national
arbitration forum
DECISION
Frederick's of Hollywood
Group Inc. v. Blue Water LLC
Claim
Number: FA0910001290927
PARTIES
Complainant is Frederick's
of Hollywood Group Inc. (“Complainant”), represented by CitizenHawk,
Inc., California, USA. Respondent is Blue Water LLC (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofhoolywood.com>,
<fredericksofohllywood.com>, <frederikcsofhollywood.com>,
<rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com>,
registered with Wild West Domains, Inc.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on October 22, 2009; the National
Arbitration Forum received a hard copy of the Complaint on October 23, 2009.
On October 23, 2009, Wild West Domains,
Inc. confirmed by e-mail to the National Arbitration Forum that the <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofhoolywood.com>,
<fredericksofohllywood.com>, <frederikcsofhollywood.com>,
<rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com>
domain names are registered with Wild West Domains, Inc. and that Respondent is
the current registrant of the names.
Wild West Domains, Inc. has verified that Respondent is bound by the
Wild West Domains, 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 October 26, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of November 16, 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@ferdericksofhollywood.com, postmaster@fredeircksofhollywood.com, postmaster@fredercksofhollywood.com, postmaster@fredericksofhollwyood.com, postmaster@fredericksofhoolywood.com, postmaster@fredericksofohllywood.com, postmaster@frederikcsofhollywood.com, postmaster@rfedericks.com, postmaster@rfedericksofhollywood.com, and postmaster@wwwlfredericks.com by e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On November 20, 2009, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed James A. Carmody, Esq., 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.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<ferdericksofhollywood.com>,
<fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofhoolywood.com>,
<fredericksofohllywood.com>, <frederikcsofhollywood.com>,
and <rfedericksofhollywood.com> domain names are
confusingly similar to Complainant’s FREDERICK’S
OF HOLLYWOOD mark. Respondent’s <rfedericks.com> and <wwwlfredericks.com>
domain names are confusingly similar to Complainant’s FREDERICK’S mark.
2. Respondent
does not have any rights or legitimate interests in the <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofhoolywood.com>,
<fredericksofohllywood.com>, <frederikcsofhollywood.com>,
<rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com>
domain names.
3. Respondent
registered and used the <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofhoolywood.com>,
<fredericksofohllywood.com>, <frederikcsofhollywood.com>,
<rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com>
domain names in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Frederick's of Hollywood Group Inc., has
continuously used the FREDERICK’S OF HOLLYWOOD
and FREDERICK’S
marks in connection with its women’s clothing, lingerie, and undergarments
business since 1946. The United States
Patent and Trademark Office (“USPTO”) has issued Complainant registrations of
the marks (Reg. No. 1,627,771 issued Dec. 11, 1990 and Reg. No. 664,746 issued July 22, 1958,
respectively). Complainant’s official
website resolves from the <fredricks.com> domain name. Additionally, Complainant runs an affiliate
program whereby third-parties receive fees for directing Internet users to its
official website. This program prohibits
the participants from using misspellings of Complainant’s marks to direct
Internet users to Complainant’s website.
Respondent, Blue Water LLC, registered the <fredericksofhoolywood.com>
domain name on July 21, 2003 and the <ferdericksofhollywood.com>,
<fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofohllywood.com>,
<frederikcsofhollywood.com>, <rfedericks.com>, <rfedericksofhollywood.com>,
and <wwwlfredericks.com> domain names on May 11, 2006. The disputed domain names resolve to Complainant’s
official website resolving from its <fredericks.com> domain name.
DISCUSSION
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.
Identical and/or Confusingly Similar
The Panel finds that Complainant has established rights in
the FREDERICK’S OF HOLLYWOOD (Reg. No. 1,627,771
issued Dec. 11,
1990) and FREDERICK’S
(Reg. No. 664,746 issued July 22, 1958) marks under Policy ¶ 4(a)(i) through
registration of the mark with the USPTO.
See 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.”);
see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007)
(finding that it is irrelevant whether the complainant has registered its
trademark in the country of the respondent’s residence).
