Register.com, Inc. v. ROMFAB c/o Alf Temme
Claim Number: FA0604000690841
Complainant is Register.com, Inc. (“Complainant”), represented by Brett E. Lewis of Lewis & Hand. LLP, 45 Main Street, Suite 818, Brooklyn, NY,11201. Respondent is ROMFAB c/o Alf Temme (“Respondent”), 8137 Lankershim Blvd, North Hollywood, CA,91605.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <rdegister.com>, <rfegister.com>, <re4gister.com>, <registerf.com>, <refgister.com>, <regist3er.com>, <registe5r.com>, <registetr.com>, <reggister.com>, <regiister.com>, <regtister.com>, <rehgister.com>, <reg9ister.com>, <regi9ster.com>, <regist5er.com>, <regisrter.com>, <regisgter.com>, <registyer.com>, <regist6er.com>, <regidster.com>, <registe3r.com>, <registe5r.com>, <registedr.com>, <registder.com>, <registe4r.com>, <registefr.com>, <registerf.com>, <reg8ister.com> and <regi8ster.com>, registered with Moniker Online Services, Inc..
The undersigned certifies that she has acted independently and impartially and that e best of her knowledge she no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 25, 2006; the National Arbitration Forum received a hard copy of the Complaint April 27, 2006.
On Apr 27, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <rdegister.com>, <rfegister.com>, <re4gister.com>, <registerf.com>, <refgister.com>, <regist3er.com>, <registe5r.com>, <registetr.com>, <reggister.com>, <regiister.com>, <regtister.com>, <rehgister.com>, <reg9ister.com>, <regi9ster.com>, <regist5er.com>, <regisrter.com>, <regisgter.com>, <registyer.com>, <regist6er.com>, <regidster.com>, <registe3r.com>, <registe5r.com>, <registedr.com>, <registder.com>, <registe4r.com>, <registefr.com>, <registerf.com>, <reg8ister.com> and <regi8ster.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 23, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@rdegister.com, postmaster@rfegister.com, postmaster@re4gister.com, postmaster@registerf.com, postmaster@refgister.com, postmaster@regist3er.com, postmaster@registe5r.com, postmaster@registetr.com, postmaster@reggister.com, postmaster@regiister.com, postmaster@regtister.com, postmaster@rehgister.com, postmaster@reg9ister.com, postmaster@regi9ster.com, postmaster@regist5er.com, postmaster@regisrter.com, postmaster@regisgter.com, postmaster@registyer.com, postmaster@regist6er.com, postmaster@regidster.com, postmaster@registe3r.com, postmaster@registe5r.com, postmaster@registedr.com, postmaster@registder.com, postmaster@registe4r.com, postmaster@registefr.com, postmaster@registerf.com, postmaster@reg8ister.com and postmaster@regi8ster.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain names that Respondent registered, <rdegister.com>, <rfegister.com>, <re4gister.com>, <registerf.com>, <refgister.com>, <regist3er.com>, <registe5r.com>, <registetr.com>, <reggister.com>, <regiister.com>, <regtister.com>, <rehgister.com>, <reg9ister.com>, <regi9ster.com>, <regist5er.com>, <regisrter.com>, <regisgter.com>, <registyer.com>, <regist6er.com>, <regidster.com>, <registe3r.com>, <registe5r.com>, <registedr.com>, <registder.com>, <registe4r.com>, <registefr.com>, <registerf.com>, <reg8ister.com> and <regi8ster.com>, are confusingly similar to Complainant’s REGISTER.COM mark.
2. Respondent has no rights to or legitimate interests in the <rdegister.com>, <rfegister.com>, <re4gister.com>, <registerf.com>, <refgister.com>, <regist3er.com>, <registe5r.com>, <registetr.com>, <reggister.com>, <regiister.com>, <regtister.com>, <rehgister.com>, <reg9ister.com>, <regi9ster.com>, <regist5er.com>, <regisrter.com>, <regisgter.com>, <registyer.com>, <regist6er.com>, <regidster.com>, <registe3r.com>, <registe5r.com>, <registedr.com>, <registder.com>, <registe4r.com>, <registefr.com>, <registerf.com>, <reg8ister.com> and <regi8ster.com> domain names.
