Adorama, Inc. v. ICS inc.
Claim Number: FA1307001510192
Complainant is Adorama, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS inc. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com>, and <wwwadorama.com>, registered with TUCOWS, INC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2013; the National Arbitration Forum received payment on July 17, 2013.
On July 18, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com>, and <wwwadorama.com> domain names are registered with TUCOWS, INC. and that Respondent is the current registrant of the names. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 July 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@admorama.com, postmaster@adoramalearningcenter.com, postmaster@adoramma.com, postmaster@edorama.com, and postmaster@wwwadorama.com. Also on July 22, 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 August 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Respondent has not been commonly known by the disputed domain names.
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. Respondent is using the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which is in direct violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant.
i. Respondent’s advertised pay-per-click links displayed on the resolving website promotes products that compete with Complainant.
ii. Respondent has registered and used the disputed domain names by using the disputed domain names to attract and mislead consumers for its own profit.
iii. Respondent is using the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which is in direct violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant.
iv. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
v. Respondent surely had actual knowledge of Complainant’s rights in the at-issue trademarks at the time it registered the disputed domain names.
1. Respondent’s <admorama.com>, <adoramalearningcenter.com> <adoramma.com>, <edorama.com> and <wwwadorama.com> domain names are confusingly similar to Complainant’s ADORAMA mark.
2. Respondent does not have any rights or legitimate interests in the <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com> and <wwwadorama.com> domain names.
3. Respondent registered or used the <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com> and <wwwadorama.com> domain names in bad faith.
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 argues that it is known as the best photography retailer throughout the world. Complainant asserts that it is the owner of trademark registrations with the USPTO for the ADORAMA mark (e.g., Reg. No. 3,296,024, filed August 30, 2005, registered September 25, 2007). See Exhibit E. The Panel determines that Complainant’s ADORAMA trademark registration demonstrates rights in the mark under Policy ¶ 4(a)(i), and further, that Complainant’s rights in the mark date back to its August 30, 2005 date of filing the trademark registration. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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).
Previous panels have determined that a Complainant can demonstrate rights in a claimed mark through common law rights prior to the marks trademark registration if the mark has acquired a secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant claims that it has established prior rights in the ADORAMA mark through its first use of the mark in commerce in July 1, 1987. See Exhibit I. Complainant additionally argues that it registered its primary website <adorama.com> on April 3, 1996. Complainant claims that it also established prior rights in the ADORAMA mark through its press releases released in 2004, prior to the registration of the <wwwadorama.com> and <adoramma.com> domain names. In Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010), the panel held that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999. Accordingly, the Panel determines that Complainant has established common law rights in the ADORAMA mark according to Policy ¶ 4(a)(i) through its continuous use of the mark.
Complainant asserts that the <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com>, <wwwadorama.com> domain names are confusingly similar to Complainant’s ADORAMA mark. Complainant argues that the disputed domain name <adoramalearningcenter.com> added the generic terms “learning” and “center” to its <adoramalearningcenter.com> domain name. The Panel finds that Respondent’s addition of a generic term to a mark contributes to confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant asserts that the disputed domain name <wwwadorama.com> is confusingly similar to Complainant’s mark by simply omitting the punctuation after the “www” before Complainant’s mark. The Panel holds that Respondent’s inclusion of “www” without the punctuation does not differentiate Respondent’s domain name from Complainant’s mark pursuant to 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). The Panel notes that Respondent adds an additional letter “m” to the ADORAMA mark in the <adoramma.com> domain name, adds the letter “e” to the mark in the <edorama.com> domain name, and adds the letter “m” to the mark in the <admorama.com> domain name. The Panel determines that Respondent’s addition of a letter does not distinguish the domain name from 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 adds the gTLD “.com” to its <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com>, <wwwadorama.com> domain names.
The Panel holds that Respondent’s addition of a gTLD to its domain names contributes to confusing similarity for the purposes of a Policy ¶ 4(a)(i) determination. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Thus, the Panel finds that Respondent’s <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com>, <wwwadorama.com> domain names are confusingly similar to Complainant’s ADORAMA mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).
Complainant alleges that Respondent has not been commonly known by the disputed domain names. The Panel observes that the WHOIS record identifies “ICS inc.” as the registrant of the <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com>, <wwwadorama.com> domain names. See Exhibit I. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant asserts that it has not given Respondent permission to use Complainant’s mark in a domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Accordingly, the Panel determines that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is using the <admorama.com>, <adoramalearningcenter.com>, and <wwwadorama.com> 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. The Panel notes that Respondent’s <admorama.com>, <adoramalearningcenter.com>, and <wwwadorama.com> domain names resolve to hyperlink directories featuring links titled “Nikon Camera Digital,” “Adorama Camera,” and “Rent Camera Lenses.” See Exhibit H.
Complainant claims that Respondent is using the <adoramma.com> and <edorama.com> domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which is in direct violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant. Id. The Panel finds that Respondent’s use of the disputed domain names to provide competing hyperlinks or to resolve to Complainant’s own website 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also 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)).
Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving website promotes products that compete with Complainant. The Panel observes that Respondent’s <admorama.com>, <adoramalearningcenter.com>, and <wwwadorama.com> domain names resolve to hyperlink directories featuring competing links such as “Nikon Camera Digital,” “Adorama Camera,” and “Rent Camera Lenses.” See Exhibit H. Complainant argues that these links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The Panel finds that Respondent’s use of the <admorama.com>, <adoramalearningcenter.com>, and <wwwadorama.com> domain names disrupts Complainant’s business, and determines that Respondent registered and is using the <admorama.com>, <adoramalearningcenter.com>, and <wwwadorama.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent has registered and used the disputed domain names by using the disputed domain names to attract and mislead consumers for its own profit. Complainant claims that Respondent has set up a “click through” website for which it likely receives revenue for each misdirected Internet user. The Panel notes that Respondent is using its <admorama.com>, <adoramalearningcenter.com>, and <wwwadorama.com> domain names to resolve to websites containing competing hyperlinks. See Exhibit H. Prior panels have held that a respondent’s use of a disputed domain name to attract consumers to its website for commercial gain 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.’”). Therefore, the Panel holds that Respondent has registered and is using the <admorama.com>, <adoramalearningcenter.com>, and <wwwadorama.com> domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent is using the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which is in direct violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant. Complainant claims that Respondent is using the <adoramma.com> and <edorama.com> domain names to resolve to Complainant’s own website. See Exhibit H. Complainant alleges that Respondent registered the disputed domain names while a member of its affiliate program, showing that Respondent has attempted to opportunistically benefit from its registration and use of the disputed domain names at Complainant’s expense. In Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007), the panel found bad faith registration and use where respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program. Consequently, the Panel finds that Respondent has registered and is using the <adoramma.com> and <edorama.com> domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent adds or deletes letters from its <admorama.com>, <adoramma.com>, and <edorama.com> domain names, and includes the prefix “www” in the <wwwadorama.com> domain name. The Panel finds that Respondent has engaged in typosquatting, demonstrating bad faith use and registration of the <admorama.com>, <adoramma.com>, <edorama.com>, and <wwwadorama.com> domain names under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant alleges that Respondent surely had actual knowledge of Complainant’s rights in the ADORAMA mark at the time Respondent registered the disputed domain names. Complainant asserts that Respondent’s knowledge of Complainant’s rights in the ADORAMA mark is evidenced by Respondent’s membership in Complainant’s affiliate program. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights, and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <admorama.com>, <adoramalearningcenter.com>, <adoramma.com>, <edorama.com>, and <wwwadorama.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 28, 2013
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