Harry and David v. Lidnick Webcorp, Inc.
Claim Number: FA0908001277355
Complainant is Harry
and David (“Complainant”), represented by Steven E. Klein, of Stoel Rives LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <harrynaddavid.com> and <jarryanddavid.com>, registered with Godaddy.com, 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 August 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 4, 2009.
On August 4, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <harrynaddavid.com> and <jarryanddavid.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 25, 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@harrynaddavid.com and postmaster@jarryanddavid.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 27, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a premier gourmet food and fruits gift purveyor, and operates one of the nation’s oldest mail order companies.
Complainant has used the HARRY AND DAVID trademark in commerce continuously for over 65 years.
Complainant has registered its HARRY AND DAVID trademark numerous times with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 400,009, issued February 9, 1943).
Complainant also owns and operates the <harryanddavid.com> domain name.
Respondent, Lidnick Webcorp, Inc., registered the disputed <harrynaddavid.com> and <jarryanddavid.com> domain names on December 8, 2004.
Respondent does not own any trademarks or operate under any name reflected in either of the disputed domain names.
The disputed domain names resolve to websites that feature click-through commercial links for Complainant’s direct competitors in the food and fruits gift industry.
Respondent’s <harrynaddavid.com> and <jarryanddavid.com> domain names are confusingly similar to Complainant’s HARRY AND DAVID mark.
Respondent does not have any rights to or legitimate interests in the domain names <harrynaddavid.com> and <jarryanddavid.com>.
Respondent registered and uses the <harrynaddavid.com> and <jarryanddavid.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are each confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were each registered and are 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.
Complainant has evidenced its long-standing use of the HARRY AND DAVID mark, as well as its registration of the mark with the USPTO. In UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), a panel found “no difficulty” in holding that a complainant had established rights in its marks for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. Similarly, a panel in SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) held that “trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).” Complainant here has likewise demonstrated sufficient rights in the HARRY AND DAVID mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that the <harrynaddavid.com> and <jarryanddavid.com>
domain names are confusingly similar to Complainant’s HARRY AND DAVID
mark. Indeed, the disputed domain names
each contain the HARRY AND DAVID mark while: (1) removing the spaces in the
mark; (2) adding the generic top-level domain “.com;” and (3) transposing
letters in the word “AND” or substituting the letter “h” in “HARRY” for the
letter “j.” It is commonly held that the
removal of spaces from a mark is an entirely extraneous alteration under the
Policy. For example, a
panel in
[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.
The justification for this declaration of irrelevancy is that such elements are required in all domain names. See also 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.”
With regard to the other changes made to Complainant’s mark in creating the disputed domain name, i.e.: the transposition or substitution of mark letters, by inverting the word “AND” to the nonsensical “nad,” and shifting “HARRY” to the phonetically-similar “jarry,” Respondent has done nothing to overcome the resulting confusing similarity between the disputed domain names and the competing mark. See, e.g., Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a competing trademark has a tendency to be confusingly similar to the trademark where the mark is highly distinctive); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding that the word “quest” and “crest” are phonetically similar, so that the two words may be considered confusingly similar, thus creating confusing similarity between <mapcrest.com> and Complainant’s MAP QUEST mark).
Therefore, the Panel finds that the <harrynaddavid.com> and <jarryanddavid.com> domain names are confusingly similar to Complainant’s HARRY AND DAVID trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and
legitimate interests in the disputed domain names. Complainant must set forth a sufficient prima facie case supporting this
assertion, at which point Respondent acquires the burden of proving its rights
or legitimate interests in the disputed domain names. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make
out a prima facie case that a respondent lacks rights to and legitimate
interests in a disputed domain name under Policy ¶ 4(a)(ii)
before the burden shifts to that respondent to show that it does have such rights
or legitimate interests); see also Swedish
Match UK Ltd. v. Admin, Domain,
FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that, once a prima
facie case has been established by a complainant under Policy ¶ 4(c), the
burden shifts to a respondent to demonstrate its rights or legitimate interests
in a disputed domain name).
