SmartBargains.com, L.P. v. Henry Tsung
Claim
Number: FA0408000313576
Complainant is SmartBargains.com, L.P. (“Complainant”),
represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA
02176. Respondent is Henry Tsung (“Respondent”), No. 2, Alley 4, Lane 177, Swei Rd., Tapei, 356021,
Taiwan.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwsmartbargain.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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 14, 2004; the Forum received a hard copy of the
Complaint on August 16, 2004.
On
August 17, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <wwwsmartbargain.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. 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
August 19, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 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@wwwsmartbargain.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
September 14, 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 <wwwsmartbargain.com>
domain name is confusingly similar to Complainant’s SMARTBARGAINS mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwsmartbargain.com> domain name.
3. Respondent registered and used the <wwwsmartbargain.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
SmartBargains.com, L.P., is a wholly owned subsidiary of SmartBargains,
Inc. Since as early as June 2, 2000,
Complainant has used the SMARTBARGAINS mark in connection with on-line retail
store services, offering high-quality, brand-name merchandise at discount
prices. Complainant specializes in a
wide range of products, from apparel and accessories to fine jewelry,
electronics and home furnishings.
Complainant is the owner of the SMARTBARGAINS mark by and through
assignment from its predecessor in interest, SmartBargains, Inc. (Reg. No. 2,672,735,
issued January 7, 2003, Reg. No. 2,606,658, issued August 13, 2002 and Reg. No.
2,676,170, issued January 21, 2003).
Complainant also owns trademark registration rights for its
SMARTBARGAINS mark in the European Union (Reg. No. 1,960,558, issued May 6,
2002).
Respondent
registered the <wwwsmartbargain.com> domain name on January 23,
2004. Respondent is currently using the
disputed domain name to redirect Internet users to the pay-per-click search
service <domainsponsor.com>, prominently featuring pop-up advertisements
and links to websites offering various commercial products and services. Respondent has a history of registering and
using domain names incorporating trademarks of third parties. See Travelers Express Company, Inc. v.
Henry Tsung, FA 275511 (Nat. Arb. Forum July 7, 2004) (Bad faith found
based on registration and use of <wwwmoneygram.com>); see also Trustmark
National Bank v. Henry Tsung, D2004-0274 (WIPO June 4, 2004) (Bad
faith found based on registration and use of <wwwtrustmark.com>); see
also Bausch & Lomb Inc. v. Henry Tsung, FA 247973 (Nat. Arb. Forum May
5, 2004) (Bad faith found based on registration and use of <occuvite.com>);
see also First Tennessee National Corporation v. Henry Tsung, D2004-0103
(WIPO April 22, 2004) (Bad
faith found based on registration and use of
<firsthorizonmorgage.com>); see also The Neiman Marcus Group, Inc. v. Henry Tsung,
FA 243464 (Nat. Arb. Forum April 6, 2004) (Bad faith found based on
registration and use of <neimanmarcusa.com>); see also America
West Airlines, Inc. v. Henry Tsung, FA 232953 (Nat. Arb. Forum March 16,
2004) (Bad faith found based on registration and use
of <americawestvacatons.com>); see also Whitney National
Bank v. Henry Tsung, FA 227652 (Nat. Arb. Forum March 3, 2004) (Bad faith
found based on registration and use of
<wwwwhitneybank.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."
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 in this proceeding that it has rights to the SMARTBARGAINS mark as
evidenced by its registration with the USPTO and the European Union. 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, <wwwsmartbargain.com>, is confusingly
similar to Complainant’s SMARTBARGAINS mark because the only difference between
the two is the omission of the period after the letters “www” and the omission
of the last letter “s” from “smartbargains.”
These minor omissions and typographical errors do not significantly
distinguish the domain name from the 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); see also Neiman Marcus
Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
confusing similarity has been established because the prefix "www"
does not sufficiently differentiate the <wwwneimanmarcus.com> domain name
from Complainant's NEIMAN-MARCUS mark); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO
Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s
UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark
and thus made the disputed domain name confusingly similar to it);.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the <wwwsmartbargain.com> domain name to redirect Internet
users to a website that features advertising for a variety of goods and that
hosts a popular search engine to link internet users to a variety of websites,
including sites that offer the same type of goods that Complainant offers. Respondent’s use of a domain name that is
confusingly similar to Complainant’s SMARTBARGAINS mark to redirect Internet
users interested in Complainant’s products to a commercial website that offers
a popular pay-per-click search engine and pop-up ads for products similar to
those offered by Complainant is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Bank of America Corp. v. Out Island Props., Inc., FA
154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of
infringing domain names to direct Internet traffic to a search engine website
that hosted pop-up advertisements was evidence that it lacked rights or
legitimate interests in the domain name); see also Geoffrey, Inc. v.
Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name); see also; see also U.S. Franchise Sys., Inc. v. Howell, FA
152457 (Nat. Arb. Forum May 6, 2003) (holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users to an unrelated business was not a
bona fide offering of goods or services).
Moreover,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <wwwsmartbargain.com> domain
name. Thus, Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by the disputed
domain name or using the domain name in connection with a legitimate or fair
use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name for commercial gain. Respondent’s <wwwsmartbargain.com>
domain name, incorporating Complainant’s well-known mark, resolves to a
popular pay-per-click search engine and provides links and pop-up ads to other
vendors offering the same products as Complainant. Respondent’s practice of diversion, motivated by commercial gain,
through the use of a confusingly similar domain name evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also
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 Pioneer
Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003)
(finding that Respondent did not have rights or legitimate interests in a
domain name that used Complainant’s mark and redirected Internet users to
website that pays domain name registrants for referring those users to its
search engine and pop-up advertisements); see also Bank of America Corp. v.
Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding
that Respondent’s use of infringing domain names to direct Internet traffic to
a search engine website that hosted pop-up advertisements was evidence that it
lacked rights or legitimate interests in the domain name).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use
and registration of a domain name, additional factors can also be used to
support findings of bad faith registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples
[of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive”).
Additionally, Respondent has engaged in similar conduct with respect to
registering domain names containing misspellings of the trademarks of third
parties. The Panel finds Respondent’s
history of typosquatting evidences bad faith registration pursuant to Policy ¶
4(a)(iii). See L.L. Bean, Inc. v.
Cupcake Patrol, FA 96504
(Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by
establishing a pattern of registering misspellings of famous trademarks and
names); 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”); see also 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).
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 <wwwsmartbargain.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
September 22, 2004
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