Linda S. Potter v. Flanagan a/k/a Stephanie Flanagan
Claim Number: FA0801001139692
Complainant is Linda S. Potter (“Complainant”), represented by Maureen
Beacom Gorman of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stayinghomeandlovingit.com>, registered with Godaddy.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 electronically January 22, 2008; the National Arbitration Forum received a hard copy of the Complaint January 25, 2008.
On January 23, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <stayinghomeandlovingit.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 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@stayinghomeandlovingit.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <stayinghomeandlovingit.com>, is confusingly similar to Complainant’s STAYIN HOME AND LOVIN IT! mark.
2. Respondent has no rights to or legitimate interests in the <stayinghomeandlovingit.com> domain name.
3. Respondent registered and used the <stayinghomeandlovingit.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Possible Business Dispute Outside the Scope of the UDRP
Complainant’s submission permits the inference that Respondent registered the <stayinghomeandlovingit.com> domain name while a member of Complainant’s marketing team but without Complainant’s knowledge. Complainant did not hold a registration with the United States Patent and Trademark Office (“USPTO”) at that time. After Complainant and Respondent terminated their relationship, Complainant directed Respondent to cease using the STAYIN HOME AND LOVIN IT! mark within 60-90 days; however, Respondent continued to use the mark and to operate the disputed domain name. The website that currently resolves from the disputed domain name advertises services that seek to compete with Complainant’s business. While such factors may provide grounds for a business dispute, nothing in such a dispute would prevent this Panel from exercising jurisdiction to decide the issues in this UDRP dispute.
Complainant, Linda S. Potter, provides business development services, specifically proving start-up support for home businesses. Complainant filed for registration of the mark on May 30, 2003, and registered the STAYIN HOME AND LOVIN IT! mark with the United States Patent and Trademark Office (“USPTO”) December 28, 2004 (Reg. No. 2,914,203). Complainant first used the mark in commerce as early as August 31, 2000.
Complainant also markets services at the <stayinhomeandlovinit.com> domain name.
Respondent registered the disputed <stayinghomeandlovingit.com> domain name January 2, 2003. Respondent is using the disputed domain name to advertise services that seek to compete with Complainant’s business.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 did not file for trademark registration until
after Respondent’s January 2, 2003, registration of the <stayinghomeandlovingit.com> domain
name. Complainant, however, is not
required to have a trademark registration to establish rights to the STAYIN
HOME AND LOVIN IT! mark under Policy ¶ 4(a)(i). See
SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist); see also
Complainant is required under Policy ¶ 4(a)(i) to have
rights as of the filing of the Complaint and, while the evidence is minimal,
the Panel finds not only that Complainant did have rights dating back to May
30, 2003, and even to August 2000. Minimal
evidence is acceptable in this case because the Panel finds that Respondent
actually knew of Complainant’s use and intent to use the mark at the time the
disputed domain name was registered. Complainant
asserted that first use of the mark occurred in August 2000. Although it is unclear whether Complainant
has established secondary meaning in the mark for purposes of common law,
according to the USPTO registration information, Complainant submitted an
affidavit alleging that first use of the STAYIN HOME AND LOVIN IT! mark was in August 2000. Therefore, the Panel finds that Complainant
established ongoing use of the mark pursuant to Policy ¶ 4(a)(i)
as early as August 2000, based on the information submitted to the USPTO. See Goepfert v.
