The Antioch Company d/b/a Creative
Memories v. Chen Huang
Claim
Number: FA0404000250828
Complainant is The Antioch Company d/b/a Creative Memories (“Complainant”), represented by Kevin J. Moran, of Gray Plant Mooty, 500 IDS Center, 80 South Eighth
Street, Minneapolis, MN 55402.
Respondent is Chen Huang (“Respondent”),
P.O. Box 20231, Zengdu, Guangzhou 34264, China 65487.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <creativmemories.com> and
<wwwcreativememories.com>, registered with Iholdings.com, Inc. d/b/a
Dotregistrar.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 8, 2004; the Forum received a hard copy of the
Complaint on April 9, 2004.
On
April 12, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain names <creativmemories.com> and
<wwwcreativememories.com> are registered with Iholdings.com, Inc.
d/b/a Dotregistrar.com and that Respondent is the current registrant of the
names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent
is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
April 13, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 3, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@creativmemories.com and postmaster@wwwcreativememories.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 20, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Judge Harold Kalina (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."
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.
A. Complainant makes the following assertions:
1. Respondent’s <creativmemories.com>
and <wwwcreativememories.com> domain names are confusingly
similar to Complainant’s CREATIVE MEMORIES mark.
2. Respondent does not have any rights or
legitimate interests in the <creativmemories.com> and
<wwwcreativememories.com> domain names.
3. Respondent registered and used the <creativmemories.com>
and <wwwcreativememories.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the CREATIVE MEMORIES mark in connection with the sale of scrapbooks and
scrap-booking supplies continuously since at least 1987. Complainant’s sales of products bearing the
CREATIVE MEMORIES mark reached $390 million in 2003. Complainant holds a federal registration for the CREATIVE
MEMORIES mark.
Respondent
registered the domain names on October 15, 2003. The domain names resolve to a website that provides links to
auction site pages and websites administered by Complainant’s competitors.
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."
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.
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.
Due to
Respondent’s failure to provide a Response, the Panel accepts all reasonable
allegations and inferences in the Complaint as true. See 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.”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Complainant
asserts that it holds a federal registration for the CREATIVE MEMORIES
mark. Moreover, Complainant asserts
that it has used the mark in commerce continuously since 1987 and sold $390
million worth of products bearing the CREATIVE MEMORIES mark in 2003. Complainant failed to provide any evidence
to support the assertions mentioned above.
However, due to Respondent’s failure to contest these assertions, the
Panel concludes that Complainant has rights in the mark. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Tuxedos By
Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law
rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also Fishtech
v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that
Complainant has common law rights in the mark FISHTECH which it has used since
1982).
Respondent’s <creativmemories.com>
domain name is confusingly similar to Complainant’s CREATIVE MEMORIES mark
because the domain name merely misspells the mark my omitting the second letter
“e” from the word “creative.”
Respondent’s misspelling is insufficient to distinguish the domain name
from Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth “w” or the
omission of periods or other such generic typos do not change respondent’s
infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
Also,
Respondent’s <wwwcreativememories.com> domain name is confusingly
similar to Complainant’s mark because the domain name fully incorporates the
mark and takes adavantage of Internet users who mistakenly omit the period
between the prefix “www” and Complainant’s mark. See Bank of Am. Corp.
v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that
Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to
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”); see also Marie
Claire Album v. Blakely, D2002-1015
(WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct
in the "Internet world" and thus Respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to Complainant's
MARIE CLAIRE trademark).
The omission of
the space between the two words of Complainant’s mark is insufficient to
distinguish the two domain names from the CREATIVE MEMORIES mark. See Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
Lastly, the
addition of the generic top-level domain “.com” is irrelevant in determining
whether the domain names are confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to contest the allegations of the Complaint; therefore, the Panel presumes
that Respondent lacks rights and legitimate interests in the domain names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
Nothing in the
record establishes that Respondent is commonly known by the domain names. Moreover, Respondent is not licensed or
authorized to register or use domain names that incorporate Complainant’s mark.
Therefore, the Panel concludes that
Respondent lacks rights and legitimate interests in the domain names pursuant
to Policy ¶ 4(c)(ii). See Tercent
Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Respondent’s
domain names are confusingly similar to Complainant’s mark and resolve to a
website that provides links to Complainant’s competitors. Respondent’s domain names disrupt
Complainant’s business and do 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). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Ameritrade Holdings Corp.,
Inc. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services).
Furthermore,
Respondent’s domain names resolve to a website that links to web auction
sites. The Panel presumes that Respondent
receives commissions from the auction sites and the sites mentioned above for
redirecting Internet users to the their websites. Thus, Respondent is using domain names confusingly similar to
Complainant’s mark for commercial gain, which is further evidence that
Respondent lacks rights and legitimate interests in the domain names. See WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated by the Policy); see
also Black & Decker Corp. v. Clinical Evaluations,
FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the
disputed domain name to redirect Internet users to commercial websites,
unrelated to Complainant and presumably with the purpose of earning a
commission or pay-per-click referral fee did not evidence rights or legitimate
interests in the domain name).
Moreover,
Respondent’s use of the <wwwcreativememories.com> domain name
constitutes typosquatting because it takes advantage of inadvertent typos
committed by Internet users who attempt to access Complainant online but
instead are directed to websites unrelated to Complainant. Respondent’s typosquatting is evidence that
it lacks rights and legitimate interests in the domain name. See Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis
Complainant); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat.
Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or legitimate
interests in the <wwwremax.com> domain name as it is merely using
Complainant’s mark to earn profit from pop-up advertisements).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
domain names resolve to a website that provides links to Complainant’s
competitors. Respondent’s use of the
domain names disrupts Complainant’s business and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the
domain name <eebay.com> in bad faith where Respondent has used the domain
name to promote competing auction sites).
Furthermore,
Respondent’s domain names resolve to a website that provides links to auction
sites and Complainant’s competitors.
The Panel presumes that Respondent receives a commission from these
Internet vendors for redirecting Internet users to their websites. Thus, the Panel finds that Respondent is
using domain names confusingly similar to Complainant’s mark for commercial
gain and therefore constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the
domain name to another website <iwin.com>, presumably receiving a portion
of the advertising revenue from the site by directing Internet traffic there,
thus using a domain name to attract Internet users for commercial gain); see
also State Farm Mut. Auto. Ins. Co.
v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that
Respondent registered the domain name <statefarmnews.com> in bad faith
because Respondent intended to use Complainant’s marks to attract the public to
the web site without permission from Complainant).
Also, Respondent’s
typosquatting constitutes bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period after
the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith); see also Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <creativmemories.com> and
<wwwcreativememories.com> domain names be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
June 1, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page