Cabela's, Inc. v. Pioneer Enterprises Limited c/o Pioneer Enterprises
Claim Number: FA0908001278786
Complainant is Cabela's, Inc. of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cablelas.com>, registered with Enom, 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On August 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 2, 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 email@example.com by e-mail.
On September 1, 2009 a Response was received in electronic format only.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant claims to carry on business as a retailer of “outdoor” products and claims to be the largest Internet based retailer of such goods in the world. The company claims to produce nearly 100 different catalogs per year, including specialty books focusing on such outdoor pursuits as archery, fly-fishing and boating. According to Complainant its catalogs are shipped to125 countries across the world.
Complainant has submitted evidence of its ownership of the federal trademark and service mark registrations listed below. Complainant claims to have continuously used its CABELA’S trademark in connection with retail store services since 1961, and since 1998 for on-line retail store services. Complainant claims to have spent hundreds of thousands of dollars in advertisement and promotion of its registered trademarks and service marks in media and on the Internet.
Complainant states that a significant portion of Complainant’s retail sales are now conducted online through its website established at the <www.cabelas.com> address. Complainant states that its web site went live in 1998 and has been well received. Complainant states that the site features continuously updated content site, community pages, company information and much more. Complainant claims that in 2006, Complainant's web site was ranked No. 1 in the outdoor retailer industry.
For the purposes of this Complaint, Complainant relies on its rights in its federal trademark registrations and at common law. See, e.g., United Way of America v. Alex Zingaus, FA 1036202 (Nat. Arb. Forum Aug. 30, 2007) ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i)"). Complainant further relies on its rights at common law in the goodwill established through its use and promotion of its CABELA’S trademarks and service marks.
Complainant submits that the disputed domain name is confusingly similar to Complainant's marks. Complainant submits that when deciding the question of identity or confusing similarity this Panel should consider only the second-level portion of the disputed domain name. Citing Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); and Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003 ("[t]he 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.")
Complainant submits that the disputed domain name differs from its CABELA’S trademark only:
i. by the addition of one extra character, or,
ii. by the removal of one character, or,
iii. because one character which is incorrect, or,
iv. there are two juxtaposed characters as compared to Complainant's marks.
Complainant argues that the disputed domain name is a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the name must be confusingly similar by design. Citing Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 31, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, FA 661437 (Nat. Arb. Forum May 2, 2006) ("the omission of a single letter from Complainant's mark does not adequately distinguish the disputed domain name from the mark"); and Victoria's Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum November 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks).
Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
i. Complainant argues that Respondent has not been commonly known by the disputed domain name, referring to Policy ¶ 4(c)(ii) and to the Whois record for the disputed domain name that has been furnished as an annex to the Complaint;
ii. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
iii. Complainant asserts that it has not given Respondent permission to use Complainant's marks in a domain name.
submits that Respondent is using the disputed domain name to redirect
unsuspecting Internet users to a website featuring generic links to third-party
websites, some of which directly compete with Complainant's business.
Complainant argues that it may be presumed that Respondent receives
pay-per-click fees from these linked websites. Complainant submits that it
follows that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services
as allowed under Policy ¶ 4(c)(i), nor is Respondent
making a legitimate noncommercial or fair use of the domain name as allowed
under Policy ¶ 4(c)(iii). Citing 24 Hour
Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
In support of these arguments Complainant has furnished screenshots of the website to which the disputed domain name resolves in an annex to the Complaint.
refers to the WHOIS data for the disputed domain name and argues that the
earliest date on which Respondent registered the disputed domain name was
further argues that the earliest date on which Respondent registered the disputed
domain name was
The Complainant submits that the domain name at issue was registered and is being used in bad faith for the following reasons:
i. Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding.
ii. Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. Citing Canadian Tire Corp. v. domain adm'r firstname.lastname@example.org 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the 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'"); and Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").
