Powell's Books Inc v. Private aka Free Domains Parking
Claim Number: FA0110000101161
Complainant is Powell's Books, Inc., Portland, OR (“Complainant”) represented by Devon J. Zastrow, of Klarquist Sparkman, LLP. Respondent is Private aka Free Domains Parking, Moscow (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <powellbooks.com>, registered with BulkRegister.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 22, 2001; the Forum received a hard copy of the Complaint on October 24, 2001.
On October 26, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <powellbooks.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name. BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, 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 October 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 2001 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 firstname.lastname@example.org 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 November 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 urges the following:
The disputed domain name is confusingly similar to Complainant’s marks. Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent, as a “typosquatter,” registered and is using the disputed domain name in bad faith.
B. Respondent did not submit a response in this proceeding.
Complainant operates a nationally known bookstore and has used the “POWELL’S BOOKS” trade name since at least 1971. Complainant registered the service mark “POWELL’S” on the Principal Register of the United States Patent and Trademark Office as Registration No. 2,355,077 on June 6, 2000. Complainant also reports having done business on the Internet since at least 1994.
Respondent registered the disputed domain name on March 18, 2000. Visitors to the disputed domain name are greeted with a pop-up advertisement and are redirected to a commercial website belonging to one of Complainant’s competitors.
At least three websites that seemingly intend to link users to the Complainant’s website inadvertently link to the disputed domain name by omitting the “s” in <powellsbooks.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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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;
(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 its rights to the mark that is contained in its entirety in the domain name registered by Respondent. Although not identical, the disputed domain name is confusingly similar to Complainant’s mark. The mere removal of the letter “s” does not change the overall impression created by this domain name; it creates a domain name that is confusingly similar to Complainant’s mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus makes it confusingly similar to the Complainant’s mark); see also V Secret Catalog, Inc. v. Internet Inv. Firm Trust “In Trust”, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding that the omission of the possessive “s” from the VICTORIA’S SECRET mark in the disputed domain name did not defeat confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has also established that it has rights to and a legitimate interest in the domain name that contains the Complainant’s mark. Because Respondent failed to submit a Response to this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See 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); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant).
Further, in directing users away from Complainant’s website, Respondent’s use of the disputed domain name did not constitute a bona fide offering of goods or services within the definition of the Policy ¶ 4(c)(i). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website); see also Société des Bains de Mer v. International Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the casinomontecarlo.com and montecarlocasinos.com domain names in connection with an unaffiliated online gambling website).
Similarly, since Respondent provided no evidence to suggest that Respondent is commonly known by the disputed domain name, as per Policy ¶ 4(c)(ii), and since Respondent has not shown that Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s service mark per Policy ¶ 4(c)(iii), the Panel finds that Respondent has no rights or legitimate interests in the domain name at issue. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant urges that Respondent registered and used the domain name in issue in bad faith. Respondent’s use of the disputed domain name to attract Complainant’s customers and divert them to a competing site permits the inference of bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used domain name for commercial gain to intentionally attract users to a direct competitor of Complainant).
Moreover, “typosquatting,” the practice of registering similar but inaccurate domain names, has been recognized as a bad faith use of a domain name under the Policy. See, e.g., AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding “wwwalavista.com”, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names “wwwdowjones.com”, “wwwwsj.com”, “wwwbarrons.com” and “wwwbarronsmag.com” to Complainants).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three of the required elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly it is Ordered that the <powellbooks.com> domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 10, 2001.
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