BuySeasons, Inc. v. COMDOT INTERNET SERVICES PRIVATE LIMITED.
Claim Number: FA1003001312920
Complainant is BuySeasons,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2010.
On March 14, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 April 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@birthdayexoress.com, postmaster@brithdayexpress.com, and postmaster@wwwcostumeexpress.com by e-mail. Also on April 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <birthdayexoress.com> and <brithdayexpress.com> domain names are confusingly similar to Complainant’s BIRTHDAY EXPRESS mark.
Respondent’s <wwwcostumeexpress.com> domain name is confusingly similar to Complainant’s COSTUME EXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names.
3. Respondent registered and used the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BuySeasons, Inc., markets and sells costumes and party supplies under its BIRTHDAY EXPRESS and COSTUME EXPRESS marks. Complainant holds multiple trademarks with the United States Patent and Trademark Office ("USPTO") for its BIRTHDAY EXPRESS (e.g., Reg. No. 1,834,617 issued May 3, 1994) and its COSTUME EXPRESS marks (Reg. No. 3,349,346 issued December 4, 2007).
Respondent registered the <birthdayexoress.com> and <brithdayexpress.com> domain names no earlier than August 22, 2000 and the <wwwcostumeexpress.com> domain name on September 12, 2005. The disputed domain names all resolve to websites containing third-party hyperlinks to Complainant’s competitors in the costume and party supplies business.
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.
Complainant holds multiple trademark registrations for its BIRTHDAY EXPRESS (e.g., Reg. No. 1,534,617 issued May 3, 1994) and its COSTUME EXPRESS marks (Reg. No. 3,349,346 issued December 4, 2007) with the USPTO. Past panels have determined that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i) and the trademark is not required to be registered in the same country as a respondent resides. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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). While Respondent’s <wwwcostumeexpress.com> domain name was registered on September 12, 2005 prior to Complainant’s trademark registration, Complainant filed its trademark registration for its COSTUME EXPRESS mark on July 9, 2004. Previous panels have held that the effective date for determining rights in a mark is the filing date of the trademark registration. As a result, this Panel finds Complainant’s rights in its COSTUME EXPRESS mark date back to the filing date of July 9, 2004 under Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has established rights in its BIRTHDAY EXPRESS and COSTUME EXPRESS marks pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <birthdayexoress.com> and <brithdayexpress.com>
domain names are confusingly similar to Complainant’s BIRTHDAY EXPRESS
mark. The disputed domain names each remove
the space separating the terms of Complainant’s mark and add the generic top-level
domain (“gTLD”) “.com to the mark. The
disputed domain names also contain common misspellings of Complainant’s mark by
transposing or substituting two letters.
Past panels have found the removal of a space, the transposition or
substitution of two letters in the mark, and the addition of a gTLD are
insufficient to adequately distinguish a disputed domain name from a
complainant’s mark. See Am. Int’l Group,
Inc. v. Domain Admin. Ltd.,
FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that
“spaces are impermissible and a generic top-level domain, such as ‘.com,’
‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed
domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL]
mark.”); 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 Intelius, Inc. v. Hyn, FA 703175
(Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to
be confusingly similar to the complainant’s INTELIUS mark because the domain
name differed from the mark by one letter and was visually similar); 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). Thus, the Panel concludes that Respondent’s <birthdayexoress.com>
and <brithdayexpress.com> domain names are confusingly similar to
Complainant’s BIRTDAY EXPRESS mark under Policy ¶ 4(a)(i).
Complainant contends
that Respondent’s <wwwcostumeexpress.com> domain name is
confusingly similar to Complainant’s COSTUME EXPRESS mark. Complainant claims the disputed domain name
also removes the space separating the terms of Complainant’s mark and adds the
gTLD “.com.” Complainant further alleges
that Respondent adds the prefix “www” to Complainant’s mark. Previous panels have held the removal of a
space, the addition of the “www” prefix, and the addition of a gTLD all fail to
sufficiently distinguish a disputed domain name from a complainant’s mark. See Bond
& Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> 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).
Complainant alleges that Respondent is not commonly known by the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names. Previous panels have determined that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant has not authorized the respondent to use complainant’s mark, and if the respondent has not presented any evidence that respondent is commonly known by the disputed domain name. 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Complainant claims that Respondent is not authorized or licensed to use Complainant’s BIRTHDAY EXPRESS or COSTUME EXPRESS marks. The WHOIS information is not similar to the disputed domain names. Respondent has failed to present any evidence, and the Panel fails to find any evidence in the record, that would support a finding that Respondent is commonly known by the disputed domain names. Consequently, the Panel determines that Respondent is not commonly known by the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names resolve to websites that feature third-party hyperlinks to Complainant’s competitors in the costume and party supplies businesses. Complainant further argues that Respondent receives click-through fees from the hyperlinks. The Panel finds that Respondent’s use of the confusingly similar disputed domain names for this purpose is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate or noncommercial use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant further argues that Respondent’s use of the
disputed domain names constitutes typosquatting. Complainant alleges that Respondent’s <birthdayexoress.com> and <brithdayexpress.com>
domain names are simple misspellings of Complainant’s mark that include
transposed or substituted letters. Complainant
claims that the <wwwcostumeexpress.com> domain name simply
adds the prefix “www” while leaving out the period that traditionally is placed
between the prefix and a domain name. Complainant
contends that Respondent is attempting to take advantage of typing mistakes
made by Internet users seeking Complainant.
The Panel finds Respondent’s use of the disputed domain names that
contain typosquatted versions of Complainant’s mark provides further evidence
that Respondent lacks rights or interests in the disputed domain names under
Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names to resolve to websites containing third-party hyperlinks. Some of the third-party hyperlinks lead to Complainant’s competitors in the costume and party supplies industries. Internet users interested in purchasing costumes or party supplies from Complainant may instead purchase similar products from a competitor of Complainant due to Respondent’s use of the confusingly similar disputed domain names. Thus, the Panel finds Respondent’s use of the disputed domain names disrupts Complainant’s costume and party supplies businesses, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant alleges that the aforementioned hyperlinks are
pay-per-click links that Respondent uses in order to receive click-through
fees. Internet users interested in
Complainant may become confused as to Complainant’s affiliation with and
sponsorship of the disputed domain names, resolving websites, and featured
hyperlinks. Respondent attempts to
profit from this confusion. The Panel
concludes that Respondent’s use of the confusingly similar <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com>
domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479
(Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from
the likelihood of confusion between the complainant’s AIM mark and the
competing instant messaging products and services advertised on the
respondent’s website which resolved from the disputed domain name); see also Asbury Auto. Group,
Inc. v.
Respondent’s use of the disputed domain names constitutes typosquatting. Respondent is using misspelled versions of Complainant’s BIRTHDAY EXPRESS and COSTUME EXPRESS marks. Respondent is attempting to take advantage of typographical errors made by Internet users when they attempt to find Complainant on the Internet. The Panel determines that Respondent’s use of the misspelled versions of Complainant’s marks provides further evidence that Respondent registered and uses the <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
The Panel finds 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 <birthdayexoress.com>, <brithdayexpress.com>, and <wwwcostumeexpress.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 10, 2010
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