The <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofhoolywood.com>,
<fredericksofohllywood.com>, <frederikcsofhollywood.com>,
and <rfedericksofhollywood.com> domain names each contain
Complainant’s FREDERICK’S OF HOLLYWOOD mark with the apostrophe and spaces
removed and the generic top-level domain (“gTLD”) “.com” added. The Panel finds that these changes and
additions are irrelevant under a Policy ¶ 4(a)(i) analysis. See
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(“[I]t is a well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat.
Arb. Forum Feb.
19, 2003) (“Punctuation and spaces between words are not
significant in determining the similarity of a domain name and a mark because
punctuation and spaces are not reproducible in a domain name.”). Additionally, one or more of the following
changes were made in each disputed domain name to the mark (1) the addition of
one extra letter; (2) the transposition of two letters in the mark; or (3) the
replacement of one letter in the mark with another. The Panel finds that these changes are
insufficient to overcome the confusing similarity that arises from using
Complainant’s mark in the disputed domain name.
See Microsoft Corp. v. Domain
Registration Philippines,
FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com>
domain name to be confusingly similar to the complainant’s MICROSOFT mark
because they differ by only one letter, and “such a small alteration is
insufficient to avoid a finding of confusing similarity under Policy ¶
4(a)(i)”); see also 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 Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan.
15, 2001) (finding that the domain names <tdwatergouse.com>
and <dwaterhouse.com> are virtually identical to the complainant’s TD
WATERHOUSE name and mark). Therefore,
the Panel finds that Respondent’s <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofhoolywood.com>,
<fredericksofohllywood.com>, <frederikcsofhollywood.com>,
and <rfedericksofhollywood.com> domain names are
confusingly similar to Complainant’s FREDERICK’S
OF HOLLYWOOD mark under Policy ¶ 4(a)(i).
Complainant contends that the <rfedericks.com> and <wwwlfredericks.com>
domain names are confusingly similar to Complainant’s FREDERICK’S mark. Both of these disputed domain names omit the
apostrophe from Complainant’s mark and add the gTLD “.com.” The Panel finds that these changes are
irrelevant under a Policy ¶ 4(a)(i)
analysis. See Isleworth Land Co. v. Lost in Space, SA, supra; see also LOreal USA
Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb.
Forum Dec. 8,
2003) (finding that the omission of an apostrophe did not
significantly distinguish the domain name from the mark). The <rfedericks.com> domain name transposes the first two letters
of Complainant’s FREDERICK’S
mark. The Panel finds this is
insufficient to distinguish the <rfedericks.com> domain name from Complainant’s mark. See Delta Corporate Identity, Inc., supra.
The <wwwlfredericks.com> domain name adds the letters
“wwwl” in front of Complainant’s FREDERICK’S
mark. The Panel finds that these changes
are insufficient to over the confusing similarity the arises from using
Complainant’s mark. See Google, Inc. v. DktBot.org,
FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The
mere addition of a single letter to the complainant’s mark does not remove the
respondent’s domain names from the realm of confusing similarity in relation to
the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683
(Nat. Arb. Forum Dec.
6, 2002) (holding confusing similarity has been established because
the prefix “www” does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark). The Panel therefore finds that
Respondent’s <rfedericks.com> and <wwwlfredericks.com> domain names are
confusingly similar to Complainant’s FREDERICK’S
mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
names. If the Panel finds that
Complainant’s allegations establish such a prima facie case, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain names pursuant to the guidelines in Policy ¶
4(c). The Panel finds that
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate
interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii). Since no response was submitted in this
case, the Panel may presume that Respondent has no rights or legitimate
interests in the disputed domain names.
However, the Panel will still examine the record in consideration of the
factors listed in Policy ¶ 4(c). See
Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008)
(“It is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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).”).
Complainant asserts that Respondent has no license or
agreement with Complainant authorizing Respondent to use either of
Complainant’s marks, and the WHOIS information identifies the registrant as
“Blue Water LLC.” The Panel finds no
evidence in the record suggesting that Respondent is commonly known by any of
the disputed domain names. Thus, the
Panel finds that Respondent is not commonly known by any of the disputed domain
names and has therefore not established rights or legitimate interests in the
disputed domain names under Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see
also Am. W. Airlines, Inc.
v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”).
