PersonalizationMall.com v. Above.com Domain Privacy
Claim Number: FA1311001529553
Complainant is PersonalizationMall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <personalizatoinmall.com>, <personlaizationmall.com>, and <wwwpersonalizationmall.com>, registered with ABOVE.COM PTY LTD.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2013; the National Arbitration Forum received payment on November 12, 2013.
On November 15, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <personalizatoinmall.com>, <personlaizationmall.com>, and <wwwpersonalizationmall.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.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 November 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@personalizatoinmall.com, postmaster@personlaizationmall.com, and postmaster@wwwpersonalizationmall.com. Also on November 15, 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 December 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <personalizatoinmall.com>, <personlaizationmall.com>, and <wwwpersonalizationmall.com> domain names are confusingly similar to Complainant’s PERSONALIZATION MALL mark.
2. Respondent does not have any rights or legitimate interests in the <personalizatoinmall.com>, <personlaizationmall.com>, and <wwwpersonalizationmall.com> domain names.
3. Respondent registered and uses the <personalizatoinmall.com>, <personlaizationmall.com>, and <wwwpersonalizationmall.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the PERSONALIZATION MALL mark through its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,561,853, registered April 16, 2002). Complainant uses the mark in connection with online retail services featuring personalized merchandise and gifts.
Respondent registered the <personalizatoinmall.com> domain name on January 31, 2009, the <personlaizationmall.com> domain name on February 12, 2008, and the <wwwpersonalizationmall.com> domain name on October 8, 2009. The <personlaizationmall.com> domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant. Respondent is using the <personalizatoinmall.com> and <wwwpersonalizationmall.com> domain names to redirect users to Complainant’s own website in breach of its affiliate agreement with Complainant.
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.”).
The Panel finds that Complainant has established rights in its PERSONALIZATION MALL mark through its registration with the USPTO. Previous Panels agree that a USPTO registration satisfies the requirements of Policy ¶ 4(a)(i), even where the respondent resides or operates outside the jurisdiction of the registering agency. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <personalizatoinmall.com> and <personlaizationmall.com> domain names are merely misspellings of Complainant’s mark. Respondent’s <wwwpersonalizationmall.com> domain name simply adds “www” to Complainant’s mark. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature). Under Policy ¶ 4(a)(i) the inclusion of the gTLD “.com” and the elimination of punctuation is insignificant. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that the <personalizatoinmall.com>, <personlaizationmall.com>, and <wwwpersonalizationmall.com> domain names are confusingly similar to Complainant’s PERSONALIZATION MALL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent is not commonly known by the disputed domain name, and Complainant has not licensed or otherwise authorized Respondent to register domain names incorporating Complainant’s mark. The WHOIS record provides no evidence that Respondent is known by the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name because the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant asserts that Respondent is using the <personalizatoinmall.com> and <wwwpersonalizationmall.com> domain names in breach of its affiliate agreement with Complainant, and provides screenshots of the resolving websites associated with the disputed domain names showing that they resolve to Complainant’s own site through an affiliate link. Complainant asserts that this constitutes a violation of their affiliate agreement with Respondent. Previous panels have determined a respondent’s use of a domain name to generate revenue in breach of an affiliate agreement does not comport with Policy ¶ 4(a)(ii). See 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)). Therefore, the Panel finds that Respondent is not using the <personalizatoinmall.com> and <wwwpersonalizationmall.com> domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that the <personlaizationmall.com> domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant in the field of personalized merchandise and gifts, presumably for click-through fees. The Panel notes that <personlaizationmall.com> resolves to links to Complainant’s own website as well as competitors of Complainant such as <RedEnvelope.com>. Previous panels have held that the operation of a website with hyperlinks to various third-party websites that compete with the complainant does not fall within the parameters of a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)). Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <personlaizationmall.com> domain name resolves to a website that provides links to Complainant’s own website as well as competitors of Complainant. Previous panels have determined that a respondent’s use of a confusingly similar domain name in connection with a website that features links to competitors of the complainant’s business demonstrates that the respondent registered and is using the domain name in bad faith. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds that Respondent’s use of the <personlaizationmall.com> domain name is evidence of bad faith under Policy ¶ 4(b)(iii). Since Respondent undoubtedly receives click-through fees through the links featured through the <personlaizationmall.com>, the Panel finds that there is also bad faith 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).”).
Respondent is using the <personalizatoinmall.com> and <wwwpersonalizationmall.com> domain names to redirect users to Complainant’s own website in violation of Complainant’s affiliate program. Respondent no doubt receives affiliate fees through the <personalizatoinmall.com> and <wwwpersonalizationmall.com> domain names, benefitting from Complainant’s goodwill, which is further evidence of Respondent’s bad faith. Under similar circumstances, the panel in Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002), found that the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program. Therefore, the Panel finds that Respondent uses the <personalizatoinmall.com> and <wwwpersonalizationmall.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark when it registered the disputed domain names as a former affiliate of Complainant. Past panels have found evidence of bad faith where the respondent registered the domain name at issue with actual knowledge of the complainant’s rights in the mark at the time of registration. 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 had "actual knowledge of Complainant's mark when registering the disputed domain name"). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the PERSONALIZATION MALL mark, given Respondent’s affiliation with Complainant, and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent’s typosquatting is itself evidence of bad faith. Typosquatting is a practice that takes advantage of common and typographical errors, and is therefore motivated by bad faith. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii) as all three of the disputed domain names employ common typing mistakes.
The Panel finds that Complainant has 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 <personalizatoinmall.com>, <personlaizationmall.com>, and <wwwpersonalizationmall.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 16, 2013
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