Allen-Edmonds Shoe Corp. v. Allen Edmond
Claim Number: FA0807001214245
Complainant is Allen-Edmonds Shoe Corp. (“Complainant”), represented by Kristi
J. Hinner, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenedmond.com>, registered with Register.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2008.
On July 8, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <allenedmond.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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").
10, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 30, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a manufacturer of men’s footwear, belts, and footwear-related accessories.
Complainant has conducted its business since the 1920’s, and currently maintains sales and manufacturing operations worldwide.
Complainant operates under the ALLEN EDMONDS mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 822,911, issued January 24, 1967).
Complainant has not licensed or permitted Respondent to use its mark in any fashion.
Respondent registered the <allenedmond.com> domain name on November 10, 1999, and is using the disputed domain name to divert Internet users to a website that features hyperlinks for Complainant’s business competitors.
Respondent’s <allenedmond.com> domain name is confusingly similar to Complainant’s ALLEN EDMONDS mark.
Respondent does not have any rights to or legitimate interests in the domain name <allenedmond.com>.
Respondent registered and uses the <allenedmond.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the ALLEN EDMONDS mark with the USPTO confers on it sufficient rights in the mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant established rights in the GOOGLE mark through its holding of trademark registrations around the world); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that complainants established rights in marks because the marks were registered with a trademark authority).
Respondent’s <allenedmond.com> domain name includes Complainant’s ALLEN EDMONDS mark, with the exception of the letter “s” and the addition of the generic top-level domain “.com.” The omission of a letter from a mark, presumably to target the typographical errors of Internet users who inadvertently omit the letter from their Internet search, does not distinguish the competing mark from the disputed domain name. See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to a complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark). Moreover, the addition of a top-level domain is wholly irrelevant under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant has made out a prima facie case supporting this allegation, Respondent must provide evidence proving its rights or legitimate interests. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
See also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007): “Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”
We are satisfied that Complainant has met its threshold burden. Accordingly, the burden is shifted to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. Because Respondent has failed to reply to the Complaint, we are free to presume that Respondent lacks rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.
We will nonetheless examine the record in light of the considerations enumerated in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has such rights or interests.
We begin by observing that while the pertinent WHOIS
information lists Respondent as “Allen Edmond,” there is nothing in the record that
corroborates this listing. Moreover, Respondent
does not dispute the allegation that Complainant has not licensed or permitted
Respondent to use its mark in any fashion.
Therefore, we conclude that Respondent lacks rights and legitimate
interests under Policy ¶ 4(c)(ii).
We also note that Respondent does not deny the assertion that its disputed domain name resolves to a website that features links to Complainant’s business competitors, for which Respondent presumably receives referral fees. This arrangement does not constitute either 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Moreover, Respondent’s <allenedmond.com> domain name alters Complainant’s mark solely merely by omitting the letter “s.” This practice is known as “typosquatting,” wherein a registrant attempts to capitalize on common spelling errors made by Internet users to capture traffic not intended for it. That Respondent uses the disputed domain name for a commercial purpose strengthens a finding of typo-squatting and leads to the conclusion that Respondent lacks rights to and legitimate interests under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in 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’”); see also 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 that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain name is confusingly similar to Complainant’s mark. It is apparent that Respondent intended to create confusion as between Complainant’s mark and the disputed domain name for commercial gain, given the presence of commercial links on the corresponding website. Therefore we conclude that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent was diverting Internet users searching for a complainant to its own website, likely profiting from the diversion); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using a domain that was confusingly similar to a complainant’s mark to offer links to third-party websites that featuring services similar to those offered by that complainant).
The Panel also finds that Respondent’s typo-squatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006):
Respondent misspells the Mark with intent to intercept internet users from Complainant’s web site, given the fact that Complainant’s website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad faith.
See also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <allenedmond.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 14, 2008
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