BuySeasons, Inc. v. c/o buycostmes.com, buycostuems.com, buycostums.com, buycostunes.com, buycosumes.com, buycosutmes.com, buycotumes.com, buycstumes.com, buycustumes.com, wwwbuycostumes.com
Claim Number: FA1108001404930
Complainant is BuySeasons, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is c/o buycostmes.com, buycostuems.com, buycostums.com, buycostunes.com, buycosumes.com, buycosutmes.com, buycotumes.com, buycstumes.com, buycustumes.com, wwwbuycostumes.com (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, <buycustumes.com>, and <wwwbuycostumes.com>, registered with Dotregistrar.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2011; the National Arbitration Forum received payment on August 31, 2011.
On August 26, 2011, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, <buycustumes.com>, and <wwwbuycostumes.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names. Dotregistrar has verified that Respondent is bound by the Dotregistrar registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2011 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@buycostmes.com, postmaster@buycostuems.com, postmaster@buycostums.com, postmaster@buycostunes.com, postmaster@buycosumes.com, postmaster@buycosutmes.com, postmaster@buycotumes.com, postmaster@buycstumes.com, postmaster@buycustumes.com, and postmaster@wwwbuycostumes.com. Also on September 6, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, <buycustumes.com>, and <wwwbuycostumes.com> domain names are confusingly similar to Complainant’s BUYCOSTUMES.COM mark.
2. Respondent does not have any rights or legitimate interests in the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, <buycustumes.com>, and <wwwbuycostumes.com> domain names.
3. Respondent registered and used the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, <buycustumes.com>, and <wwwbuycostumes.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers costumes and party supplies for adults and children under its BUYCOSTUMES.COM mark. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its BUYCOSTUMES.COM mark (Reg. No. 2,793,599 filed March 5, 2001; registered December 16, 2003).
Respondent registered the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, <buycustumes.com>, and <wwwbuycostumes.com> domain names no earlier than April 3, 2002. The <wwwbuycostumes.com> domain name resolves to Complainant’s website through Complainant’s affiliate program. Complainant does not provide any specific evidence of the websites resolving from the other disputed domain names.
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.
As Complainant has provided evidence of its trademark registration with the USPTO for its BUYCOSTUMES.COM mark (Reg. No. 2,793,599 filed March 5, 2001; registered December 16, 2003), the Panel concludes that Complainant has established rights in its BUYCOSTUMES.COM mark under Policy ¶ 4(a)(i), dating back to the filing date of March 5, 2001. 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 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.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, <buycustumes.com>, and <wwwbuycostumes.com> domain names contain common misspellings of Complainant’s BUYCOSTUMES.COM mark, such as the removal of a letter, the transposition of two letters, replacing a letter with a different letter, and adding the prefix “www” without the standard separating period. The Panel determines that such modifications do not adequately distinguish the disputed domain names from Complainant’s BUYCOSTUMES.COM mark and finds that the disputed domain names are confusingly similar to Complainant’s BUYCOSTUMES.COM mark pursuant to Policy ¶ 4(a)(i). See 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 Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <wwwbuycostumes.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case in relation to its <wwwbuycostumes.com> domain name. 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 <wwwbuycostumes.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <wwwbuycostumes.com> domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
As to the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, and <buycustumes.com> domain names, the Panel determines that Respondent has not presented a prima facie case because Complainant has failed to present any evidence as to the use of the disputed domain names. Complainant does not specify in its Complaint how the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, and <buycustumes.com> domain names are specifically used. Complainant references screen shots for these domain names, but the corresponding exhibits are blank. Complainant also claims that Respondent is failing to make an active use of “some or all” of the domain names; insufficient for the Panel to act upon. Thus, the Panel concludes that Complainant has not demonstrated that Respondent lacks rights and legitimate interests in the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, and <buycustumes.com> domain names under Policy ¶ 4(a)(ii). See Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Complainant has not alleged any facts related to Respondent's use of the disputed domain name. The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii).”); see also O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”).
The WHOIS information for the <wwwbuycostumes.com> domain name is similar to the disputed domain name but not enough to conclude that Respondent is commonly known by the disputed domain name. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). In this case, Respondent has not responded and has not provided any evidence. Complainant asserts that it has not authorized Respondent to use its BUYCOSTUMES.COM mark in a domain name. Based on Complainant’s allegation and the lack of evidence from Respondent, the Panel finds that Respondent is not commonly known by the <wwwbuycostumes.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent uses the <wwwbuycostumes.com> domain name to redirect Internet users to Complainant’s official website through Complainant’s affiliate program. Complainant asserts that this redirection violates the affiliate agreement between the parties, and there is no contravention from Respondent. The Panel finds that Respondent’s use of the confusingly similar disputed domain name for an unauthorized purpose is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <wwwbuycostumes.com> domain name pursuant to Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
In addition, the Panel finds that Respondent’s use of the <wwwbuycostumes.com> domain name constitutes typosquatting. The Panel finds that Respondent’s disputed domain name is a common misspelling of the BUYCOSTUMES.COM mark that attempts to take advantage of Internet users that accidentally forget the period separating the “www” and Complainant’s mark. The Panel concludes that this is further evidence that Respondent lacks rights or legitimate interests in the <wwwbuycostumes.com> domain name pursuant to Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because respondent's addition of the prefix "www-" to complainant's AMAZON.COM mark constitutes typosquatting.”); see also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent lacked rights and legitimate interests in the <wwwcanadiantire.com> domain name where respondent used the domain name as a part of the complainant’s affiliate program in exchange for specified commissions).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied as to the <wwwbuycostumes.com> domain name. The Panel determines that Policy ¶ 4(a)(ii) has not been satisfied as to the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, and <buycustumes.com> domain names.
As noted above, Complainant has failed to provide any evidence as to how the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, and <buycustumes.com> domain names are used, thus it is not possible for the Panel to find bad faith under Policy ¶ 4(a)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also Accu-Find Internet Servs. v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)).
Respondent’s <wwwbuycostumes.com> domain name resolves to Complainant’s website through Complainant’s affiliate program. Respondent is attempting to commercially gain from Internet users’ mistakes in typing Complainant’s mark and domain name. The Panel determines that Respondent’s registration and use of the <wwwbuycostumes.com> domain name for such a purpose constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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,” which is evidence of bad faith registration and use); see also 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).
Respondent’s use of the disputed domain name constitutes typosquatting, which the Panel finds is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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); 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.”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied for the <wwwbuycostumes.com> domain name. The Panel finds that Policy ¶ 4(a)(iii) is not satisfied for the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, and <buycustumes.com> domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED for the <wwwbuycostumes.com> domain name. Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE for the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, and <buycustumes.com> domain names.
Accordingly, it is Ordered that the <buycostmes.com>, <buycostuems.com>, <buycostums.com>, <buycostunes.com>, <buycosumes.com>, <buycosutmes.com>, <buycotumes.com>, <buycstumes.com>, and <buycustumes.com> domain names REMAIN with Respondent and the <wwwbuycostumes.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 6, 2011
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