Spokane Hardware Supply, Inc. v. Marketing Total, S.A.
Claim Number: FA0712001122787
Complainant is Spokane Hardware Supply, Inc. (“Complainant”), represented by John
R. Zeimantz, of Feltman, Gebhardt, Greer & Zeimantz,
P.S.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwthehardwarehut.com>, registered with Belgiumdomains, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2007.
On December 20, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwthehardwarehut.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 December 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 17, 2008 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@wwwthehardwarehut.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <wwwthehardwarehut.com> domain name is confusingly similar to Complainant’s THEHARDWAREHUT.COM mark.
2. Respondent does not have any rights or legitimate interests in the <wwwthehardwarehut.com> domain name.
3. Respondent registered and used the <wwwthehardwarehut.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Spokane Hardware Supply, Inc., is a retailer of cabinet, bath, and door hardware for residential and commercial use. Since 2001, Complainant has operated under the THEHARDWAREHUT.COM mark (Reg. No. 2,518,332 issued December 11, 2001), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <thehardwarehut.com> domain name in conjunction with its business.
Respondent registered the <wwwthehardwarehut.com> domain name on August 7, 2007. Respondent is currently using the disputed domain name to resolve to a website that features links and advertisements for Complainant’s competitors, as well as various pop-up advertisements.
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. 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 (Nat. Arb. 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.”).
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 asserted sufficient rights in the THEHARDWAREHUT.COM mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <wwwthehardwarehut.com> domain name incorporates Complainant’s entire THEHARDWAREHUT.COM mark while merely adding the prefix “www.” Generally, the removal of the period between “www” and the remainder of the domain name does not render the disputed domain name distinct under Policy ¶ 4(a)(i), because such removal simply takes advantage of common typographical errors committed by Internet users. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> was confusingly similar to the 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 the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has established a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to respond to the Complaint allows the Panel to conclude that Respondent lacks rights and legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). However, the Panel will examine the record to determine if Respondent does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent’s <wwwthehardwarehut.com>
domain name resolves to a website
featuring links to Complainant’s competitors and various pop-up
advertisements. Respondent presumably
receives referral fees from advertisers listed on Respondent’s website. Thus, the Panel finds that Respondent’s use
of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii) because the registrant presumably receives compensation for each
misdirected Internet user); see also Wells
Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (holding that the respondent’s use of
“confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring pop-up advertisements” was not a bona
fide offering of goods or services); see
also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains
For
There is no evidence in the record, including the WHOIS domain
name registration information, to conclude that it is commonly known by the <wwwthehardwarehut.com> domain
name. The Panel therefore finds that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Yoga Works, Inc. v. Arpita,
FA 155461 (Nat. Arb. Forum June 17, 2003)
(finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”).
Complainant has asserted
that Respondent engaged in typosquatting by registering the disputed domain
name. Typosquatting occurs when a domain
name is registered with the intent of diverting Internet users by way of common
typographical errors to an unintended website.
Here, Respondent simply removed the period after the “www” prefix. Internet users seeking Complainant would
likely commit such a typing error and thus be redirected to Respondent’s
website. The Panel therefore finds that
Respondent’s engagement in typosquatting constitutes evidence that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
the complainant’s DINERS CLUB mark, was evidence in and of itself that the
respondent lacks rights or legitimate interests in the disputed domain name vis
á vis the complainant); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6,
2003) (“Considering the nonsensical nature of the [<wwwmedline.com>]
domain name and its similarity to Complainant’s registered and distinctive
[MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wwwthehardwarehut.com>
domain name resolves to a website that features links to Complainant’s
competitors, as well as various pop-up advertisements. Respondent presumably receives referral fees
from the advertisers listed on Respondent’s website. Such use of the disputed domain name creates
a likelihood of confusion regarding Complainant’s mark as to the source,
affiliation, and sponsorship of the disputed domain name that resolves to the
corresponding website. Internet users
seeking Complainant would likely find Respondent’s website due to common typing
errors and thus be confronted with links to Complainant’s competitors. The Panel therefore finds that Respondent has
committed bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”).
The Panel finds that Respondent’s engagement in
typosquatting constitutes evidence of bad faith registration and use pursuant
to Policy ¶ (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,” which was evidence that the domain name
was registered and used in bad faith); see
also Nat’l Ass’n of Prof’l Baseball
League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting … is the intentional misspelling of words with [the] 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 <wwwthehardwarehut.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 29, 2008
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