3. Respondent registered and used the <rdegister.com>, <rfegister.com>, <re4gister.com>, <registerf.com>, <refgister.com>, <regist3er.com>, <registe5r.com>, <registetr.com>, <reggister.com>, <regiister.com>, <regtister.com>, <rehgister.com>, <reg9ister.com>, <regi9ster.com>, <regist5er.com>, <regisrter.com>, <regisgter.com>, <registyer.com>, <regist6er.com>, <regidster.com>, <registe3r.com>, <registe5r.com>, <registedr.com>, <registder.com>, <registe4r.com>, <registefr.com>, <registerf.com>, <reg8ister.com> and <regi8ster.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Register.com, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the REGISTER.COM mark (Reg. No. 2,664,967 issued December 24, 2002), in connection with its domain name registration business.
Respondent registered the <rdegister.com>, <rfegister.com>, <re4gister.com>, <registerf.com>, <refgister.com>, <regist3er.com>, <registe5r.com>, <registetr.com>, <reggister.com>, <regiister.com>, <regtister.com>, <rehgister.com>, <reg9ister.com>, <regi9ster.com>, <regist5er.com>, <regisrter.com>, <regisgter.com>, <registyer.com>, <regist6er.com>, <regidster.com>, <registe3r.com>, <registe5r.com>, <registedr.com>, <registder.com>, <registe4r.com>, <registefr.com>, <registerf.com>, <reg8ister.com> and <regi8ster.com> domain names January 19, 2004. Respondent is using the disputed domain names to redirect Internet users to its websites with links to third-party websites offering the services of Complainant and its direct competitors.
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."
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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Using extrinsic proof in this proceeding, Complainant
established rights in the REGISTER.COM mark through registration of the mark
with the USPTO. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The disputed domain names that Respondent registered are confusingly similar to Complainant’s REGISTER.COM mark pursuant to Policy ¶ 4(a)(i), because each is a slight misspelling of the mark. Respondent added letters and numbers to Complainant’s mark. Panels have held that the addition of a letter or number to a registered mark does not distinguish a domain name from a complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name that differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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 Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
names. Complainant alleged that
Respondent has no such rights to or legitimate interests in the disputed domain
names. Complainant has the initial
burden of proof in establishing that Respondent has no rights or legitimate
interests in the domain names. Once
Complainant makes a prima facie case in support of its allegations, the
burden then shifts to Respondent to show it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere
assertion by the complainant that the respondent has no right or legitimate
interest is sufficient to shift the burden of proof to the respondent to
demonstrate that such a right or legitimate interest does exist).
No evidence in the record suggests that Respondent is
commonly known by the disputed domain names.
Therefore, Respondent has not established rights or legitimate interests
in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See
Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any
derivation.”).
In addition, Respondent is using
the disputed domain names, which are confusingly similar to Complainant’s REGISTER.COM
mark, to redirect Internet users
to Respondent’s websites with links to third-party websites offering same or similar
services to those offered by Complainant and on behalf of Complainant’s direct
competitors. Such use of the
disputed domain names for commercial gain by misdirecting Internet users
seeking Complainant’s services to other websites not affiliated with
Complainant but selling similar services does not provide evidence of a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use); see
also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5,
2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb.
Forum Dec. 1, 2003) (finding that the respondent was not using the domain name
within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used
the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed domain names, which are
confusingly similar to Complainant’s REGISTER.COM mark, to attract Internet
users to a web directory displaying links to third-party websites offering the
services of Complainant and its competitors.
The Panel infers that Respondent receives click-through fees for
diverting consumers to these websites.
Therefore, Respondent is taking advantage of the likelihood of confusion
between Respondent’s domain names and Complainant’s mark and capitalizing on
the goodwill associated with the mark.
The Panel finds that such use constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site).
Moreover, Respondent’s various misspellings of Complainant’s REGISTER.COM mark in the disputed domain names indicate that Respondent is typosquatting. Typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
Additionally, Respondent has acted in bad faith by registering and using domain names that contain Complainant’s registered mark in its entirety. Respondent is using the disputed domain names to redirect Internet users to its websites with links to third-party websites offering the services of Complainant and its direct competitors. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Complainant 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 <rdegister.com>, <rfegister.com>, <re4gister.com>, <registerf.com>, <refgister.com>, <regist3er.com>, <registe5r.com>, <registetr.com>, <reggister.com>, <regiister.com>, <regtister.com>, <rehgister.com>, <reg9ister.com>, <regi9ster.com>, <regist5er.com>, <regisrter.com>, <regisgter.com>, <registyer.com>, <regist6er.com>, <regidster.com>, <registe3r.com>, <registe5r.com>, <registedr.com>, <registder.com>, <registe4r.com>, <registefr.com>, <registerf.com>, <reg8ister.com> and <regi8ster.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 8, 2006.
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