Personalizationmall.com, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1212001473945
Complainant is Personalizationmall.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <peronalizationmall.com>, <personalisedmall.com>, <personalizatinmall.com>, <personalizatonmall.com>, and <personilizationmall.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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 December 3, 2012; the National Arbitration Forum received payment on December 3, 2012.
On December 5, 2012, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <peronalizationmall.com>, <personalisedmall.com>, <personalizatinmall.com>, <personalizatonmall.com>, and <personilizationmall.com> domain names are registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 December 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@peronalizationmall.com, postmaster@personalisedmall.com, postmaster@personalizatinmall.com, postmaster@personalizatonmall.com, and postmaster@personilizationmall.com. Also on December 10, 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 January 8, 2013, 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
i. Respondent has not been commonly known by the disputed domain names. Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s mark in a domain name.
ii. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent is a serial cybersquatter and has engaged in an ongoing pattern of cybersquatting behavior.
ii. Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant.
iii. Respondent is using the disputed domain names in connection with websites that generate revenue as “click-through” websites.
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, Personalizationmall.com, Inc., contends that it serves customers in the United States and around the world by making shopping for personalized gifts for all events and occasions. Complainant asserts that it focuses on mechanized engraving and embroidering for approximately 4,000 gift products. Complainant contends and shows evidence that it owns a trademark registration with the USPTO for the PERSONALIZATION MALL mark (Reg. No. 2,561,853, registered April 16, 2002). The Panel concludes that Complainant’s registration of the PERSONALIZATION MALL mark with the USPTO is sufficient to establish its rights pursuant to ¶ Policy 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Complainant states that Respondent’s <peronalizationmall.com>, <personalisedmall.com>, <personalizatinmall.com>, <personalizatonmall.com>, and <personilizationmall.com> domain names are confusingly similar to Complainant’s PERSONALIZATION MALL mark because they differ by only a single character from Complainant’s marks. The Panel notes that Respondent’s <peronalizationmall.com>, <personalizatinmall.com>, <personalizatonmall.com> domain names remove the letter “s,” “o,” or “i” from Complainant’s mark. The Panel finds that the removal of a letter does not distinguish Respondent’s domain names from Complainant’s mark under Policy ¶ 4(a)(i). See 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”). The Panel also notes that Respondent’s <personilizationmall.com> domain name replaces the “a” in Complainant’s mark with an “i.” The Panel finds that replacing a letter in Complainant’s mark does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See 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”). The Panel notes that Respondent’s <personalisedmall.com> uses the word “personlised,” a variation of the word “personalization,” instead of “personalization” in the disputed domain name. The Panel also finds that Respondent’s use of this variation of the word “personalization” in Complainant’s mark does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”). Thus, the Panel concludes that Respondent’s <peronalizationmall.com>, <personalisedmall.com>, <personalizatinmall.com>, <personalizatonmall.com>, and <personilizationmall.com> domain names are confusingly similar to Complainant’s PERSONALIZATIONMALL.COM mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent has not been commonly known by the disputed domain names. The Panel notes that the WHOIS information for the disputed domain name identifies “Private Registrations Aktien Gesellschaft / Domain Admin” as the registrant. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant also asserts that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that Respondent fails to provide any information showing that it is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant asserts that Respondent is presumably receiving pay-per-click fees from the linked websites. The Panel notes that Respondent’s disputed domain names link to websites that feature competing links such as “Anniversary Gifts,” “Birthday Gifts,” “Engraving Gifts” and other links. The Panel notes that Respondent’s disputed domain names also link to websites featuring unrelated hyperlinks such as “Find Cheap Airline Ticket,” “Jimmy John’s Menu Options,” and other links. The Panel determines that Respondent’s use of the disputed domain names to provide links to competing websites and unrelated websites is 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is a serial cybersquatter and has engaged in an ongoing pattern of cybersquatting behavior. The Panel notes that Respondent has been involved in prior UDRP proceedings that have resulted in findings of bad faith and transfer. Google Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1466715 (Nat. Arb. Forum Nov. 28, 2012); Getty Images (US), Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1460731 (Nat. Arb. Forum Oct. 26, 2012); Fandango, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1463299 (Nat. Arb. Oct. 23, 2012). The Panel concludes that Respondent’s prior involvement in UDRP proceedings resulting in findings of bad faith and transfer shows a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant asserts that Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. Complainant contends that the links provided on Respondent’s websites divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The Panel notes that Respondent’s disputed domain names link to websites that feature competing links such as “Anniversary Gifts,” “Birthday Gifts,” “Engraving Gifts” and other links. The Panel finds that Respondent’s use of the disputed domain names to provide competing hyperlinks disrupts Complainant’s business, evidencing bad faith registration and use under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is using the disputed domain names in connection with websites that generate revenue as “click-through” websites. Complainant asserts that Respondent is providing links to the services and products competing with that of Complainant to take advantage of Complainant’s mark to achieve a wrongful competitive advantage and commercial gain. Complainant further contends that Respondent has registered the disputed domain names with the intention of attracting and misleading consumers for its own commercial profit. The Panel notes that Respondent’s disputed domain names connect to websites which feature links to both websites that directly compete with Complainant and websites that are unrelated to Complainant’s business. The Panel finds that Respondent’s use of the disputed domain names to attract Internet users for its own commercial benefit evidences bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent’s bad faith registration is further demonstrated by Respondent’s serial typosquatting of Complainant’s mark. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent’s registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peronalizationmall.com>, <personalisedmall.com>, <personalizatinmall.com>, <personalizatonmall.com>, and <personilizationmall.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 22, 2013
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