Demandware, Inc. v. Robert Hermanns
Claim Number: FA1603001666981
Complainant is Demandware, Inc. (“Complainant”), represented by Robert M. O’Connell, Jr. of Fish & Richardson P.C., Massachusetts, USA. Respondent is Robert Hermanns (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <demadware.com>, <demadnware.com>, <demanware.com>, <demandwar.com>, <demandwaer.com>, <deamndware.com>, <deandware.com>, <demandare.com>, <demandawre.com>, <demandwae.com>, <demandwrae.com>, <demandwre.com>, <demanwdare.com>, <demnadware.com>, <demndware.com>, <dmandware.com>, <dmeandware.com>, and <edmandware.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on March 22, 2016; the Forum received payment on March 22, 2016.
On March 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <demadware.com>, <demadnware.com>, <demanware.com>, <demandwar.com>, <demandwaer.com>, <deamndware.com>, <deandware.com>, <demandare.com>, <demandawre.com>, <demandwae.com>, <demandwrae.com>, <demandwre.com>, <demanwdare.com>, <demnadware.com>, <demndware.com>, <dmandware.com>, <dmeandware.com>, and <edmandware.com> domain names 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 March 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 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@demadware.com. Also on March 23, 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 David A. Einhorn 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 names be transferred from Respondent to Complainant.
Complainant
Complainant provides cloud-based digital commerce solutions for rapidly growing retailers and branded manufacturers. Complainant has registered the DEMANDWARE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,217,898, registered March 13, 2007) for use promoting its business. Respondent’s disputed domain names are confusingly similar to Complainant’s DEMANDWARE mark as they are different variations of misspelled versions of the mark.
Respondent is not commonly known by the disputed domain names and has not been authorized to use the DEMANDWARE mark. Respondent is not making a bona fide offering of goods or services with the disputed domain names as initially they redirect Internet users seeking Complainant to a competitor of Complainant. After receiving a cease and desist letter from Complainant, Respondent redirected all but four of the disputed domain names to Complainant’s own website.
Respondent has registered the disputed domain names in bad faith. First, Respondent has engaged in a pattern of bad faith registration and use by registering several infringing domains in the instant proceeding. Second, Respondent’s use of the disputed domain names disrupts Complainant’s legitimate business purpose. Third, Respondent’s use of common misspellings of the DEMANDWARE mark in its domain names constitutes typosquatting. Finally, Respondent had notice of Complainant’s rights in the DEMANDWARE mark at the time the domains were registered.
Respondent:
Respondent failed to submit a Response in this proceeding. However, the Panel notes that all of the disputed domain names were registered on August 28, 2015.
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 names should be cancelled or transferred:
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 (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 provides cloud-based digital commerce solutions for rapidly growing retailers and branded manufacturers. Complainant has provided the Panel evidence of having registered the DEMANDWARE mark with USPTO (Reg. No. 3,217,898, registered March 13, 2007). Registration of a mark with the USPTO has been held adequate to demonstrate a complainant’s rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC& Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015).
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s DEMANDWARE mark as they are different variations of misspelled versions of the mark. In Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015), the panel held that a common misspelling of a mark did not differentiate the domain in question from complainant’s mark. This Panel relies on precedent and finds that Respondent’s use of misspelling does not distinguish any of its disputed domain names from Complainant’s DEMANDWARE mark.
Complainant asserts that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant supports this claim by pointing to the available Whois information lists “Robert Hermanns” as the registrant of record. Complainant notes that the e-mail information listed for the registrant is “jeremy@jeremyhermanns.org,” suggesting that “Jeremy” is the registrant’s actual name. In either case, the record does not support, and Respondent has not provided evidence to the contrary, that Respondent is commonly known by the disputed domain names. Precedent holds that panels may find that a respondent is not commonly known by a disputed domain name based on the available Whois information. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant provided screenshots of Respondent’s use of the disputed domain names. Complainant declares that prior to sending Respondent a cease and desist letter all of the disputed domain names, and currently several continue to, redirect Internet users to <shopify.com>, a direct competitor of Complainant. After receiving the cease and desist letter, Respondent allegedly repointed many of the domain names to Complainant’s website. Panels have held that using confusingly similar domain names to provide services that compete with a complainant who has demonstrated rights in the mark does not constitute a bona fide offering of goods or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or 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).”). Respondent’s lack of rights or legitimate interests is further demonstrated by Respondent’s typosquatting behavior. In IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003), the panel held that the respondent lacked rights and legitimate interests in the disputed domain names due to having engaged typosquatting by taking advantage of Internet users mistakenly misspelling Complainant's mark.
Therefore, the Panel finds that Respondent lacks Policy ¶ 4(a)(ii) rights.
Complainant asks the Panel to find that Respondent’s registration of multiple typosquatted versions of Complainant’s DEMANDWARE mark constitutes a pattern of prevention under Policy ¶ 4(b)(ii). Respondent has registered 18 misspelled versions of the DEMANDWARE mark. Panels have held that typosquatting constitutes a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Domain Admin, FA1607451 (Forum April 2, 2015). (Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”).
Complainant argues that Respondent is in violation of Policy ¶ 4(b)(iii) bad faith because several of Respondent’s disputed domain names have resolved and some continue to resolve to a direct competitor of Complainant and that this has disrupted Complainant’s own business efforts. In Amazon Technologies, Inc. v. Tammy Caffey, FA1576228 (Forum September 22, 2014) the panel reasoned that, “Respondent’s promotion of Complainant’s competitors on the <kindlestore.com> website disrupts Complainant business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii)”. Here, the Panel agrees that Respondent’s operation of a website offering competing servicing has been in competition with Complainant and amounts to bad faith disruption under Policy ¶ 4(b)(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 <demadware.com>, <demadnware.com>, <demanware.com>, <demandwar.com>, <demandwaer.com>, <deamndware.com>, <deandware.com>, <demandare.com>, <demandawre.com>, <demandwae.com>, <demandwrae.com>, <demandwre.com>, <demanwdare.com>, <demnadware.com>, <demndware.com>, <dmandware.com>, <dmeandware.com>, and <edmandware.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 27, 2016
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