Respondent’s disputed domain name, <stayinghomeandlovingit.com>, is confusingly similar to Complainant’s STAYIN HOME AND LOVIN IT! mark because it incorporates the entire mark, making only slight changes to spelling and punctuation. Complainant’s mark uses the colloquial form of the gerund, shortening both “staying” and “loving” by removing the final “g” in the “ing” ending. Respondent has added the final “g” to both of those terms. In Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002), the panel found that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark. Here, the disputed domain name misspells Complainant’s mark, using an alternative spelling of two terms in the mark, and as a result evidences typoquatting and confusing similarity. Furthermore, Respondent has removed the exclamation mark and the spaces from Complainant’s mark. But neither punctuation nor spaces can be included in a registered domain name, and therefore do not distinguish the disputed domain name in the Panel’s analysis of confusing similarity. Finally, all registered domain names are required to have a top-level domain; therefore, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from Complainant’s mark. Thus, the Panel finds that the <stayinghomeandlovingit.com> domain name is confusingly similar to Complainant’s STAYIN HOME AND LOVIN IT! mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii) Complainant has the initial burden of making a prima facie case, establishing that Respondent does not have rights to or legitimate interests in the disputed domain name. Complainant asserted that Respondent lacks rights and legitimate interests. In G.D. Searle v. Martin Marketing, FA 118277 (Nat. Arb. Forum Oct. 1, 2002), the panel held that “[b]ecause 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).” Therefore, the Panel finds that Complainant made a prima facie case under Policy ¶ 4(a)(ii), shifting the burden to Respondent to show rights to or legitimate interests in the <stayinghomeandlovingit.com> domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent has not responded to the Complaint. This allows the Panel to presume that Respondent has no rights or legitimate interests in the <stayinghomeandlovingit.com> domain name. The panel in Eroski, Southern Cooperative v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) stated that “[i]t can be inferred that by defaulting Respondent showed … an absolute lack of interest on the domain name.” Nevertheless, this Panel examines all evidence in the record to determine if the proof suggests that Respondent has rights or legitimate interests under Policy ¶ 4(c) despite its failure to respond. See Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL”).
Complainant contends that Respondent was previously a member of Complainant’s marketing team with limited permission to use the STAYIN HOME AND LOVIN IT! mark at that time. Complainant contends that this permission, however, did not extend to the registration of the <stayinghomeandlovingit.com> domain name without Complainant’s knowledge. Respondent registered the mark while still employed by Complainant. Following Claimant’s December 13, 2006, termination of its business relationship with Respondent, Claimant gave Respondent 60-90 days to cease using Complainant’s mark. Thereafter, Respondent was not authorized or licensed to use Complainant’s mark. Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is using the <stayinghomeandlovingit.com> domain name to advertise competing services to Internet users, benefiting from the goodwill associated with Complainant’s mark. The Panel concludes that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Moreover, Respondent is typosquatting and such conduct permits an inference that Respondent lacks rights and legitimate interests in the disputed domain name. In IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), the panel found that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c.’” This Respondent also lacks rights and legitimate interests under Policy ¶ 4(a)(ii) based on Respondent’s commercial use of the disputed domain name by typosquatting. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is commercially benefiting by advertising
services on the website seek to compete with Complainant. These services resolve from the <stayinghomeandlovingit.com> domain
name. Respondent’s use is capable of
creating confusion as to the source, sponsorship, affiliation, or endorsement
of the website that resolves from the disputed domain name. See Toyota Motor
Sales U.S.A. Inc. v. Clelland, FA 198018
(Nat. Arb. Forum Nov. 10, 2003)
(“Respondent used <land-cruiser.com> to advertise its business, which
sold goods in competition with Complainant. This establishes bad faith as
defined in Policy ¶ 4(b)(iv).”); 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 concludes
that such use is evidence of registration and use in bad faith under Policy ¶
4(b)(iv).
Because Respondent is using the disputed domain name to
advertise competing services, the Panel finds that Respondent registered and
used the domain name in bad faith under Policy ¶ 4(b)(iii). Respondent’s use is capable of disrupting
Complainant’s business. See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5,
2001) (finding that, given the competitive relationship between the complainant
and the respondent, the respondent likely registered the contested domain name
with the intent to disrupt the complainant's business and create user
confusion).
In addition, the disputed domain name is a minor change in spelling and punctuation from Complainant’s mark. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel held that “Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user, is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Here also, the Panel finds that Respondent’s conduct in making a minor change in spelling and punctuation from Complainant’s mark evidences registration and use in bad faith under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Because Respondent was previously a member of Complainant’s
marketing team, Respondent had actual knowledge of Complainant’s rights to the
STAYIN HOME AND LOVIN IT! mark. Respondent’s knowing use of Complainant’s
mark to register and use a domain name containing that mark and that would be
used to compete with the owner of the mark is further evidence of registration
and use in bad faith under Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see
also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17,
2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
The Panel finds that Complainant
satisfied 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 <stayinghomeandlovingit.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 18, 2008.
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