Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1709001749276
Complainant is Harry Winston, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harywinston.com>, registered with Internet Domain Service BS Corp.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2017; the Forum received payment on September 20, 2017.
On September 19, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <harywinston.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 September 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2017 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@harywinston.com. Also on September 22, 2017, 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 October 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <harywinston.com> domain name is confusingly similar to Complainant’s HARRY WINSTON mark.
2. Respondent does not have any rights or legitimate interests in the <harywinston.com> domain name.
3. Respondent registered and uses the <harywinston.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for its HARRY WINSTON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,112,912, registered Nov. 11, 1997). Complainant also registered the HARRY WINSTON mark with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 006476634, registered Sept. 17, 2008). Complainant uses the HARRY WINSTON mark in connection with its fine jewelry business.
Respondent registered the <harywinston.com> domain name on March 29, 2003, and uses it to resolve to redirect Internet users to a rotating series of third party websites, some of which compete with Complainant, and some of which attempt to install malware onto users’ computers.
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 Panel finds that Complainant’s registrations with the USPTO and OHIM are sufficient to show rights in the HARRY WINSTON mark. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.).
Respondent’s <harywinston.com> domain name incorporates the HARRY WINSTON mark, simply deleting the letter “r” and adding the “.com” gTLD. The misspelling of a famous mark does not diminish the confusingly similarity between the mark and the disputed domain name. See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002). Likewise, the addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003). Therefore, the Panel finds that Respondent’s <harywinston.com> domain name is confusingly similar to Complainant’s HARRY WINSTON mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 <harywinston.com> domain name and is not commonly known by the disputed domain name. The WHOIS information associated with the disputed domain name identifies Respondent as “Domain Admin” of “Whois Privacy Corp.” The Panel finds that Respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that Respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant avers it has not authorized or licensed Respondent to use the HARRY WINSTON mark, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant demonstrates that Respondent’s <harywinston.com> resolves to a website that redirects Internet users to a rotating series of third party websites, some of which attempt to install malware onto users’ computers. “Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.” MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum, Nov. 28, 2016). Moreover, a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “fail[s] to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009). Here, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services, further evidence that Respondent lacks rights and legitimate interests in the <harywinston.com> domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that the disputed domain name attracts Internet users to Respondent’s website for commercial gain, presumably through click-through fees. Complainant shows that Respondent’s <harywinston.com> uses a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers. “[R]egistration and use of the disputed domain name to redirect Internet users to a series of websites offering products in competition with [c]omplainant constitutes a disruption of [c]omplainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” See Natural Supplement Association, Incorporated d/b/a Experimental and Applied Sciences, Inc. v. Private Registration- Rnew, FA 1365571 (Forum, Feb. 9, 2011). Moreover, disputed domain names that distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010). Thus, the Panel finds that Respondent registered and is using <harywinston.com> in bad faith pursuant to Policy ¶¶ 4(a)(iii) and 4(b)(iv).
Respondent has also engaged in typosquatting by taking advantage of a common typing error to redirect users to Respondent’s website. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016), where the Panel found:
“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. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”
The Panel finds that Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii). See Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014).
Complainant contends that in light of the fame, notoriety, and long-standing use of Complainant's HARRY WINSTON mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark when it registered the <harywinston.com> domain name, which constitutes bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds that 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 <harywinston.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 18, 2017
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