between the mark, and adding the “.com” generic top-level domain (“gTLD”). Respondent has thus exhibited “typosquatting” behavior.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent has never been licensed or authorized to use Complainant’s HAUTE LOOK mark. Further, Respondent uses of the domain name to provide unsuspecting Internet users links to competing third-party websites, and to phish for Internet users’ personal information through the use of a fake survey. See Compl., at Attached Annex 5 (screenshots of resolving pages to the disputed domain); see also Compl., at Attached Annex 6 (screenshots of competing sites which resolve from interaction with hyperlinks on disputed domain’s resolving pages). Such use constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has engaged in Policy ¶ 4(b)(iii) bad faith disruption by diverting Internet users to competitors of Complainant. Respondent attempts to collect unsuspecting Internet users’ personal information through a fake survey, and to commercially profit per Policy ¶ 4(b)(iv). Finally, Respondent’s typosquatting behavior is in itself evidence of bad faith per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing its computerized on-line ordering feature dedicated to fashion, and offering discounted sales events in women’s and men’s clothing.
2. Complainant has registered the HAUTE LOOK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,979,985, registered July 26, 2005), which demonstrates its rights in the mark.
3. Respondent registered the disputed domain name on December 14, 2008.
4. Respondent uses the domain name to provide unsuspecting Internet users links to competing third-party websites, and to phish for Internet users’ personal information through the use of a fake survey.
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(f), 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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the HAUTE LOOK mark in connection with its computerized on-line ordering feature dedicated to fashion, and offering discounted sales events in women’s and men’s clothing. Complainant has registered the HAUTE LOOK mark with the USPTO (e.g., Reg. No. 2,979,985, registered July 26, 2005), which Complainant alleges demonstrates its rights in the mark and argues that such a registration is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). The Panel notes Complainant’s Attached Annex 1, demonstrating its USPTO registrations. 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, the Panel finds that Complainant has established rights in the HAUTE LOOK mark per Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <huatelook.com> domain name is identical or confusingly similar to Complainant’s HAUTE LOOK mark. Complainant contends that Respondent’s <huatelook.com> domain name is confusingly similar to the HAUTE LOOK mark because the domain name transposes the letters “u” and “a” within the HAUTE LOOK mark while removing the space between the mark and adding the “.com” gTLD. See 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Respondent has exhibited typosquatting behavior through the <huatelook.com> domain name and finds that the domain name is confusing similar to the HAUTE LOOK mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HAUTE LOOK mark and to use it in its domain name with only a minor spelling change;
(b) Respondent registered the disputed domain name on December 14, 2008;
(c) Respondent uses the domain name to provide unsuspecting Internet users links to competing third-party websites, and to phish for Internet users’ personal information through the use of a fake survey;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. In light of the relevant WHOIS information and Respondent’s failure to provide additional evidence for the Panel’s consideration, the Panel finds that there is no basis for finding Respondent is commonly known by the disputed <huatelook.com> domain name 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);
(f) In addition, Complainant argues that Respondent is using the disputed domain name to resolve to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Such links include: “Wholesale women’s Clothing,” “Leather Clothes-handbags,” and “Boys Pajamas.” See Compl., at Attached Annex. 6. The Panel agrees that incorporating competing hyperlinks 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 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);
(g) Further, Complainant submits that Respondent uses the disputed domain name to phish for Internet users’ personal information through a fake survey. See Compl., at Attached Annex 5. Generally, panels have held that phishing for an Internet user’s personal information does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As such, the Panel finds that Respondent’s phishing behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively;
(h) Finally, Complainant argues that Respondent’s disputed domain name is a typosquatted version of Complainant’s HAUTE LOOK mark, which further demonstrates a lack of rights or legitimate interests in the disputed domain name. The Panel recalls that Respondent has simply misspelled Complainant’s mark and attached a gTLD to the mark. As the Panel finds that this misspelling amounts to typosquatting, the Panel also finds that Respondent lacks rights or legitimate interests in the disputed domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent has engaged in Policy ¶ 4(b)(iii) bad faith disruption by diverting Internet users to competitors of Complainant. The Panel notes that Complainant has included screenshots of the resolving site for the <huatelook.com> domain name at Complainant’s Attached Annexes 5 and 6. Panels have 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) and the Panel makes that finding in the present case. 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)).
Secondly, Complainant argues that Respondent uses the disputed domain name for phishing purposes, thus demonstrating Policy ¶ 4(b)(iv) bad faith. The Panel notes that Respondent uses the disputed domain name to operate a fake survey, in which Respondent attempts to gain access to Internet users’ personal information. See Compl., at Attached Annex 5. As the Panel agrees with Complainant’s argument, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Thirdly, Complainant submits that Respondent’s typosquatting behavior is in itself evidence of bad faith per Policy ¶ 4(a)(iii). More specifically, Complainant cites to the previous panel decision in Diners Club int’l Ltd. v. Domain Admin ****** It’s all in the name ******, FA 156839 (Nat. Arb. Forum June 23, 2003), where the panel held that incorporating a typosquatted version of the complainant’s URL evidences both actual knowledge and a bad faith intent to ensnare Internet users who are trying to reach the complainant’s URL. The Panel agrees with the decision in Diners Club and concludes that registering a simple misspelling of the HAUTE LOOK mark imputes an attempt to take advantage of the goodwill associated with the mark, and therefore holds that Respondent had actual knowledge of the mark when registering and using the disputed domain name and did so in bad faith per Policy ¶ 4(a)(iii). See, e.g., Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <huatelook.com> domain name using the HAUTE LOOK mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <huatelook.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 1, 2016
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