Cafepress.com, Inc. v.
Demand Domains, Inc.
Claim Number: FA0907001273216
PARTIES
Complainant is Cafepress.com, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kafepress.com>, registered with Enom, Inc.
PANEL
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.
Joel M.Grossman,Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 10, 2009; the
National Arbitration Forum received a hard copy of the Complaint on July 13, 2009.
On July 10, 2009, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <kafepress.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 July 16, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 5, 2009 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@kafepress.com by e-mail.
A timely Response was received and determined to be complete on August 5, 2009.
An Additional Submission from Complainant was timely received on August
10, 2009.
On August 11, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Plaintiff first contends that the domain name is identical to or
confusingly similar to its protected trademark Complainant owns federal
trademarks not only in the phrase “cafepress” but also in the phrase
“cafepress.com.” The substitution of the letter “k” for “c” does nothing to
avoid confusion. Complainant next asserts that Respondent has no rights or
legitimate interests in the domain name. Respondent is not commonly known by
the name; Complainant has not authorized Respondent to use its mark; and
Respondent is using the name to redirect Internet users to its website which
features links to third-party businesses which compete with Complainant.
Finally, Complainant contends that the name was registered and is being used in
bad faith. Complainant asserts that typosquatting, such as replacing the “c” in
Complainant’s mark with a “k,” is in and of itself evidence of bad faith.
B. Respondent
Respondent does not contest the transfer of the domain name to
Complainant, and does not address the first two factors, that is, whether the
domain name is identical to or confusingly similar to a mark in which
Complainant has rights, or whether Respondent has any rights or legitimate
interests in the domain name. Respondent does contend that it did not register the
name in bad faith, as it was unaware of Complainant’s mark at the time of
registration. Respondent requests that the Panel transfer the domain name to
Complainant with no finding of bad faith on the part of Respondent.
C. Additional Submissions
In its Additional Submission Complainant asserts that it is extremely
unlikely that Respondent would not have been aware of Complainant’s mark at the
time of registration, given the fact that Complainant has over 7 million users
who have created over 300 million products through Complainant’s website.
Complainant objects to Respondent’s request that the Panel transfer the domain
name to Complainant with no finding of bad faith registration.
FINDINGS
Because Respondent consents to the transfer
of the domain name to Complainant, the Panel elects not to make specific
findings in this matter. See Boehringer
Ingelheim Int’l GmbH v. Modern Ltd.—Cayman Web Dev., FA 133625 (Nat. Arb.
Forum Jan. 9, 2003). See also Malev
Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum
Jan. 13, 2004) (“In this case, the parties have both asked for the domain name
to be transferred to the Complainant… Since the requests of the parties in this
case are identical, the Panel has no mandate to make findings of fact or of
compliance (or not) with the Policy.”)
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
As set forth above, the Panel has determined
not to make findings in this matter.
As noted above, the Panel has determined not
to make findings in this matter.
As noted above, the Panel has determined not
to make findings in this matter.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kafepress.com> domain name be TRANSFERRED
from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: August 25, 2009
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