national arbitration forum

 

DECISION

 

Harry and David v. S Pace c/o Pace, SL

Claim Number: FA0908001276989

 

PARTIES

Complainant is Harry and David (“Complainant”), represented by Steven E. Klein, of Stoel River LLP, Oregon, USA.  Respondent is S Pace c/o Pace, SL (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harryandavid.com>, registered with DSTR Acquisition. I, LLC d/b/a 000domains.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2009.

 

On August 3, 2009, DSTR Acquisition. I, LLC d/b/a 000domains.com confirmed by e-mail to the National Arbitration Forum that the <harryandavid.com> domain name is registered with DSTR Acquisition. I, LLC d/b/a 000domains.com and that Respondent is the current registrant of the name.  DSTR Acquisition. I, LLC d/b/a 000domains.com has verified that Respondent is bound by the DSTR Acquisition. I, LLC d/b/a 000domains.com 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 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 postmaster@harryandavid.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 31, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 February 9, 1943).  Complainant markets its fruits, canned goods, bakery items, and other high-quality food products under its HARRY AND DAVID mark. 

 

Respondent registered the <harryandavid.com> domain name on June 12, 2001.  The disputed domain name resolves to a website featuring click-through links that further resolve to the website of Complainant as well as the websites of Complainant’s competitors in the candy, fruit, 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.”

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel is satisfied with Complainant’s showing of rights in the HARRY AND DAVID mark through its history of multiple registrations of the mark with the USPTO as early as February 9, 1943. (Respondent registered the <harryandavid.com> domain name on June 12, 2001.) Thus, the Panel finds that Complainant has established rights in the HARRY AND DAVID mark under Policy ¶ 4(a)(i).  See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). 

 

Complainant contends 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 Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

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, 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.”).  Respondent has failed to respond to the allegations against it.  Thus, the Panel may presume that Respondent lacks rights and legitimate interests in the <harryandavid.com> domain name.  See 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).”).  However, the Panel will still examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). 

 

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 May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute 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 also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark). 

 

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 Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).  

 

Moreover, Respondent’s use of the <harryandavid.com> domain name constitutes typosquatting because Respondent merely omitted the letter “d” from the word “AND.”  The Panel finds that Respondent is taking advantage of a common misspelling of Complainant’s HARRY AND DAVID mark to redirect Internet users seeking Complainant’s website to Respondent’s disputed domain name.  Thus, the Panel concludes that Respondent’s engagement in the practice of typosquatting fails to establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See 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 this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”). 

 

Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

The confusingly similar disputed domain name, registered on June 12, 2001, features sponsored links that further resolve to the websites of Complainant’s competitors in the gourmet gift services industry.  The Panel presumes that this diversion of Internet users to the websites of Complainant’s competitors likely results in a disruption to Complainant’s business.  Therefore, the Panel finds that Respondent’s <harryandavid.com> domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

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 June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

PURPOTED RESPONSE

On August 24, 2009 Respondent offered to “hand over the domain name at cost.”   Since no hard copy was ever received the Purported Response failed to meet the requirement of ICANN Rule # 5(a) and hence is not deserving of being to be considered.  However,

notwithstanding the aforesaid, in the interests of  justice and equity, this panel will take it into consideration and finds that the Complaint requested the transfer of the domain name.  Although the Respondent subsequently offered to transfer it, the Complainant has not accepted to the offer, hence the Respondent’s application must be denied.

 

 

DECISION

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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