Recreational Equipment, Inc. v. Gioacchino Zerbo
Claim Number: FA0808001220450
Complainant is Recreational Equipment, Inc. (“Complainant”), represented by William
O. Ferron, of Seed Intellectual Property Law Group PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwrei.com>, registered with Dotster, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 15, 2008.
On August 14, 2008, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwrei.com> domain name is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August
18, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 2008
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@wwwrei.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwrei.com> domain name is confusingly similar to Complainant’s REI mark.
2. Respondent does not have any rights or legitimate interests in the <wwwrei.com> domain name.
3. Respondent registered and used the <wwwrei.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Recreational Equipment, Inc., is in the business of providing retail store services and goods related to outdoor and traveling activities such as equipment, clothing, footwear, accessories, and publications. Complainant registered its REI mark in association with this business with the United States Patent and Trademark Office (“USPTO”) on August 4, 1981 (Reg. No. 1,163,815).
Respondent, Gioacchino Zerbo, accepted the transfer of the <wwwrei.com> domain name sometime after January 2, 2007. Michele Dinoia originally registered the disputed domain name on August 6, 2001. The disputed domain name currently resolves to a website displaying links for services and goods in competition with Complainant.
Respondent has also been the respondent in other UDRP decisions wherein the disputed domain names were transferred to the respective complainants in those cases. See, e.g., Alpitour S.p.A. v. Zerbo, FA 767519 (Nat. Arb. Forum Sept. 22, 2006); see also MO Dep’t of Trans. v. Gioacchino Zerbo, FA 1087660 (Nat. Arb. Forum Nov. 19, 2007); see also Exxon Mobil Oil Corp. v. Gioacchino Zerbo, D2008-0046 (WIPO Feb. 27, 2008).
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 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.”).
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.
The Panel finds that Complainant’s registration with the USPTO is sufficient to establish rights in the REI mark pursuant to Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration with the USPTO for the ENTERPRISE mark established the complainant’s rights in the mark); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <wwwrei.com> domain name is a typosquatted version of its REI mark with the addition of the prefix “www” and the omission of the period between “www” and “rei.” In Bank of America Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000), the panel found that the respondent’s domain name <wwwbankofamerica.com> was confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet.” The addition of a generic top-level domain “.com” is well known to be irrelevant when determining the possibility of Internet users finding the domain name and the mark confusingly similar. Therefore, the Panel finds that Respondent’s <wwwrei.com> domain name is confusingly similar and a typosquatted version of Complainant’s REI mark pursuant to Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity had been established because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); see Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
In consideration of Policy ¶ 4(a)(ii),
the Panel first examines whether or not Complainant has met its burden of
establishing a prima facie case
against Respondent. The Panel finds that
Complainant has met this threshold, and that the burden shifts to Respondent to
affirmatively demonstrate that it has rights or legitimate interests in the <wwwrei.com> domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii)
of the Policy shows that the burden of proof shifts from the Complainant to the
Respondent once the Complainant has made out a prima facie case that the
Respondent has no rights or interests in the domain names.”).
However, the Panel has received no response in this case. Therefore, the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name. Nonetheless, the Panel will evaluate whether or not the elements of Policy ¶ 4(c) have been met. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent has not been licensed or otherwise permitted by Complainant to use the REI mark in connection with the <wwwrei.com> domain name. Moreover, there is nothing else in the record that indicates that Respondent is or ever was commonly known by the disputed domain name; even the WHOIS information states that Respondent is known as “Gioacchino Zerbo.” Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also 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).
Complainant asserts that the disputed domain name is being
used commercially and in competition with Complainant due to the display of
competing links on the resolving website.
The <wwwrei.com>
domain name sells products and services in direct competition with those
offered in association with Complainant’s business. The Panel finds this is neither a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting . . . as a means of redirecting
consumers against their will to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site.”); 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).
Additionally, the Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain name
due to its typosquatting of Complainant’s REI mark pursuant to Policy ¶ 4(a)(ii). Diners
Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839
(Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
the complainant’s DINERS CLUB mark, was evidence in and of itself that the
respondent lacks rights or legitimate interests in the disputed domain name vis
á vis the complainant); see also
Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000)
(finding that fair use does not apply where the domain names are misspellings
of the complainant's mark); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc.
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a
means of redirecting consumers against their will to another site, does not
qualify as a bona fide offering of goods or services, whatever may be the goods
or services offered at that site.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
This Panel has found that Respondent registered a
typosquatted version of Complainant’s REI mark for its disputed domain name
pursuant to Policy ¶ 4(a)(i). In Black & Decker Corp. v. Khan, FA
137223 (Nat. Arb. Forum Feb. 3, 2003), the panel found the
<wwwdewalt.com> domain name was registered to “ensnare those individuals
who forget to type the period after the ‘www’ portion of [a] web-address,”
which was evidence that the domain name was registered and used in bad faith. Likewise, this Panel finds that Respondent’s
use of the typosquatted domain name constitutes evidence of bad faith
registration and use under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net
1111111111, D2003-0232 (WIPO May 22, 2003) (finding the
respondent registered and used the domain name in bad faith because the
respondent “created ‘a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the Respondent’s web
site or location’. . . through Respondent’s persistent practice of
‘typosquatting’”); see also Nat’l Ass’n of Prof’l Baseball League, Inc.
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is
the intentional misspelling of words with [the] intent to intercept and siphon
off traffic from its intended destination, by preying on Internauts who make
common typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”).
Furthermore, Respondent has been the respondent in previous UDRP decisions wherein the disputed domain names were transferred to the respective complainants in those cases. See, e.g., Alpitour S.p.A. v. Zerbo, FA 767519 (Nat. Arb. Forum Sept. 22, 2006); see also MO Dep’t of Trans. v. Gioacchino Zerbo, FA 1087660 (Nat. Arb. Forum Nov. 19, 2007); see also Exxon Mobil Oil Corp. v. Gioacchino Zerbo, D2008-0046 (WIPO Feb. 27, 2008). The Panel finds that these previous decisions demonstrate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Moreover, the disputed domain name resolves to a website offering products and services in direct competition with Complainant. The Panel finds this competitive and disruptive use sufficient to establish Respondent’s bad faith registration and use of the <wwwrei.com> domain name pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The fact that the <wwwrei.com>
domain name is confusingly similar to Complainant’s marks and commercially
offers competitive products for Respondent’s commercial gain strengthens the
Panel’s findings that Respondent registered and is using the disputed domain
name in bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <wwwrei.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 26, 2008
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