Charming Shoppes, Inc. v. Domains Names, by Proxy, Inc. c/o domainnamesbyproxy.com
Claim Number: FA0912001299065
Complainant is Charming
Shoppes, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <dashionbug.com>, <fashilnbug.com>, <fashiobbug.com>, <fashionbig.com>, <fashiongug.com>, <fashionnbug.com>, <fashionvug.com>, <fashipnbug.com>, <fazhionbug.com>, <fqshionbug.com>, <fzshionbug.com>, <gashionbug.com>, <laenbryant.com>, <lanebryat.com>, <lanebryqnt.com>, <lanebryznt.com>, <lfashionbug.com>, <lqnebryant.com>, <lznebryant.com>, <wfashionbug.com>, <wwfashionbug.com>, <wwlanebryant.com>, and <wwwllanebryant.com>, registered with Godaddy.com, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 15, 2009.
On December 15, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dashionbug.com>, <fashilnbug.com>, <fashiobbug.com>, <fashionbig.com>, <fashiongug.com>, <fashionnbug.com>, <fashionvug.com>, <fashipnbug.com>, <fazhionbug.com>, <fqshionbug.com>, <fzshionbug.com>, <gashionbug.com>, <laenbryant.com>, <lanebryat.com>, <lanebryqnt.com>, <lanebryznt.com>, <lfashionbug.com>, <lqnebryant.com>, <lznebryant.com>, <wfashionbug.com>, <wwfashionbug.com>, <wwlanebryant.com>, and <wwwllanebryant.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2010 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@dashionbug.com, postmaster@fashilnbug.com, postmaster@fashiobbug.com, postmaster@fashionbig.com, postmaster@fashiongug.com, postmaster@fashionnbug.com, postmaster@fashionvug.com, postmaster@fashipnbug.com, postmaster@fazhionbug.com, postmaster@fqshionbug.com, postmaster@fzshionbug.com, postmaster@gashionbug.com, postmaster@laenbryant.com, postmaster@lanebryat.com, postmaster@lanebryqnt.com, postmaster@lanebryznt.com, postmaster@lfashionbug.com, postmaster@lqnebryant.com, postmaster@lznebryant.com, postmaster@wfashionbug.com, postmaster@wwfashionbug.com, postmaster@wwlanebryant.com, and postmaster@wwwllanebryant.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1.
Respondent’s <dashionbug.com>, <fashilnbug.com>, <fashiobbug.com>,
<fashionbig.com>, <fashiongug.com>, <fashionnbug.com>,
<fashionvug.com>, <fashipnbug.com>, <fazhionbug.com>,
<fqshionbug.com>, <fzshionbug.com>, <gashionbug.com>,
<wfashionbug.com>, <wwfashionbug.com>, and <lfashionbug.com>
domain names are confusingly similar to Complainant’s FASHION BUG mark.
Respondent’s <laenbryant.com>, <lanebryat.com>,
<lanebryqnt.com>, <lanebryznt.com>, <lqnebryant.com>,
<lznebryant.com>,
<wwlanebryant.com>, and <wwwllanebryant.com> domain names are confusingly similar to Complainant’s LANE BRYANT mark.
2. Respondent does not have any rights or legitimate interests in the <dashionbug.com>, <fashilnbug.com>, <fashiobbug.com>, <fashionbig.com>, <fashiongug.com>, <fashionnbug.com>, <fashionvug.com>, <fashipnbug.com>, <fazhionbug.com>, <fqshionbug.com>, <fzshionbug.com>, <gashionbug.com>, <laenbryant.com>, <lanebryat.com>, <lanebryqnt.com>, <lanebryznt.com>, <lfashionbug.com>, <lqnebryant.com>, <lznebryant.com>, <wfashionbug.com>, <wwfashionbug.com>, <wwlanebryant.com>, and <wwwllanebryant.com> domain names.
3. Respondent registered and used the <dashionbug.com>, <fashilnbug.com>, <fashiobbug.com>, <fashionbig.com>, <fashiongug.com>, <fashionnbug.com>, <fashionvug.com>, <fashipnbug.com>, <fazhionbug.com>, <fqshionbug.com>, <fzshionbug.com>, <gashionbug.com>, <laenbryant.com>, <lanebryat.com>, <lanebryqnt.com>, <lanebryznt.com>, <lfashionbug.com>, <lqnebryant.com>, <lznebryant.com>, <wfashionbug.com>, <wwfashionbug.com>, <wwlanebryant.com>, and <wwwllanebryant.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Charming Shops, Inc., is a multi-brand specialty apparel retailer specializing in plus-size women’s clothing. Complainant began operation on September 13, 1940. Complainant offers different clothing options under specific brands owned by Complainant, such as LANE BRYANT and FASHION BUG. Complainant operates websites relating to those brands through its <lanebryant.com> and <fashionbug.com> domain names. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LANE BRYANT (e.g., Reg. No. 1,293,460 issued September 4, 1984) and FASHION BUG (e.g., Reg. No. 942,143 issued August 29, 1972) marks.
