Harry and David v. S Pace c/o Pace, SL
Claim Number: FA0908001276989
Complainant is Harry
and David (“Complainant”), represented by Steven E. Klein, of Stoel River LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harryandavid.com>, registered with DSTR Acquisition. I, LLC d/b/a 000domains.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 26, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <harryandavid.com> domain name is confusingly similar to Complainant’s HARRY AND DAVID mark.
2. Respondent does not have any rights or legitimate interests in the <harryandavid.com> domain name.
3. Respondent registered and used the <harryandavid.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Harry and David, is a premier supplier of
gourmet food that is available through one of the nation’s oldest mail-order
catalogs. Complainant is the owner of
multiple registrations of the HARRY AND DAVID mark with the United States
Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 400,009 issued
Respondent registered the <harryandavid.com>
domain name on
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 is satisfied with Complainant’s showing of rights
in the HARRY
that Respondent’s <harryandavid.com> domain name is
confusingly similar to its HARRY AND DAVID mark pursuant to Policy ¶ 4(a)(i). The disputed
domain name contains the distinctive portions of Complainant’s HARRY AND DAVID
mark, with the only modifications being the deletion of the letter “d” and the
affixation of the generic top-level domain “.com.” The Panel finds that none of these
alterations to Complainant’s mark sufficiently distinguishes the disputed
domain name from the HARRY AND DAVID mark. Therefore, the Panel finds
that the <harryandavid.com> domain name is confusingly similar to
Complainant’s HARRY AND DAVID mark under Policy ¶ 4(a)(i). See
Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii),
Complainant must first make a prima facie showing that Respondent lacks
rights and legitimate interests in the disputed domain name. Upon
satisfaction of such a showing, the burden then shifts to Respondent and
Respondent must establish that it has rights or legitimate interests in the
disputed domain name. The Panel finds that Complainant has sufficiently
made its prima facie showing under Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
Respondent’s <harryandavid.com> domain name resolves to a website featuring sponsored links that further resolve to Complainant’s website and the websites of Complainant’s competitors in the gourmet food and gift industry. Some of the sponsored links that appear on the disputed domain name’s resolving website include: “Gourmet Gift Baskets,” “Food & Wine Gift Baskets,” and “RedEnvelope Gourmet Gifts.”
Moreover, the Panel
presumes that Respondent is generating revenue based on click-through fees for
each Internet user that clicks on the sponsored links. Therefore, the Panel finds that Respondent is
not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate
noncommercial or fair use under Policy ¶¶ 4(c)(i) or
(iii), respectively. See Skyhawke Techns., LLC v.
Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum
Furthermore, Complainant asserts that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The pertinent WHOIS information identifies
the registrant as “S Pace c/o Pace, SL” and there is no other information in
the record to suggest that Respondent is otherwise commonly known by the <harryandavid.com>
domain name. Therefore, the Panel
concludes that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Moreover, Respondent’s use of the <harryandavid.com>
domain name constitutes typosquatting because Respondent merely omitted the
letter “d” from the word “
Complainant has satisfied Policy ¶ 4(a)(ii).
The confusingly similar disputed domain name, registered on
Furthermore, Respondent is likely profiting from this diversion scheme. The Panel presumes that Respondent is receiving click-through fees each time an Internet user clicks on the sponsored links featured at the <harryandavid.com> domain name’s resolving website. It is likely that Internet users would be confused as to Complainant’s sponsorship or affiliation with the disputed domain name. Thus, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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 under Policy ¶ 4(b)(iv)).
Furthermore, Respondent has engaged in typosquatting through
its use of the <harryandavid.com> domain name, which incorporates
a common misspelling of Complainant’s HARRY AND DAVID mark. Therefore,
the Panel finds that Respondent’s use of the disputed domain name constitutes
bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
See The Vanguard Group, Inc. v. IQ
Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in
typosquatting, [r]espondent has registered and used the <vangard.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harryandavid.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 14, 2009
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