iii. Respondent holds registrations on other domain names that appear to be straightforward examples of typosquatting. Although those names are not directly involved in this complaint, they serve as further evidence of bad faith intent on the part of Respondent. See Policy ¶ 4(b)(ii). Citing Time Warner Inc. v. Zone MP3, FA 1008035 (Nat. Arb. Forum June 25, 2007) (typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith). See also Citigroup Inc. v. Digi Real Estate Foundation, FA 964679 (Nat. Arb. Forum May 30, 2007). In an annex to the Complaint, Complainant has furnished evidence of examples of other domain names held by Respondent which it alleges are examples of typosquatting.
iv. Respondent's use of apparently falsified and/or incomplete WHOIS contact information demonstrates a desire to avoid being held accountable, which serves as further evidence of bad faith intent. See, e.g., Time Warner Inc. v. AOLMEMBERS.COM et al., FA 881337 (Nat. Arb. Forum Feb. 13, 2007) ("fictitious or false WHOIS information about both the registrant's name and physical address... raises the presumption of bad faith registration and use"). In this regard Complainant refers to the WHOIS data for the disputed domain name.
v. Complainant refers to screenshots of the website to which the disputed domain name resolves and submits that Respondent has used said website to display content and/or to contain keywords directly related to the Complainants business. Complainant submits that this serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous marks and its related business.
Respondent filed a single line Response by email stating: “We do agree to release the domain to the complainent (sic)”
The domain name at issue, <cablelas.com> was first registered on August 30, 2000 and is owned by Respondent.
Complainant is a corporation with its principal place of business in
Complainant is the owner of a number of
The following trademarks were registered by Complainant prior to the date on which the domain name was first registered:
U.S. federal registration no. 1,151,981 CABELA'S registered on April 21, 1981 in international class 42 for “retail store services and mail order services in supplying sporting and related goods namely clothing, hand tools, firearms, camping, archery and fishing goods, lether (sic) goods, paper goods and glassware, clocks, and food”.
U.S. federal registration no. 2,163,936 CABELA'S (design mark) registered on June 9, 1998 in international classes 16 for “printed matter namely catalogs”, international class 25 for “clothing, namely parkas, coats, jackets, shirts, hats, vests, rainwear and coveralls (regular and camouflage)” and international class 35 for “retail store services and mail order services in supplying sporting and related goods namely, clothing, metal goods, hand tools, firearms, camping, archery and fishing goods, leather goods, paper goods and printed matter, glassware, clocks and foods”.
U.S. federal registration no. 2,116,567 CABELA'S CLUB, registered on November 25, 1997 in international class16 for “newsletters in the fields of travel for hunting and fishing programs, and relating to financial issues, catalogs in the fields of clothing and accessories, sporting goods, and camping equipment, credit cards”; international class 18 in respect of “sportsmen’s hunting bags, hunter’s game bags, duffel bags, overnight bags, travel bags”; international class 21 in respect of “mugs, drinking glasses”; international class 25 in respect of “clothing, namely shirts, jackets, caps, hats, coats; and international class 36 in respect of financial services, namely credit card services”.
Complainant is the registered owner of the following trademarks that were registered subsequent to the date on which the domain name at issue was created:
U.S. federal registration no. 3,130,554 CABELAS, registered on August 15, 2006 in international class 35 for “mail order, retail store services and on-line retail store service, in the field of fishing, hunting and outdoor gear”; and
As Respondent filed only a brief, one line Response, there is no information available about Respondent except for the registration details in the WHOIS database and the information provided in the Complaint.
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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Preliminary Issue - Admissibility of Response
The Response was received in electronic format only and was not in compliance with ICANN Supplemental Rule 5(b) which requires that the Response be submitted in hard copy and in electronic form.
In the particular circumstances of this case, this Panel has decided to admit the Response, notwithstanding that it was not filed in hard copy by the deadline.
Admitting the Response in the circumstances of this particular case does not prejudice Complainant.
The one-line Response appears to be an offer to transfer the <cablelas.com> domain name to Complainant.