Respondent registered the <dashionbug.com>, <fashilnbug.com>, <fashiobbug.com>, <fashionbig.com>, <fashiongug.com>, <fashionnbug.com>, <fashionvug.com>, <fashipnbug.com>, <fazhionbug.com>, <fqshionbug.com>, <fzshionbug.com>, <gashionbug.com>, <laenbryant.com>, <lanebryat.com>, <lanebryqnt.com>, <lanebryznt.com>, <lfashionbug.com>, <lqnebryant.com>, <lznebryant.com>, <wfashionbug.com>, <wwfashionbug.com>, <wwlanebryant.com>, and <wwwllanebryant.com> domain names no earlier than July 24, 2008. The disputed domain names resolve to Complainant’s own websites through Complainant’s affiliate program.
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.
Previous panels have found that a complainant establishes rights in a mark through registration of the mark with a governmental trademark authority. Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the LANE BRYANT (e.g., Reg. No. 1,293,460 issued September 4, 1984) and FASHION BUG (e.g., Reg. No. 942,143 issued August 29, 1972) marks through its registrations with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges Respondent’s <dashionbug.com>, <fashilnbug.com>, <fashiobbug.com>,
<fashionbig.com>, <fashiongug.com>, <fashionnbug.com>,
<fashionvug.com>, <fashipnbug.com>, <fazhionbug.com>,
<fqshionbug.com>, <fzshionbug.com>, <gashionbug.com>,
<wfashionbug.com>, <wwfashionbug.com>, and <lfashionbug.com>
domain names are confusingly similar to Complainant’s FASHION BUG mark. The disputed domain names contain common
misspellings of Complainant’s mark by adding, exchanging, or removing different
letters to Complainant’s FASHION BUG mark.
The disputed domain names further add the generic top-level domain
(“gTLD”) “.com” to Complainant’s mark. The Panel finds common misspellings of
Complainant’s mark coupled with the additions of a gTLD fail to adequately
distinguish the disputed domain names. 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 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the mere addition of the generic top-level domain “.com” is insufficient
to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s
disputed domain names are confusingly
similar to Complainant’s FASHION BUG mark pursuant to Policy ¶ 4(a)(i).
Complainant claims Respondent’s <laenbryant.com>, <lanebryat.com>, <lanebryqnt.com>, <lanebryznt.com>, <lqnebryant.com>, <lznebryant.com>, <wwlanebryant.com>, and <wwwllanebryant.com> domain names are confusingly similar to Complainant’s LANE BRYANT mark. Respondent uses common misspellings of Complainant’s mark and adds the gTLD “.com.” The Panel finds the use of common misspellings and the additions of a gTLD fail to sufficiently distinguish the disputed domain names from Complainant’s mark. See supra Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004); see also supra Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000); see also supra Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007). Thus, the Panel concludes Respondent’s disputed domain names are confusingly similar to Complainant’s LANE BRYANT mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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).
The WHOIS information does not indicate the Respondent is
commonly known by any of the disputed domain names. Respondent fails to offer evidence
contradicting this information and showing Respondent is commonly known by the
disputed domain names. There is no other evidence on the record
showing Respondent is commonly known by the disputed domain names. Complainant further asserts that Respondent
is not authorized to use the FASHION BUG and LANE BRYANT marks. Therefore the Panel finds that Respondent is
not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there was
no evidence in the record indicating that the respondent was commonly known by
the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007) (concluding that the respondent was not commonly known by the
<thirteen.com> domain name based on all evidence in the record, and the
respondent did not counter this argument in its response).
Respondent uses the disputed domain names to resolve to
Complainant’s websites through Complainant’s affiliate program. Respondent receives a fee for each Internet
user redirected to Complainant’s websites.
The Panel finds Respondent’s use of confusingly similar disputed domain
names for that purpose is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See
Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s
affiliate program upon registering the domain name, which was a misspelling of
the complainant’s mark, the respondent intended to use the domain name to
generate profit at the complainant’s expense, thereby evidencing a lack of
rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)); see also 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).
In addition, Respondent’s use of the disputed domain names
constitutes typosquatting. The Panel
finds that Respondent’s use of domain names that are common misspellings of the
LANE BRYANT and FASHION BUG marks to redirect Internet users seeking
Complainant’s website is further evidence that Respondent lacks rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent commercially benefits from its use of the disputed domain names through Complainant’s affiliate program. Respondent presumably receives a fee for each Internet user it redirects to Complainant’s own websites. The Panel finds Respondent’s use of the confusingly similar disputed domain names for this purpose constitutes 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 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).
Furthermore, Respondent has engaged in typosquatting through its use of the disputed domain names, which are common misspellings of Complainant’s LANE BRYANT and FASHION BUG marks. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); 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.”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dashionbug.com>, <fashilnbug.com>, <fashiobbug.com>, <fashionbig.com>, <fashiongug.com>, <fashionnbug.com>, <fashionvug.com>, <fashipnbug.com>, <fazhionbug.com>, <fqshionbug.com>, <fzshionbug.com>, <gashionbug.com>, <laenbryant.com>, <lanebryat.com>, <lanebryqnt.com>, <lanebryznt.com>, <lfashionbug.com>, <lqnebryant.com>, <lznebryant.com>, <wfashionbug.com>, <wwfashionbug.com>, <wwlanebryant.com>, and <wwwllanebryant.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 28, 2010
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