Personalizationmall.com v. Pham Dinh Nhut
Claim Number: FA1408001577353
Complainant is Personalizationmall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <persoalizationmall.com> and <personalizatiomall.com>, registered with April Sea Information Technology Company Limited.
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 August 28, 2014; the National Arbitration Forum received payment on August 28, 2014.
On September 3, 2014, April Sea Information Technology Company Limited confirmed by e-mail to the National Arbitration Forum that the <persoalizationmall.com> and <personalizatiomall.com> domain names are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 September 15, 2014, the Forum served the Vietnamese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2014 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@persoalizationmall.com, postmaster@personalizatiomall.com. Also on September 15, 2014, the Vietnamese language 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. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
On October 8, 2014, 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
Policy ¶ 4(a)(i). Complainant owns the PERSONALIZATION MALL mark through trademark registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,561,853, registered Apr. 16, 2002). Complainant uses the PERSONALIZATION MALL mark for online retail store services featuring personalized merchandise and gifts. The <persoalizationmall.com> and <personalizatiomall.com> domain names are confusingly similar to the PERSONALIZATION MALL mark.
Policy ¶ 4(a)(ii). Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the <persoalizationmall.com> and <personalizatiomall.com> domain names, nor has Complainant authorized Respondent’s use of the mark. Respondent is using the disputed domain names to feature links to third-party websites, some of which compete with Complainant in the field of personalized merchandise. Respondent generates revenue from these click-through sites. This amounts to neither a bona fide offering nor a legitimate noncommercial or fair use.
Policy ¶ 4(a)(iii). Respondent has engaged in bad faith. Respondent is a recalcitrant cybersquatter as demonstrated by prior UDRP decisions. Further, Respondent is in violation of Policy ¶ 4(b)(iii) as the promoted competing links disrupt Complainant’s business. In addition, Respondent impermissibly generates revenue by using these domain names in connection with click-through hyperlinks. Finally, Respondent’s registration and use of the disputed domain names amounts to typosquatting, which is further indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <persoalizationmall.com> domain name was registered October 30, 2007, and the <personalizatiomall.com> domain name was registered December 16, 2008.
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 uses the PERSONALIZATION MALL mark for online retail store services featuring personalized merchandise and gifts. Complainant claims rights in the PERSONALIZATION MALL mark through trademark registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,561,853, registered Apr. 16, 2002). The Panel agrees that Complainant’s valid trademark registration for the PERSONALIZATION MALL mark with the USPTO sufficiently demonstrates rights in the mark pursuant to Policy ¶ 4(a)(i). 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).
Complainant argues the <persoalizationmall.com> and <personalizatiomall.com> domain names are confusingly similar to the PERSONALIZATION MALL mark. The Panel notes that both disputed domain names incorporate the mark, while omitting a letter “n” from the “personalization” portion of the mark. Prior panels have found confusing similarity after comparable alterations. Of note here, in The Gap, Inc. v. Hanying Li, FA 1331209 (Nat. Arb. Forum July 29, 2010), the panel found the <oldavy.com> name confusingly similar to the OLD NAVY mark despite the removal of a single letter “n” from the mark. Accordingly, the Panel finds that the <persoalizationmall.com> and <personalizatiomall.com> domain names are confusingly similar to the PERSONALIZATION MALL mark pursuant to Policy ¶ 4(a)(i).
Complainant claims Respondent is using the disputed domain names to feature links to third-party websites, some of which compete with Complainant in the field of personalized merchandise. Complainant presumes that Respondent generates revenue from these click-through sites. The Panel notes that the disputed domain names resolve to promote links for Complainant and links in competition with Complainant such as “Personalized Gift,” “Unique Gift,” and “Custom Personal Gifts.” Prior panels have found that such use does not fall within the parameters of Policy ¶¶ 4(c)(i) and (iii). Notably, in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel wrote, “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).” Here, the Panel agrees that Respondent’s use of the disputed domain names to promote links in competition with Complainant amounts to neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Thus, Complainant has also satisfied Policy ¶4(a)(ii).
Complainant claims Respondent is a recalcitrant cybersquatter as demonstrated by prior UDRP decisions, which evinces Respondent’s bad faith in the current matter. In so arguing, Complainant cites to several cases against Respondent where the disputed domain names were eventually transferred following findings of bad faith. See e.g., CeltonManx Limited v. Pham Dinh Nhut, D2014-0109 (WIPO Mar. 24, 2014). Prior panels have used prior findings of bad faith to inform their subsequent bad faith determinations. For example, in Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel found bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of the complainants. Here, the Panel agrees that Respondent has engaged in a pattern of bad faith as demonstrated by the prior adverse UDRP decisions, and therefore finds Respondent in violation of Policy ¶ 4(b)(ii).
Further, Complainant argues that Respondent is in violation of Policy ¶ 4(b)(iii) as the promoted competing links disrupt Complainant’s business. The Panel agrees that Respondent’s reliance on competing links evinces Policy ¶ 4(b)(iii) bad faith. 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).”).
In addition, Complainant claims Respondent impermissibly generates revenue by using these domain names in connection with click-through hyperlinks. Prior panels have found that a respondent’s use of competing hyperlinks to generate click-through revenue is evidence of bad faith under Policy ¶ 4(b)(iv). In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “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).” Therefore, this Panel agrees that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith as Respondent likely receives click-through fees via the competing hyperlinks featured at the disputed landing pages.
Finally, Complainant argues that Respondent’s registration and use of the disputed domain names amounts to typosquatting, which is further indication of bad faith. The disputed domain names both differ from Complainant’s trademark by the omission of a single letter “n.” In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), when considering the resemblance of the <zonelarm.com> domain name to the ZONEALARM mark, the panel wrote, “Respondent’s registration and use of a domain name that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Similarly, this Panel also finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
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 <persoalizationmall.com> and <personalizatiomall.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 21, 2014
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