Babe Ease, LLC v.
Claim Number: FA0904001255595
Complainant is Babe Ease, LLC (“Complainant”), represented by James
F. Laboe, of Orr & Reno, P.A., New Hampshire,
USA. Respondent is Texas
International Property Associates- NA NA (“Respondent”), represented by JanPaul
Guzman, of Rothstein Rosenfeldt Adler,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cleanshoper.com>, registered with Compana, 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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 7, 2009.
On April 3, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <cleanshoper.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, 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 April 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2009 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.
A timely Response was received and determined to be complete on May 4, 2009.
On 7 May, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the CLEAN SHOPPER mark (Reg. No. 2,455,214 issued May 21, 2001). Complainant has continuously used the CLEAN SHOPPER mark in interstate commerce since August 19, 1999. CLEAN SHOPPER is registered in international class 20 for quilted slip covers designed to cover grocery/shopping carts for the purpose of protecting babies and toddlers from metal and germs.
According to Complainant Respondent’s <cleanshoper.com> domain
name is confusingly similar to Complainant’s CLEAN SHOPPER mark. Complainant is
engaged in the sales of the quilted slip covers and related goods primarily
through telephone and electronic commerce throughout the
Based on the above, the Complainant has rights in the mark CLEAN SHOPPER through its registration of the mark at the USPTO which have become incontestable. Thus, Complainant has established rights in the subject mark pursuant to Policy ¶ 4(a)(i).
The domain name <cleanshoper.com> is confusingly similar to Complainant’s mark, CLEAN SHOPPER. Respondent’s domain name contains a slight misspelling of Complainant’s mark. However, this slight misspelling is not enough to make the disputed domain name distinctive. It is well-settled that a domain name comprised of an intentionally misspelled derivative of a trademark is confusingly similar.
As a result the disputed domain name is confusingly similar to Complainant’s mark and, therefore, Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
Furthermore Respondent has no rights or legitimate interests in respect to the domain name <cleanshoper.com>. The disputed domain name displays a series of hyperlinks to websites that offer products and services from Complainant’s competitors. Respondent presumably receives click-through fees for each redirected Internet user. Respondent’s unauthorized use of Complainant’s CLEAN SHOPPER mark in the above disputed domain name in an attempt to commercially benefit from advertising the products and services of Complainant and its competitors does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(C)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(C)(iii).
Based on the above, the Respondent has no rights or legitimate interests in respect to the domain name <cleanshoper.com> and, therefore, Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
Finally Respondent is using the <cleanshoper.com> domain name to display a series of hyperlinks that advertise competitors’ products and services. This is likely to disrupt Complainant’s business by diverting potential customer sales to Complainant’s competitors. Respondent is a notorious “cyber-squatter” and “typo-squatter.” From April 2, 2007 to June 5, 2008, the Respondent has lost seventy-three (73) UDRP complaints at the NAF. In the majority of the cases Respondent typo-squatted the domain names to be misspellings of another’s mark. This pattern of conduct amounts to bad faith.
According to Complainant Respondent’s use and registration of the disputed domain name to operate a website that offers links to Complainant’s competitors is yet another link in a long chain of bad faith registrations as defined by Policy ¶ 4(b)(iii) and interpreted by the NAF.
Based on the above, the Respondent has registered the domain name <cleanshoper.com> in bad faith and, therefore, Complainant has satisfied the requirements of Paragraph 4(a)(iii) of the Policy.
In its Response Respondent stated amongst others the following:
“Respondent herein agrees to the relief requested by the Complainant and will, upon order of the Panel, transfer the domain name at issue <cleanshoper.com>.
For the foregoing reasons, Respondent requests that the Panel order the immediate transfer of the disputed domain names.”
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <cleanshoper.com> domain name to Complainant. However, after the initiation of this proceeding, Compana LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel is of the view that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <cleanshoper.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). Thus, the Panel decides to honor Respondent’s request and to issue a decision ordering the immediate transfer of the <cleanshoper.com> domain name to Complainant.
Having established and determined that the requests of the parties in this case are identical, in that the Respondent does not contest Complainant’s remedy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cleanshoper.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: May 20, 2009
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