Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp v. RAKSHITA MERCANTILE PRIVATE LIMITED
Claim Number: FA1605001674124
Complainant is Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp (“Complainant”), represented by CitizenHawk, Inc., California, United States. Respondent is RAKSHITA MERCANTILE PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carlowrightgifts.com>, registered with Tirupati Domains and Hosting Pvt 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2016; the Forum received payment on May 10, 2016.
On May 11, 2016, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the Forum that the <carlowrightgifts.com> domain name is registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt 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 May 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@carlowrightgifts.com. Also on May 16, 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 June 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant uses the CAROL WRIGHT GIFTS mark in connection with its business of providing a variety of kitchen gadget, travel items, gardening supplies, holiday gifts, and women’s apparel merchandise. Complainant has registered the CAROL WRIGHT GIFTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,290,178, registered November 2, 1999), which establishes rights in the mark.
Respondent’s domain is confusingly similar to the CAROL WRIGHT GIFTS mark as it is merely a misspelling of the “CAROL” portion of the mark, created by transposing the letters “l” and “o,” which is a classic example of typosquatting. The domain also includes the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <carlowrightgifts.com> domain. Respondent is not commonly known by the disputed domain name, nor is Respondent sponsored by or legitimately affiliated with Complainant in any way. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <carlowrightgifts.com> domain name. What is more, Respondent failed to respond to Complainant’s cease and desist letter regarding the domain.
Respondent is using the <carlowrightgifts.com> domain in bad faith. First, Respondent has attempted to sell the domain. Second, Respondent’s use of the domain serves as a disruption of Complainant’s legitimate business purposes. Third, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website by including click through hyperlinks, which presumably redirect to competitors of Complainant. Finally, Respondent provided false and/or incomplete WHOIS contact information to the domain registrar.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for the CAROL WRIGHT GIFTS mark.
The at-issue domain name was registered after Complainant acquired trademark rights in <carlowrightgifts.com>.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s disputed domain name resolves to a website that displays third-party pay-per-click hyperlinks connected to Complainant’s competition.
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 (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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the CAROL WRIGHT GIFTS mark with the USPTO is sufficient to establish its rights in a mark under Policy ¶ 4(a)(i). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Respondent’s <carlowrightgifts.com> domain name contains Complainant’s CAROL WRIGHT GIFTS mark with its “l” and “o” transposed, less its spaces and with the top-level domain name “.com” added to the resulting string to complete the domain name. The slight differences between Respondent’s at-issue domain name and Complainant’s trademark fail to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s CAROL WRIGHT GIFTS mark pursuant to Policy ¶ 4(a)(i). See Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark); see also, Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)(finding that by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Where there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might conclude that Respondent has rights or interests in respect of the <carlowrightgifts.com> domain name.
WHOIS information for the <carlowrightgifts.com> domain name lists “RAKSHITA MERCANTILE PRIVATE LIMITED” as the domain name’s registrant and there is nothing in the record that suggests the Respondent is otherwise commonly known by the <carlowrightgifts.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Further, Respondent’s confusingly similar <carlowrightgifts.com> domain name addresses a website that contains hyperlinks that resolve to direct competitors of Complainant. Presumably, Respondent collects click-through fees from such links. Respondent’s use of the domain name suggests neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Moreover, Respondent failed to respond to the Complaint. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain name).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, multiple bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith under paragraph 4(a)(iii) of the Policy.
As mentioned above concerning Policy ¶ 4(a)(ii), Respondent’s <carlowrightgifts.com> domain name is used to display pay-per-click hyperlinks relating to Complainant’s competitors. This use of a confusingly similar domain name to divert Internet users to Complainant’s competitors demonstrates bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Furthermore, the use of the confusingly similar domain name to lull Internet users into believing the domain name is affiliated with or sponsored by Complainant when it is not shows Respondent’s bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Additionally, the evidence shows that Respondent’s domain name is indicated as being for sale on a Whois record reporting website. If authorized by Respondent, offering the confusingly similar domain name “for sale” indicates Respondent’s bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Finally, Respondent’s <carlowrightgifts.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with the targeted trademark; or will otherwise confuse the misspelled trademark laden domain name with a targeted trademark. As discussed above regarding Policy ¶ 4(a)(i), Respondent simply transposes two characters in Complainant’s trademark to form the second level of the confusingly similar <carlowrightgifts.com> domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carlowrightgifts.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 15, 2016
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