Luisa Via Roma SPA v. Super Privacy Service c/o Dynadot
Claim Number: FA1609001694576
Complainant is Luisa Via Roma SPA (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Super Privacy Service c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <luizaviaroma.com>, registered with Dynadot, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2016; the Forum received payment on September 20, 2016.
On September 21, 2016, Dynadot, LLC confirmed by e-mail to the Forum that the <luizaviaroma.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 September 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@luizaviaroma.com. Also on September 22, 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 October 21 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant registered its LUISA VIA ROMA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,810,944, filed June 16, 2008, registered June 29, 2010), and has rights in the mark it uses for its fashion and clothing business. Respondent’s <luizaviaroma.com> only differs by replacing the “S” in Complainant’s mark with a “z,” and omitting the spaces (and adding a generic top-level domain (“gTLD”)).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its LUISA VIA ROMA mark in any fashion, and Respondent is not commonly known by <luizaviaroma.com>. Respondent is using the domain name to resolve to a website that offers generic pay-per-click hyperlinks, some of which compete with Complainant. This is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent registered and is using the disputed domain name in bad faith. Respondent is disrupting Complainant’s business by diverting Internet users to third-party websites. Respondent is also attempting to commercially gain from Internet users who misspell Complainant’s mark. Further, this practice is considered typosquatting and is consistently held to be in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of <luizaviaroma.com>.
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 contends that it has rights in the LUISA VIA ROMA mark, based on its registration of the mark with the USPTO (Reg. No. 3,810,944, filed June 16, 2008, registered June 29, 2010). Panels have found that USPTO registration confers rights in the mark under Policy ¶ 4(a)(i), and that a complainant’s rights in the mark date back to its original filing date. See Alibaba Group Holding Limited v. Zhang Rihui, FA 1568213 (Forum Aug. 11, 2014) (“The Panel finds that Complainant’s USPTO registration of its TAOBAO mark is sufficient to afford rights in the mark dating back to the May 6, 2010 filing date of the trademark application for the mark.”). Thus, the Panel determines that Complainant has rights in the LUISA VIA ROMA mark dating back to June 16, 2008.
Complainant argues that Respondent’s <luizaviaroma.com> domain name is confusingly similar to its LUISA VIA ROMA mark. Complainant argues that the omission of spaces and a gTLD are irrelevant to distinguish a domain name, and that Respondent’s domain only differs by replacing the “S” in Complainant’s mark with a confusingly similar “z.” Panels have agreed that a domain name is confusingly similar when it only differs by a single letter. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES). As such, the Panel finds that <luizaviaroma.com> is confusingly similar to Complainant’s LUISA VIA ROMA mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 contends that Respondent has no rights or legitimate interests in the <luizaviaroma.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its LUISA VIA ROMA mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The WHOIS information for the domain name in question lists “Super Privacy Service c/o Dynadot” as the registrant. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Thus, the Panel finds that Respondent is not commonly known by <luizaviaroma.com>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using <luizaviaroma.com> to redirect Internet users to a website containing generic pay-per-click links. Prior panels have held that hosting pay-per-click hyperlinks does not confer rights or legitimate interests in the domain name. 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). As such, the Panel finds that Respondent’s use of <luizaviaroma.com> is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant alleges that Respondent registered and is using the <luizaviaroma.com> domain name in bad faith. Complainant argues that Respondent is using the resolving website of the disputed domain name to offer pay-per-click hyperlinks, some of which directly compete with its fashion and clothing business. Panels have found that a respondent offering links to third party websites in the complainant’s business does constitute disruption under Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel holds that Respondent has violated Policy ¶ 4(b)(iii).
Complainant asserts that Respondent is attempting to commercially gain in bad faith by creating confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Complainant presumes that Respondent commercially gains from click-through revenue when mistaken Internet users click one of the hosted hyperlinks. Panels have found respondents in violation of Policy ¶ 4(b)(iv) when they host such hyperlinks, whether or not they compete with the complainant’s business. See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Thus, the Panel holds Respondent’s use of <luizaviaroma.com> is a bad faith attempt to commercially gain under Policy ¶ 4(b)(iv).
Complainant finally contends that Respondent is typosquatting on its LUISA VIA ROMA mark in bad faith. Complainant argues that Respondent’s domain name only differs from its mark by replacing the “S” with a “z.” Panels have found typosquatting to be evidence of bad faith where a disputed domain name is a common misspelling of a complainant’s mark. See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). Whereas “K” and “L” are adjacent on a qwerty keyboard and has been determined to amount to a typosquat where one replaces the other in LifeLock, Inc., the Panel agrees that in this case, the “S” and “Z” are adjacent and the substitution of one for the other constitutes typosquatting and bad faith exists under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <luizaviaroma.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 28, 2016
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