Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1603001665584
Complainant is Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwcarolwrightgifts.com>, registered with Fabulous.com Pty Ltd.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2016; the Forum received payment on March 14, 2016.
On March 15, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <wwwcarolwrightgifts.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.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 March 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@wwwcarolwrightgifts.com. Also on March 21, 2016, 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 April 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a direct-mail catalog and online retailer specializing in the retail of a wide variety of health products aimed at seniors, clothing, collectibles, exercise equipment, home furnishings, housewares, and shoes. Complainant owns several brands, including Carol Wright Gifts, a sister company that specializes in direct-mail catalogs and online retail of kitchen gadgets, travel items, gardening supplies, holiday gifts, and women’s apparel merchandise. Complainant owns a federal trademark registration for the CAROL WRIGHT GIFTS mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,290,178 registered November 2, 1999). The <wwwcarolwrightgifts.com> domain name is confusingly similar to the CAROL WRIGHT GIFTS mark as it incorporates the entire mark while eliminating spacing between words of the mark, omitting the period between the “www” prefix, and adding the generic top level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the disputed domain name. Respondent has no trademark or intellectual property rights in the domain name and Complainant has not authorized or permitted Respondent to use any of Complainant’s marks for any purpose. Respondent’s disputed domain name is being used to redirect 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 the links displayed on the resolving websites.
iii) Respondent registered disputed domain name should in bad faith. Respondent is a recalcitrant, serial cybersquatter, as evidenced by the prior UDRP decisions held unfavorably against Respondent, demonstrating a pattern of bad faith domain registrations under Policy ¶ 4(b)(ii). The <wwwcarolwrightgifts.com> domain name has a general offer for sale on the resolving webpage. Respondent’s resolving websites display pay-per-click links promoting products that compete with Complainant, thus diverting Internet users and disrupting Complainant’s legitimate business under Policy ¶ 4(b)(iii). Respondent uses the disputed domain name to take advantage of Complainant’s well known trademarks in order to achieve a commercial profit and competitive advantage, resulting from the confusion caused when Internet users who search for Complainant’s business are uncertain of Complainant’s association with the disputed domain names. Respondent’s registration and use of the disputed domain names is classic typosquatting behavior. Lastly, Respondent registered the <wwwcarolwrightgifts.com> domain name with actual or constructive knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent has failed to submit a response. The Panel notes that the <wwwcarolwrightgifts.com> domain name was registered on January 23, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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(f), 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 (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 is a direct-mail catalog and online retailer specializing in the retail of a wide variety of health products aimed at seniors, clothing, collectibles, exercise equipment, home furnishings, housewares, and shoes. Complainant owns several brands, including Carol Wright Gifts, a sister company that specializes in direct-mail catalogs and online retail of kitchen gadgets, travel items, gardening supplies, holiday gifts, and women’s apparel merchandise. Complainant reportedly owns federal trademark rights in the CAROL WRIGHT GIFTS mark under USPTO registration no. 2,290,178 (registered November 2, 1999). Registration with the USPTO has been held sufficient to establish rights in a mark even when Respondent does not operate within the United States. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Therefore, this Panel agrees that Complainant has established Policy ¶ 4(a)(i) rights in the CAROL WRIGHT GIFTS mark.
Next, Complainant argues that the <wwwcarolwrightgifts.com> domain name is confusingly similar to the CAROL WRIGHT GIFTS mark as it incorporates the entire mark while eliminating spacing between words, omitting the period between the “www” prefix and the mark and adding the gTLD “.com.” The omission of the period between “www” and a domain name is a common typographical error and has been held inadequate to differentiate a disputed domain name from a mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). Further, eliminating spacing and adding the gTLD “.com” is irrelevant in conducting a confusing similarity analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel finds that Respondent’s <wwwcarolwrightgifts.com> domain name is confusingly similar to Complainant’s CAROL WRIGHT GIFTS 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 (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 (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 claims Respondent is not commonly known by the disputed domain names. Complainant notes Respondent has no trademark or intellectual property rights in the domain name and Complainant has not authorized or permitted Respondent to use any of Complainant’s marks for any purpose. The Panel notes WHOIS lists “Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT” as the registrant of record for the disputed domain name. The Panel agrees that in the absence of any other evidence, there is no basis for finding Respondent to be known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).
Complainant further claims Respondent’s disputed domain name is being used to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant claims Respondent presumably receives pay-per-click fees from the links displayed on the resolving websites. Panel sees that the website that resolves from the disputed domain name features links including, “Carol Wright Gifts,” “Catalog Online,” “Mail Order Catalog,” “BP News,” “Latest News India,” and “Free Samples in India.” Id. The Panel agrees that these generic hyperlink listings to various businesses cannot serve as a basis for a Policy ¶ 4(c)(i) bona fide offering of goods or services, or as a basis for Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Complainant asserts that Respondent registered and is using the <wwwcarolwrightgifts.com> domain name in bad faith. Complainant provides evidence for this claim, which shows Respondent has listed the disputed domain name for sale. The Panel sees that Respondent’s resolving website states “Buy this domain.” Prior panels have frequently concluded that offering to sell a domain name that is confusingly similar to a complainant’s mark indicates bad faith use and registration. See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The Panel therefore finds that Respondent registered and is using the <wwwcarolwrightgifts.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant claims Respondent is a recalcitrant, serial cybersquatter, as evidenced by the prior UDRP decisions held unfavorably against Respondent (e.g., General Motors LLC v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT FA 1643209 (Forum Nov. 27, 2015); Herman Miller, Inc. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT FA 1597830 (Forum Feb. 10, 2015)). The Panel agrees these prior decisions evidence a pattern of bad faith registration so as to indicate bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA 1464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”).
Complainant further claims that Respondent’s resolving websites display pay-per-click links promoting products that compete with Complainant, thus diverting Internet users and disrupting Complainant’s legitimate business. As the Panel believes these hyperlinks are in fact competitive with Complainant’s business, it finds bad faith under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA 1622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”)
Complainant claims Respondent uses the disputed domain name to take advantage of Complainant’s well-known trademarks in order to achieve a commercial profit and competitive advantage, resulting from the confusion caused when Internet users, searching for Complainant’s business, are uncertain of Complainant’s association with the disputed domain names. In Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA 1598657 (Forum Feb. 20, 2015) the panel found that Respondent’s use of the disputed domain name to gain commercially through Internet user confusion and competing hyperlinks gave rise to a Policy ¶ 4(b)(iv) finding of bad faith. The Panel here likewise finds Respondent’s conduct amounts to Policy ¶ 4(b)(iv) bad faith.
Complainant claims Respondent’s registration and use of the disputed domain name indicate typosquatting behavior. As the Panel believes the disputed domain name is mere typographical errors of Complainant’s marks, it finds such conduct as an inference of bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”).
Complainant asserts that Respondent’s had actual knowledge of its rights in the CAROL WRIGHT GIFTS mark. Complainant directs the Panel’s attention to Complainant’s evidence, where a link to Complainant’s page is found on Respondent’s resolving website for the <wwwcarolwrightgifts.com> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers from the manner of use of the disputed domain name 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 Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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 <wwwcarolwrightgifts.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 25, 2016
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