U.S. Auto Parts Network, INC. v. D-Max Limited
Claim Number: FA1203001433959
Complainant is U.S. Auto Parts Network, INC. (“Complainant”), represented by Citizen Hawk, California, USA. Respondent is D-Max Limited (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jcwhitnet.com> and <jcwwhitney.com>, registered with Fabulous.com Pty Ltd.
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 March 9, 2012; the National Arbitration Forum received payment on March 9, 2012.
On March 12, 2012, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <jcwhitnet.com> and <jcwwhitney.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. 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 March 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 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@jcwhitnet.com and postmaster@jcwwhitney.com. Also on March 20, 2012, 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 April 19, 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.
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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant has numerous registrations with the United States Patent and Trademark Office (“USPTO”) for its family of JCWHITNEY marks (e.g., Reg. No. 2,569,233, filed on May 31, 2000, and registered on May 14, 2002).
2. Complainant has conducted business under the JCWHITNEY mark since 1915 and currently operates in the form of an online retail and wholesale distributorship relating to automotive parts, tools, and accessories and advertises under the JCWHITNEY mark via the Internet.
3. The JCWHITNEY brand is nationally recognized.
4. Respondent registered the <jcwhitnet.com> and <jcwwhitney.com> domain names on January 2, 2003 and April 1, 2002, respectively.
5. Respondent’s domain names resolve to web pages displaying links to third-party websites, some of which compete with Complainant’s business.
6. Respondent does not have permission to use the JCWHITNEY mark.
7. Respondent has established itself as a serial cybersquatter.
8. Respondent generates “pay-per-click” revenue from the websites linked to the resolving web page.
9. Respondent is engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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.”).
Complainant owns rights in its JCWHITNEY mark through its registrations with the USPTO (e.g., Reg. No. 2,569,233, filed on May 31, 2000 and registered on May 13, 2002). The Panel finds that the ownership of these registrations is sufficient to establish Complainant’s rights in the JCWHITNEY mark, dating back at least to the May 31, 2000 filing date of the ‘233 registration, which precedes the registration dates of the <jcwhitnet.com> and <jcwwhitney.com> domain names (on Jan. 2, 2003 and April 1, 2002, respectively). See Specialty Publishing Co. v. Smith, FA 1431399 (Nat. Arb. Forum Apr. 24, 2012) (finding that the effective date of Complainant’s trademark rights dated back at least to applicant’s trademark application filing date). There is no requirement that Complainant register its JCWHITNEY mark in the same country where Respondent resides for the purposes of Policy ¶ 4(a)(i). See 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; and that it is therefore sufficient for the complainant to demonstrate a mark in some jurisdiction.)
The <jcwhitnet.com> and <jcwwhitney.com> domain names are confusingly similar to Complainant’s JCWHITNEY mark. The <jcwhitnet.com> domain name removes a letter (“y”) and replaces it with a (“t”), and the <jcwwhitney.com> domain name merely adds an additional letter “w.” These changes made in the domain name do not affect the confusing similarity between the disputed domain names and the mark under Policy ¶ 4(a)(i). 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 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”.)
Thus, the Panel determines that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges, and this Panel accepts, that it has not authorized Respondent to use the JCWHITNEY mark and that the WHOIS information does not suggest that Respondent is commonly known by either the <jcwhitnet.com> or <jcwwhitney.com> domain names. Based off of the evidence provided, the Panel therefore finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii). See In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that respondent was not commonly known by the disputed domain name based on the WHOIS information and based on evidence that respondent did not have authorization to use the mark in a domain name.)
Complainant argues, and the Panel accepts, that Respondent redirects unsuspecting Internet users to its websites which contain hyperlinks to third-party websites, some of which are competitors of Complainant. Complainant alleges, and this Panel accepts, that Respondent receives “pay-per-click” fees for featuring the links on the web pages. Such use is not 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 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)).
Respondent is engaged in typosquatting because the <jcwhitnet.com> and <jcwwhitney.com> domain names take advantage of obvious spelling errors and redirect Internet users to its own websites. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that the respondent had engaged in typosquatting when it registered a domain name that had one extra letter, which was proof that the respondent did not have rights and legitimate interests in the domain name); and see IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent did not possess rights and legitimate interests in the domain names at issue because the respondent took advantage of Internet users’ spelling mistake by typing the letter “x” instead of “c.”). Such evidence of typosquatting supports a finding that Respondent lacks rights and legitimate interests in the disputed domain name.
Thus, Policy ¶ 4(a)(ii) has also been satisfied.
Respondent’s disputed domain names are examples of typosquatting through the intentional misspelling of the JCWHITNEY mark. Said conduct constitutes bad faith registration and use. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding that respondent’s typosquatting demonstrated bad faith registration and use.)
Complainant has established that Respondent uses the disputed domain names to misdirect Internet traffic to its own sites in order to collect fees for hosting third-party hyperlinks. Respondent’s use of the disputed domain names to confuse Internet users and attract them to its websites in order to make a profit constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Thus, Policy ¶ 4(a)(iii) has also 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 <jcwhitnet.com> and <jcwwhitney.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 2, 2012
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