CafePress.com, Inc. v. none a/k/a Hastings, T.
Claim Number: FA0810001231864
Complainant is CafePress.com, Inc., represented by Daniel Pontes,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cafepressproducts.com>, registered with Tucows 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2008.
On October 31, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <cafepressproducts.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 November 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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@cafepressproducts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <cafepressproducts.com> domain name is confusingly similar to Complainant’s CAFEPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <cafepressproducts.com> domain name.
3. Respondent registered and used the <cafepressproducts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CafePress.com, Inc., operates a widely recognized Internet service which enables individuals, organizations and businesses to create, buy and sell customized merchandise online. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CAFEPRESS mark (i.e. Reg. No. 2,935,560 issued March 22, 2005).
Respondent registered the <cafepressproducts.com> domain name on July 8, 2008. Respondent’s disputed domain name resolves to a website displaying links to third-party websites in competition with Complainant.
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.
The Panel finds that Complainant has established rights in
the CAFEPRESS mark for the purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
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.”); see also 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.”).
Complainant argues that Respondent’s <cafepressproducts.com> domain name is confusingly
similar to Complainant’s CAFEPRESS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s CAFEPRESS mark in its entirety, adds the generic term “products,”
and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a disputed domain name
that contains a complainant’s established mark, and adds a generic and
descriptive term creates a confusing similarity between the disputed domain
name and the mark. See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <cafepressproducts.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also 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).”).
Complainant contends that Respondent is not commonly known
by the <cafepressproducts.com>
domain name nor has it ever been the owner or licensee of the CAFEPRESS mark.
The WHOIS record for the disputed domain name lists Respondent as “Hastings, T.”
Because of this evidence, along with the fact that Respondent has failed
to show any evidence contrary to Complainant’s contentions, the Panel finds
that Respondent is not commonly known as <cafepressproducts.com>
pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
Respondent’s disputed
domain name resolves to a website displaying third-party links to websites
offering products in competition with Complainant. The Panel finds that such use of a disputed
domain name is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use pursuant to 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 Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding
that the respondent's “use of the domain name (and Complainant’s mark)
to sell products in competition with Complainant demonstrates neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name in order to intentionally attract
Internet users to its website by causing a likelihood of confusion and offering
third-party links to competing websites is evidence of bad faith registration
and use. The Panel infers that
Respondent receives click-through fees for diverting Internet users to such
websites. Therefore, pursuant to Policy
¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes
bad faith registration and use. See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”).
In addition, Respondent’s use of
the disputed domain name to compete with Complainant is further evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds that such competing actions
are targeted to disrupt the business of Complainant and constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See
Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding
that the respondent registered a domain name primarily to disrupt its
competitor when it sold similar goods as those offered by the complainant and
“even included Complainant's personal name on the website, leaving Internet
users with the assumption that it was Complainant's business they were doing
business with”); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <cafepressproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 17, 2008
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