Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp. v. ICS Inc
Claim Number: FA1512001651454
Complainant is Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, United States. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <amerimarkds.com>, <carolwtightgifts.com>, <drleonaeds.com>, <drlleonards.com>, and <wwwtimeformecatalog.com>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2015; the Forum received payment on December 8, 2015.
On December 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amerimarkds.com>, <carolwtightgifts.com>, <drleonaeds.com>, <drlleonards.com>, and <wwwtimeformecatalog.com> domain name are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2016 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@amerimarkds.com, postmaster@carolwtightgifts.com, postmaster@drleonaeds.com, postmaster@drlleonards.com, postmaster@wwwtimeformecatalog.com. Also on December 16, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Established by Dr. Leondard’s Healthcare Corporation, Complainant is a direct-mail catalog and online retailer specializing in the retail of a wide variety of health products aimed at seniors, along with clothing, collectibles, exercise equipment, home furnishings, housewares, and shoes. Complainant retails merchandise through its websites <amerimark.com>, <carolwright.com>, <carolwrightgifts.com>, and <timeformecatalog.com>. Complainant has registered the AMERIMARK, CAROL WRIGHT, CAROL WRIGHT GIFTS, DR. LEONARD’S, and TIME FOR ME marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,648,156, registered November 12, 2002) (e.g., Reg. No. 1,571,260, registered December 12, 1989) (Reg. No. 2,290,178, registered November 2, 1999) (e.g., Reg. No. 1,818,850, registered February 1, 1994) (Reg. No. 3,421,932, registered May 6, 2008), which demonstrate Complainant’s rights in its marks. The Panel is directed to Attached Exhibit E for copies of Complainant’s USPTO registrations. The disputed domain names are confusingly similar to Complainant’s marks as they differ by only one single character, remove one character, include an incorrect character, or juxtapose characters. Moreover, one of the disputed domain names simply omits the punctuation after the “www” before Complainant’s mark. Finally, the disputed domain names eliminate the spacing between the words of Complainant’s marks and merely add the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s marks. Second, Respondent is not licensed or authorized to use Complainant’s marks. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which compete directly with Complainant’s business. The Panel is directed to Attached Exhibit H for screenshots of Respondent’s resolving websites.
Respondent has registered and is using the disputed domain names in bad faith. First, Respondent has listed some or all of the disputed domain names for sale. The Panel is directed to Attached Exhibit I for screenshots of the auction site showing the domain names for sale. Second, Respondent has a history of adverse UDRP rulings. The Panel is directed to Attached Exhibit N for references to other UDRP decisions against Respondent. Third, Respondent is using the disputed domain names to disrupt Complainant’s business by creating confusion through the registration and use of a confusingly similar domain names. Fourth, Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Fifth, Respondent has engaged in the tactic of typosquatting, thereby violating Policy ¶ 4(a)(iii). Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <amerimarkds.com> disputed domain name was registered on March 10, 2013, the <carolwtightgifts.com> disputed domain name was registered on July 29, 2013, the <drleonaeds.com> disputed domain name was registered on April 7, 2013, the <drlleonards.com> disputed domain name was registered on June 3, 2013, and the <wwwtimeformecatalog.com> disputed domain name was registered on February 10, 2014.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s registered trademarks, that the Respondent has no rights or legitimate interests to any of the disputed domain names, and that the Respondent has engaged in bad faith use and registration of the disputed domain names.
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, as Complainant has argued, that each of the disputed domain names is confusingly similar with each of the claimed and registered trademarks of the Complainant. The Complainant has adequately demonstrated its rights in and to the listed trademarks through its various registrations.
The disputed domain names are confusingly similar to Complainant’s marks as they differ by only one single character, remove one character, include an incorrect character, or juxtapose characters. Moreover, one of the disputed domain names simply omits the punctuation after the “www” before Complainant’s mark. Finally, the disputed domain names eliminate the spacing between the words of Complainant’s marks and merely add the gTLD “.com.” Previous panels have held that there is confusing similarity under Policy ¶ 4(a)(i) where a respondent’s disputed domain name differs by only one letter from a complainant’s mark. 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).
None of the Respondents amendments to the Complainant’s trademarks is sufficient to distinguish the disputed domain names. As such, the Panel finds that each of the disputed domain names is confusingly similar to each of the corresponding registered trademark on the Complainant.
The Complainant lacks any rights or legitimate interests in or to the disputed domain names. Respondent is not commonly known by any of the disputed domain names and Respondent has not obtain permission or license to register the disputed domain names.
Respondent is apparently not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant has demonstrated that Respondent uses its disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which compete directly with Complainant’s business. Attached Exhibit H shows screenshots of Respondent’s resolving websites. A respondent’s use of a disputed domain name to display links to products and services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Therefore, the Panel finds that the Respondent lacks any rights or legitimate interests in or to the disputed domain names.
Respondent has apparently listed some or all of the disputed domain names for sale. Attached Exhibit I shows screenshots of the auction site showing the domain names for sale. The <amerimarkds.com> domain name, for example, is listed for sale for $499.00. A respondent’s request for monetary compensation beyond out-of-pocket costs in exchange for a registered domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i). As such, on this grounds alone, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(i).
However, in addition, Respondent has a demonstrated history of adverse UDRP rulings. Attached Exhibit N shows references to other UDRP decisions against Respondent. Prior UDRP proceedings against a respondent shows a pattern of bad faith use and registration which, presumptively is present here. Accordingly, the Panel finds that Respondent registered and is using the disputed domain names in bad faith.
Additionally, Respondent is apparently using the disputed domain names to disrupt Complainant’s business by creating confusion through the registration and use of a confusingly similar domain names. Respondent is using the disputed domain names for Respondent’s own commercial gain. Previous panels have found evidence of bad faith pursuant to Policy ¶ 4(b)(iii) where a respondent registered and used a domain name that displayed links goods and services similar to those offered by the complainant. 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).”). Past panels have also found that a respondent’s use of disputed domain names to host a website that offers links to goods and services similar to those offered by the complainant under its mark constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). As such, the Panel finds that Respondent’s disputed domain names compete with and disrupts Complainant’s business per Policy ¶ 4(b)(iii) and that Respondent is using the disputed domain name for commercial gain, which is evidence of bad faith under Policy ¶ 4(b)(iv).
Respondent has also engaged in the tactic of typosquatting, thereby violating Policy ¶ 4(a)(iii). Previous panels have agreed that a respondent’s practice of typosquatting constitutes bad faith registration and use pursuant to 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)). For this reason as well, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent registered the disputed domain names with actual knowledge of Complainant’s marks. Complainant bases its contention on the assertion that Respondent registered confusingly similar domain names that are being used to host links to products that compete directly with Complainant’s business. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii). The Panel further finds that this use and registration was in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <amerimarkds.com>, <carolwtightgifts.com>, <drleonaeds.com>, <drlleonards.com>, and <wwwtimeformecatalog.com> domain names transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: January 7, 2016
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