Complainant’s
affiliate program compensates other domain name holders who direct Internet
users to Complainant’s website.
Complainant argues that Respondent is using typographical errors in the
confusingly similar disputed domain names to redirect Internet users to
Complainant’s website and attempting to profit from it through Complainant’s
affiliate program. The Panel finds that this use is not a bona fide offering of goods or services
or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii)
respectively. See Deluxe Corp.
v. Dallas
Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name
<deluxeform.com> to redirect users to the complainant’s
<deluxeforms.com> domain name and to receive a commission from the
complainant through its affiliate program); see
also Sports Auth. Mich., Inc. v.
Domhold Co., FA
135011 (Nat. Arb. Forum Jan. 9, 2003) (finding that registering a domain name
which differs by one letter from the complainant’s commercial website, and
using that domain name to redirect Internet consumers to the complainant’s
website as a part of the complainant’s affiliate program is not a bona fide
offering of goods or services nor a noncommercial use of the domain name).
Additionally, typosquatting occurs when a respondent
purposefully includes typographical errors in the mark portion of a disputed
domain name to divert Internet users who commit those typographical
errors. The disputed domain names take advantage of Internet users who mistype
Complainant’s FREDERICK’S OF HOLLYWOOD or FREDERICK’S mark. The Panel finds that Respondent engaged in
typosquatting by misspelling Complainant’s marks in the disputed domain
names. This is further evidence that
Respondent does not have rights or legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(a)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003)
(finding no rights or legitimate interests where the respondent merely
redirected the <wwwmedline.com> domain name to the complainant’s own
website at <medline.com>); see also
IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept.
19, 2003) (finding that the respondent lacked rights and legitimate
interests in the disputed domain names because it “engaged in the
practice of typosquatting by taking advantage of Internet users who attempt to
access Complainant's <indymac.com> website but mistakenly misspell
Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent began
registering the disputed domain names on July 21, 2003, forty-five years after
Complainant had established rights in the FREDERICK’S
mark and nearly 13 years after Complainant had established rights in the FREDERICK’S OF HOLLYWOOD
mark. Complainant contends that Respondent is attempting to profit by using
domain names that are confusingly similar to Complainant’s marks. The disputed domain names resolve to
Complainant’s website, so Internet users could easily be confused as to
Complainant’s control or affiliation with the disputed domain names. Respondent is attempting to profit from this
confusion and Internet users mistyping Complainant’s mark by leading these
users to Complainant’s legitimate website and collecting affiliate fees. The Panel finds this is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
See Deluxe Corp. v. Dallas
Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the
respondent registered and used the <deluxeform.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the
complainant’s <deluxeforms.com> domain name, thus receiving a commission
from the complainant through its affiliate program); see also DatingDirect.com Ltd.
v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the
respondent is appropriating the complainant’s mark in a confusingly similar
domain name for commercial gain, which is evidence of bad faith registration
and use pursuant to Policy ¶4(b)(iv).”).
The disputed domain
names each contain typographical errors of Complainant’s FREDERICK’S OF HOLLYWOOD or FREDERICK’S marks. The
Panel finds that Respondent’s engagement in typosquatting is evidence that
Respondent registered and is using the disputed
domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15,
2003) (“Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat.
Arb. Forum Feb. 3,
2003) (finding 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).
Complainant asserts
that Respondent is acting in violation of the affiliate program by registering
domain names based on the mark in an attempt to profit from commissions. The Panel finds that this action is evidence
of bad faith registration and use under Policy ¶ 4(a)(iii). See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration
and use where the respondent registered domain names containing the
complainant’s mark after enrolling in the complainant’s affiliate program); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb.
Forum Jan. 7, 2002)
(stating that “[b]y registering the ‘typosquatted’ domain name in
[Complainant’s] affiliate program, Respondent profits on the goodwill of
[Complainant’s] protected marks and primary Internet domain names,” and
therefore registered and used the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>,
<fredericksofhollwyood.com>, <fredericksofhoolywood.com>,
<fredericksofohllywood.com>, <frederikcsofhollywood.com>,
<rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com>
domain names be TRANSFERRED from Respondent to Complainant.
James
A. Carmody, Esq., Panelist
Dated: December 3, 2009
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