From our examination of the Complaint, we are satisfied that
Complainant has set out a sufficient prima
facie case. Therefore, the burden of
proving rights or interests in the contested domain names now lies with
Respondent, who, for its part, has failed to respond to the allegations of the
Complaint. We are therefore free to presume that Respondent lacks any rights to
or legitimate interests in the disputed domain names sufficient to satisfy the
requirements of the Policy. See Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
We will nonetheless
examine the record to determine if there is any basis for concluding that
Respondent has rights or interests in its domain names adequate to meet the
standards of the Policy.
We begin by observing that Complainant contends that Respondent does not own any trademarks or operate under any name reflected in the disputed domain names. We also observe that the pertinent WHOIS information lists Respondent as “Lidnick Webcorp, Inc.,” which bears no resemblance to the disputed domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply). We therefore conclude that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003): “Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.” See also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not commonly known by the domain in issue).
Complainant also argues that the disputed domain names resolve to websites that display links and advertisements for numerous third parties. Some of these links lead Internet users seeking Complainant to Complainant’s competitors in the gift industry. Respondent does not deny these allegations. We may presume from the undenied facts that Respondent’s use of click-through links is commercial in nature; i.e.: that Respondent is paid referral fees for Internet users who follow those links. Previous panels have found that such a use of a challenged domain fails to qualify as a bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See, e.g., ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain to operate a website containing links to commercial websites operating in competition with the business of a complainant, which the panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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 names 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).
Therefore, we conclude that Respondent lacks rights to and legitimate interests in either of the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
We further note that there is no dispute as to Complainant’s
allegation to the effect that the disputed <harrynaddavid.com> and <jarryanddavid.com>
domain names misspell various elements in the HARRY AND DAVID mark. The practice of registering domain names that
reflect deliberate employment of common typographical errors of Internet users
is known as “typosquatting.” Such appears
to be the case here, as Internet users who inadvertently strike the key for the
letter “j,” which is adjacent to the letter “h”—or those who misspell “and”—will
be routed to the websites resolving from the disputed domain names. This practice is evidence that Respondent
lacks rights to and legitimate interests in either of the domains under Policy
¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and
legitimate interests in disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”); see also Microsoft Corp. v. Domain Registration
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s domain names resolve to
websites that display links to and advertisements for Complainant’s business competitors. The inherent disruption that such an activity
inflicts upon Complainant’s business is clear, as Internet users will be
diverted away from doing business with Complainant. With respect to registration, the Panel finds
that the stark resemblance between the confusingly similar disputed domain
names and Complainant’s mark indicates that Respondent harbored the intent to
disrupt Complainant’s business at the point of domain name registration in each
instance here under scrutiny. Therefore,
we conclude that Respondent has engaged in bad faith registration and use of
the disputed domains under Policy ¶ 4(b)(iii). See David Hall Rare Coins v.
The presumably commercial nature of the display of
click-through links as alleged in the Complaint is evident from the undenied
evidence before us. From the facts
alleged, it is also evident that Respondent‘s conduct creates a strong
likelihood of confusion among Internet users as to the possibility of Complainant’s
endorsement of the disputed domain names and the resolving websites, for
Respondent’s commercial gain. Therefore,
we conclude that Respondent has registered and uses both of the disputed domain
names in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi,
FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent
engaged in bad faith registration and use of a domain name by using that domain
name that was confusingly similar to a complainant’s mark to offer links to
third-party websites which offered services similar to those offered by that
complainant); see also Asbury Auto. Group, Inc. v.
Finally under this head, we have already concluded that Respondent
has engaged in illicit typo-squatting, which is itself proof of bad faith
registration and use of the contested domain under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains
to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of a complainant's DERMALOGICA
mark, which indicated typosquatting and bad faith pursuant to Policy 4 ¶
(a)(iii)); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005)
(finding that a respondent’s registration and use of the <nextell.com>
domain name was in bad faith because the domain name epitomized typosquatting
in its purest form).
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 <harrynaddavid.com> and <jarryanddavid.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 10, 2009
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