U.O.D., Inc. v. Ernesto Aldo Marchand
Claim
Number: FA0405000268179
Complainant is U.O.D., Inc. (“Complainant”), represented
by Michael J. Remington, of Drinker Biddle & Reath LLP, 1500 K Street NW, Suite 1100, Washington, DC 20005. Respondent is Ernesto Aldo Marchand (“Respondent”), Av. Brigadeiro Faria Lima
1811 cj 105, Sao Paulo, Sao Paulo 01476-900.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwfreepeople.com>, registered with Go
Daddy Software, Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 5, 2004; the Forum received a hard copy of the Complaint
on May 10, 2004.
On
May 5, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain
name <wwwfreepeople.com> is registered with Go Daddy Software,
Inc. and that Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. 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
May 11, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 1, 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@wwwfreepeople.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
June 8, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwfreepeople.com>
domain name is confusingly similar to Complainant’s FREE PEOPLE mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwfreepeople.com> domain name.
3. Respondent registered and used the <wwwfreepeople.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
U.O.D., Inc., offers soft and casual fashion paired with utilitarian essentials
in boutiques across the country.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the FREE PEOPLE mark (Reg. No. 1,827,547 issued March 22, 1994 and
Reg. No. 2,770,021 issued September 30, 2003).
Complainant has
used the FREE PEOPLE mark in commerce since at least February 1, 1991. Complainant’s clothing, targeted primarily to
young, contemporary women, is sold worldwide through approximately 1,100
department and specialty stores.
Complainant’s
main website is operated at the <freepeople.com> domain name.
Respondent
registered the disputed domain name on August 21, 2003. Respondent was using the domain name to
redirect Internet users to a gambling website.
Currently, the domain name is parked at the registrant’s home page.
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.
Complainant has
established that it has rights in the FREE PEOPLE mark through trademark
registrations with the United States Patent and Trademark Office and through
continued use of its mark in commerce for the last thirteen years. 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).
The domain name
registered by Respondent is confusingly similar to Complainant’s FREE PEOPLE
mark because the domain name incorporates Complainant’s mark in its entirety
and simply adds the letters “www.” The
mere addition of the letters “www” to a registered mark does not negate the
confusing similarity of Respondent’s domain name pursuant to Policy ¶
4(a)(i). 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 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); see also Dana Corporation v. $$$ This Domain Name
Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding
Respondent's <wwwdana.com> domain name confusingly similar to
Complainant's registered DANA mark because Complainant's mark remains the
dominant feature).
Furthermore, the
addition of the generic top-level domain (“gTLD”) “.com” does not significantly
distinguish the domain name from the 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); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant has
alleged that Respondent has no rights or legitimate interests in the domain
name that contains in its entirety Complainant’s mark. Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate
interests in the disputed domain name.
The burden shifts to Respondent to show that it does have rights or
legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist).
Moreover, where
Respondent does not respond, the Panel may accept 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of Complainant to
be deemed true).
Respondent’s <wwwfreepeople.com>
domain name is an obvious misspelling of Complainant’s mark intended to
capitalize on a frequent Internet-user mistake, forgetting to type a period
after “www.” The Panel finds that this
use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or
a legitimate noncommercial or fair use of the name under Policy ¶
4(c)(iii). 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 Encyclopaedia Britannica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of Complainant's mark).
Nothing in the
record, including the WHOIS domain name registration information, suggests that
Respondent is commonly known by the domain name 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent
intentionally registered a domain name, <wwwfreepeople.com>, that
contains in its entirety Complainant’s FREE PEOPLE mark. Respondent has engaged in the practice of
typosquatting. Typosquatting, itself,
is evidence of bad faith registration and use under the Policy. See Canadian Tire Corp., Ltd. v. domain
adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22,
2003) (holding that “[t] absence of a dot between the “www” and
“canadiantire.com” [in the <wwwcanadiantire.com> domain name is] likely
to confuse Internet users, encourage them to access Respondent’s site” and
evidenced bad faith registration and use of the domain name); see also Black &
Decker Corp. v. Azra 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).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s registered mark in its entirety and deviates only with the
addition of the letters “www” and the gTLD “.com,” suggests Respondent knew of
Complainant’s rights in the FREE PEOPLE mark.
Thus, the Panel finds that Respondent likely choose the <wwwfreepeople.com>
domain name based on the distinctive qualities of Complainant’s mark. See Medline, Inc. v. Domain Active
Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb.
6, 2003) (“in typosquatting cases, such
as this one, it would be difficult for Respondent to prove to the Panel that it
did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it
registered the infringing <wwwmedline.com> domain name”); see also RE/MAX
Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring
that Respondent’s registration of the <wwwremax.com> domain name,
incorporating Complainant’s entire mark, was done with actual notice of
Complainant’s rights in the mark prior to registering the infringing domain
name, evidencing bad faith).
The Panel finds
that Complainant fulfilled 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 <wwwfreepeople.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
June 21, 2004
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