BuySeasons, Inc v. Domain Administrator
Claim Number: FA0906001271227
Complainant is BuySeasons,
Inc (“Complainant”), represented by
CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buycoustumes.com>, registered with Moniker Online Services, 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 June 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 1, 2009.
On June 30, 2009, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <buycoustumes.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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 postmaster@buycoustumes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2009, 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 the leading online retailer of seasonal costumes, wigs, and accessories.
Complainant is the owner of the BUYCOSTUMES.COM trademark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,793,599, issued December 16, 2003, having been filed March 5, 2001).
Complainant has continuously used the BUYCOSTUMES.COM mark since 1999 in connection with its online costume and party services.
Respondent registered the <buycoustumes.com> domain name on October 17, 2001.
The disputed domain name resolves to a website hosting paid advertisement links for businesses that are in direct competition with the business of Complainant.
Respondent’s <buycoustumes.com> domain name is confusingly similar to Complainant’s BUYCOSTUMES.COM mark.
Respondent is not commonly known by the <buycoustumes.com> domain name.
Respondent does not have any rights to or legitimate interests in the domain name <buycoustumes.com>.
Respondent registered and uses the <buycoustumes.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 to 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 a 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.
The relevant date from which to determine the acquisition of rights with respect to a registered trademark under Policy ¶ 4(a)(i) is the filing date of the application for federal registration. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003): “As Complainant's filing date for its valid registration of the NAF NATIONAL ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and Trademark Office predates Respondent's registration of the disputed domain name by over a year, this registration is additional evidence of Complainant's rights in the mark.” See also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003):
As
Complainant’s trademark application was subsequently approved by the U.S.
Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark
for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing
date.
Here, Complainant’s filing date of March 5, 2001 for its
application for registration of its BUYCOSTUMES.COM mark, which subsequently was
registered with the USTPO, predates Respondent’s registration date of October
17, 2001 for the domain name <buycoustumes.com>. Therefore, Complainant has sufficiently
established rights in the BUYCOSTUMES.COM mark for purposes of Policy ¶
4(a)(i). See also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).” further see
Complainant contends that Respondent’s <buycoustumes.com> domain name is confusingly similar to Complainant’s BUYCOSTUMES.COM mark under Policy ¶ 4(a)(i). The disputed domain name contains the distinctive portion of Complainant’s mark with the mere addition of the letter “u” in the word “COSTUMES” and the affixation of the generic top-level domain (“gTLD”) “.com.” The addition of an extra letter, slightly misspelling Complainant’s BUYCOSTUMES.COM mark, does not remove the domain from the realm of confusing similarity vis-à-vis the competing mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).
Additionally, the affixation of a gTLD is irrelevant under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
Therefore, the Panel finds that Respondent’s <buycoustumes.com> domain name is confusingly similar to Complainant’s BUYCOSTUMES.COM trademark pursuant to Policy ¶ 4(a)(i).
At the outset, Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name. The burden then shifts to Respondent to establish that it indeed has such rights or legitimate interests in the disputed 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.
Complainant has sufficiently made out its prima facie showing under Policy ¶ 4(a)(ii), while Respondent has failed to respond to the allegations against it. Given this failure, we may presume that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
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).
Nevertheless, we will examine the record before us to determine whether there is any basis for concluding that Respondent possesses any rights or legitimate interests in the disputed domain name under the criteria set out in Policy ¶ 4(c).
We begin by noting that there is no dispute as to Complainant’s allegation to the effect that Respondent’s <buycoustumes.com> domain name resolves to a website displaying click-through advertisement links that further resolve to the websites of Complainant’s competitors in the costume business. We may presume from the circumstances presented that Respondent generates revenue from such use through the receipt of click-through fees. From this we conclude that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links to the websites of that complainant’s competitors was not a bona fide offering of goods or services); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using a domain name identical or confusingly similar to a competing mark to generate click-through fees via links to a complainant’s competitors does not represent 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)).
We next observe that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <buycoustumes.com> domain name. Moreover, the pertinent WHOIS information identifies the registrant as “Domain Administrator.” We conclude, therefore, that Respondent is not commonly known by the <buycoustumes.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights or legitimate interests in a disputed domain where there was no evidence in the record indicating that that respondent was commonly known by that domain name).
Finally under this
heading, we take note of the fact that Respondent is evidently taking advantage
of a common misspelling of Complainant’s BUYCOSTUMES.COM mark to divert Internet users to its resolving web
site. This practice, commonly referred to as typo-squatting, is itself evidence
that Respondent lacks rights to and legitimate interests in the <buycoustumes.com>
domain name under Policy ¶
4(a)(ii). See Microsoft Corp. v. Domain Registration
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We have already determined that Respondent’s <buycoustumes.com> domain name resolves to a website displaying links to third-party websites which compete with the business of Complainant. Respondent’s use of these links to divert Internet users to the websites of Complainant’s competitors disrupts Complainant’s business and thus constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(iii) by using the disputed domains to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that, where a respondent’s website featured hyperlinks to competing websites, that respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
In addition, we conclude from the record that Respondent’s
use of the disputed domain name to host advertisements for Complainant’s business
competitors for Respondent’s profit creates a likelihood of confusion as to the
possibility of Complainant’s sponsorship or affiliation with the disputed
domain name and its corresponding website.
Thus we conclude that Respondent has engaged in bad faith registration
and use of the <buycoustumes.com> domain name under Policy ¶
4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own commercial
gain is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv).
See also T-Mobile USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet traffic
to a commercial “links page” in order to profit from click-through fees or
other revenue sources constitutes bad faith registration and use of the domain under
Policy ¶ 4(b)(iv)).
Finally, we take
account of the fact that Respondent is engaged in typo-squatting by taking
advantage of a common misspelling of Complainant’s BUYCOSTUMES.COM mark to diverting Internet users to the disputed
domain name’s resolving website. Typo-squatting
is itself evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii). See Canadian
Tire Corp. v. domain adm’r, D2003-0232 (WIPO May 22, 2003) (finding
that a respondent registered and used a domain name in bad faith because that
respondent “created ‘a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the Respondent’s web
site or location’. . . through Respondent’s persistent practice of
‘typosquatting’”); see also Microsoft Corp. v. Domain Registration
Philippines, FA
877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use
of the <microssoft.com> domain name where it misspelled a complainant’s
MICROSOFT mark).
The Panel thus 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 <buycoustumes.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 7, 2009
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