Shoedazzle.com, Inc. v. Private Whois / N/a
Claim Number: FA1301001478960
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Whois / N/a (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoezazzle.com> and <wwwshoedazzle.com>, registered with Bargin Register, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2013; the National Arbitration Forum received payment on January 7, 2013.
On January 10, 2013, Bargin Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <shoezazzle.com> and <wwwshoedazzle.com> domain names are registered with Bargin Register, Inc. and that Respondent is the current registrant of the names. Bargin Register, Inc. has verified that Respondent is bound by the Bargin Register, 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 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2013 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@shoezazzle.com, postmaster@wwwshoedazzle.com. Also on January 10, 2013, 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 February 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <shoezazzle.com> and <wwwshoedazzle.com> domain names, the domain names at issue, are confusingly similar to Complainant’s SHOEDAZZLE mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shoedazzle.com, Inc., provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences and routinely attracts more than 2.8 million monthly unique visitors to its website at <shoedazzle.com>. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SHOEDAZZLE mark (Reg. No. 3,736,740, registered January 12, 2010). Respondent’s <shoezazzle.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character. Respondent’s <wwwshoedazzle.com> domain name is confusingly similar to Complainant’s mark because it simply omits the punctuation after the “www.” Respondent has not been commonly known by the disputed domain names and 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. Respondent’s disputed domain names feature advertised pay-per-click links displayed on the resolving websites which promote products that compete with Complainant and this disrupts Complainant’s business. Respondent is using the disputed domain names in connection with generating revenue as a “click through” website, for which Respondent likely receives revenue for each misdirected Internet user. Respondent registered the <shoezazzle.com> domain name on May 2, 2010. Respondent registered the <wwwshoedazzle.com> domain name on April 17, 2010.
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, Shoedazzle.com, Inc., provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences. Complainant routinely attracts more than 2.8 million monthly unique visitors to its website at <shoedazzle.com>. Complainant is the owner of trademark registrations with the USPTO for the SHOEDAZZLE mark (Reg. No. 3,736,740, registered January 12, 2010). Although Respondent appears to reside in the Cayman Islands, Policy ¶ 4(a)(i) and UDRP precedent require only that Complainant establish rights in some jurisdiction for Policy ¶ 4(a)(i) to attach to its mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, Complainant’s registration of the SHOEDAZZLE mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <shoezazzle.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character. Respondent changes the “d” in Complainant’s SHOEDAZZLE mark to a “z.” Respondent’s misspelling of Complainant’s SHOEDAZZLE mark does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that “[a] domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”). Respondent’s <wwwshoedazzle.com> domain name is confusingly similar to Complainant’s mark because it simply omits the punctuation after the “www.” Respondent’s elimination of the period between the “www” and the domain name renders the domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See 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). Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain names. The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, Respondent’s <shoezazzle.com> and <wwwshoedazzle.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
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. The WHOIS record for the disputed domain names lists “Private Whois / N/a” as the registrant of the disputed domain names. Respondent fails to provide evidence that it is commonly known by the disputed domain name. Thus, the Panel finds that Respondent was 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).
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. Respondent presumably receives pay-per-click fees from these linked websites. Respondent’s <shoezazzle.com> and <wwwshoedazzle.com> domain names feature links to websites that directly compete with Complainant, such as “DESIGNER SHOES, 2 FOR 1,” “HIGH HEELS SHOES,” “JUSTFAB OFFICIAL SITE,” and other competing links. Respondent’s <shoezazzle.com> and <wwwshoedazzle.com> domain names also feature links that are unrelated to Complainant’s business titled “PRINTABLE COUPONS,” “FREE PRODUCT SAMPLES,” and others. Therefore, Respondent’s use of the disputed domain names to provide links to competing hyperlinks and unrelated hyperlinks 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s disputed domain name features advertised pay-per-click links displayed on the resolving websites that promote products that compete with Complainant, which disrupts Complainant’s business. The websites associated with the disputed domain names feature links to websites that directly compete with Complainant, such as “DESIGNER SHOES, 2 FOR 1,” “HIGH HEELS SHOES,” “JUSTFAB OFFICIAL SITE,” and other competing links. Respondent’s use of the disputed domain names to offer competing links disrupts Complainant’s business and is evidence of bad faith registration and use of the disputed domain name 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).”).
Respondent is using the disputed domain names in connection with generating revenue as a “click through” website, for which Respondent likely receives revenue for each misdirected Internet user. Respondent’s disputed domain names provide links titled “DESIGNER SHOES, 2 FOR 1,” “HIGH HEELS SHOES,” “JUSTFAB OFFICIAL SITE,” and others. Accordingly, Respondent’s use of the disputed domain names to provide competing and unrelated links for its own commercial gain constitutes 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.’”); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoezazzle.com> and <wwwshoedazzle.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 9, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page