Shoedazzle.com, Inc. v. Stanley Pace
Claim Number: FA1201001424616
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Stanley Pace (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoesdazzle.com>, registered with Fabulous.com Pty Ltd., and <shoedazle.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2012; the National Arbitration Forum received payment on January 13, 2012.
On January 16, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shoedazle.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 January 17, 2012 Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <shoesdazzle.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 January 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2012 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@shoesdazzle.com, postmaster@shoedazle.com. Also on January 19, 2012, 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.
Respondent’s Response was received after the Response deadline and thus the Response is not in compliance with Rule 5.
On February 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
[1] Respondent’s domain names <shoesdazzle.com> and <shoedazle.com> are confusingly similar to Complainant’s SHOEDAZZLE registered trademark.
[2] Respondent does not have any rights or legitimate interests in these domain names.
[3] The domain names were registered and are being used in bad faith.
B. Respondent’ Contentions
Respondent submitted a response five hours after the deadline for submitting same. Therefore, the Response is a deficient submission and is not in compliance with Rule 5. At its discretion, the Panel may decide whether to consider a deficient submission. The Panel is of the view that given the minor nature of the breach and the need to resolve the real dispute between the parties, this submission shall be allowed and considered. See Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000)(finding that a Panel may consider a deficient response which is one day late and received before any Panelist was appointed).
In its submission, Respondent argues that it registered the domain <shoesdazzle.com> on September 25, 2008, and before Complainant’s first use in Commerce date of October 1, 2008.
Complainant owns a U.S. federal registration for SHOEDAZZLE (Reg. No. 3,736,740), registered on January 12, 2010, filed on June 11, 2009, and with a claim of first use in Commerce of October 1, 2008.
Respondent alleges that it registered the <shoesdazzle.com> domain name on September 25, 2008, which predates Complainant’s alleged first use of the mark of October 1, 2008. The Panel notes, however, that although Respondent presents WHOIS information to support its allegation of registration of the domain name in September of 2008, the WHOIS information in the record indicates that the <shoesdazzle.com> domain name was registered by Respondent on August 30, 2009, a date which does not predate Complainant’s alleged date of first use in Commerce of its registered mark. Further, the Panel notes that the WHOIS information provided by Respondent does not list Respondent, “Stanley Pace”, as the registrant, but instead lists “Domains by Proxy, Inc.” as the registrant. Thus, Respondent has not established registration of the <shoesdazzle.com> domain name predating Complainant’s rights in the mark.
Respondent’s disputed domain names refer to Web sites featuring links to various Web sites competing to that of Complainant’s. The <shoesdazzle.com> Web site contains a notice in red “BUY THIS DOMAIN”.
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."
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 owns a trademark registration for the mark SHOEDAZZLE with the USPTO (Reg. No. 3,736,740), filed June 11, 2009, and reciting a first use in Commerce date of October 1, 2008. Complainant also claims rights in the SHOEDAZZLE mark back to its October 1, 2008 first use in Commerce date and provides a press release dated November 23, 2008 covering its launch as evidence of its early use and of consumer recognition of its SHOEDAZZLE mark.
The USPTO trademark registration supports Complainant’s rights under the Policy. Further, Complainant’s allegations of use and supporting evidence are sufficient to also show that Complainant has common law rights to the mark dating back to October 1, 2008 (or at least back to the date of the November 23, 2008 press release). On the other hand, Respondent’s <shoesdazzle.com> and <shoedazle.com> domain names were registered on August 30, 2009 and March 18, 2009, respectively.
The <shoesdazzle.com> domain name adds an “s” to the term “shoe” in Complainant’s mark. Previous panels have refused to allow the addition of a single “s” to remove the disputed domain name from the realm of confusing similarity. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007). The <shoedazle.com> domain name omits a single “z” from Complainant’s mark and does not change the pronunciation of the term. Previous Panels have also refused to allow the omission of a single letter to remove a disputed domain name from the realm of confusing similarity. See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006).
For the foregoing reasons, the Panel finds the disputed domain names to be confusingly similar to Complainant’s SHOEDAZZLE mark within the meaning of Policy ¶ 4(a)(i).
Respondent has offered no evidence, nor is there any evidence in the record, to suggest that Respondent is commonly known by either of the disputed domain names. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)(finding that Respondent did not have rights to the domain name where Respondent was not known by the mark).
Further, the disputed domain names represent common misspellings of Complainant’s SHOEDAZZLE mark, providing evidence of typosquatting. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007)(concluding that by registering the <microssoft.com> domain name, domain registrant had engaged in typosquatting, which provided further evidence of respondent’s lack of rights and legitimate interests under the disputed domain name).
The Panel therefore finds that Policy ¶ 4(a)(ii) has also been satisfied.
The disputed domain names represent minor misspellings of Complainant’s SHOEDAZZLE mark, and provide support for a finding of typosquatting. Disputed domain names which differ from a Complainant’s mark by a single letter represent typosquatting and reveal bad faith registration and use. See, e.g., Computerized Sec. Sys. V. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003).
Complainant has offered evidence of three prior UDRP cases in which Respondent was the respondent and the disputed domain names were transferred to the respective complainants. Additional such cases exist. See, e.g., Kinecta Fed. Credit Union v. Stanley Pace, FA 1153943 (Nat. Arb. Forum May 2, 2008)(recognizing a pattern by Respondent of “registering domain names to prevent the owner of a trademark from reflecting the mark in a corresponding domain name”). This constitutes further evidence of bad faith use and registration.
Further, the Panel finds that Respondent’s use of the disputed domain names to generate revenue through pay-per-click links to Web sites in competition with Complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
Additionally, the notice in red “BUY THIS DOMAIN” appearing in Respondent’s <shoesdazzle.com> Web site constitutes evidence that Respondent acquired that Web site primarily for resale. Such action constitutes bad faith under Policy ¶ 4(b)(i). See The Neiman Marcus Grp., Inc. & NM Nevada Trust v. Stanley Pace, FA 820337 (Nat. Arb. Forum Nov. 20, 2006).
The Panel thus finds that Policy ¶ 4(a)(iii) has also been satisfied.
As Complainant has satisfied all of the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail. See World Wrestling Fed’n Entn’t Inc. v. Ringside Collectibles, D 2000-1306 (WIPO May 2, 2001).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoesdazzle.com> and <shoedazle.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 1, 2012
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