According to the record, after the initiation of this proceeding, the registrar, Enom, Inc., placed a hold on Respondent’s account and therefore the domain name cannot be transferred while this proceeding is still pending.
This Panel has decided to proceed to consider the Complaint on its merits and proceed to make a determination under the Policy because:
i. the Complaint has not been withdrawn;
ii. there is no evidence that Complainant has accepted Respondent’s offer;
iii. the offer to transfer the domain name is lacking in detail, relating to such matters as cost, procedure, proposed date for transfer or any other issues that may remain between the Parties;
iv. Respondent failed to accept the opportunity to transfer the domain name to Complainant before the Complaint was filed;
v. on the balance of probabilities this is a case of typosquatting and therefore an instruction to transfer the domain name under the Policy will be more efficient, expeditious and secure method of transfer than an undefined procedure if the Complaint were to be refused.
Complainant has provided evidence that it has rights in the registered trademarks listed above. These include the trademarks CABELAS and CABELA’S (i.e. both with and without the apostrophe) and CABELAS.COM.
notes that the earliest registration of Complainant’s CABELA’S mark was April
21, 1981. Complainant’s ownership of
these registered trademarks is sufficient to establishes its rights in the
CABELA’S, CABELAS and CABELAS.COM marks for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v.
Burkes, FA 652743 (Nat. Arb. Forum
While Complainant has not furnished any direct evidence of its use of its trademarks, this Panel accepts its claims that Complainant is the owner of the domain name <cabelas.com>, that it has continuously used its CABELA’S trademark in connection with retail store services since 1961, and since 1998 for on-line retail store services at the <cabelas.com> address.
The disputed domain name at issue, <cablelas.com>, consists of the letters in Complainant’s CABELA’S mark without the apostrophe, the additional letter “l,” and the generic top-level domain name extension “.com.”
takes the view, generally accepted by panelists that the generic top-level
domain name extension “.com” may be ignored when making a comparison between
the domain name in dispute and the trademark relied upon by a complainant. See
for example Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
In the view of this Panel, the apostrophe in the CABELA’S mark may be ignored when making the comparison because punctuation marks such as apostrophes are not included in domain names. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”).
This Panel finds that the domain name at issue, <cablelas.com> is confusingly similar to each of Complainants CABELA’S, CABELAS and CABELAS.COM trademarks.
In reaching this decision this Panel accepts Complainant’s submission that the additional letter “l” to the mark does not remove the confusing similarity between the mark and the disputed domain name. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Complainant has therefore succeeded in establishing the first element of the test in Policy ¶ 4(a)(i).
It is generally accepted by panelists that once a complainant makes out a prima facie case in support of its allegations, the burden of proof shifts to a respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See for example Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. In particular Complainant argues that the WHOIS data for the disputed domain name shows that Respondent is not commonly known by the disputed domain name; that the disputed domain name is confusingly similar to Complainant’s trademarks and to the Internet domain name <cabelas.com> owned and used by Complainant; that Complainant has not granted any license or permission to Respondent to use the CABELA’S, CABELAS or CABELAS.COM trademarks or the domain name at issue; and that there is no connection between Respondent and Complainant.
This Panel is satisfied from the evidence and submissions in the Complaint and from the WHOIS information that Respondent is not commonly known by the disputed domain name. See for example Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
It would appear that Respondent is using the domain name to resolve to a site that merely contains links to other sites, presumably to generate click through revenue. Such use does not constitute a bona fide offering of goods or services in the circumstances of this case. See for example Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find 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)).
Respondent’s registration and use of the domain name at issue is obviously for commercial purposes and by definition such use cannot be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Furthermore, Complainant has convincingly argued that Respondent has engaged in the practice of typosquatting by registering a domain name designed to take advantage of Internet users’ typographical errors, namely the introduction of an extraneous letter “l.”
On the balance of probabilities Respondent chose and registered the domain name at issue in order to create confusion with Complainant’s mark and Complainant’s <cabelas.com> domain name and take predatory advantage of the goodwill established by Complainant in its marks and website established by Complainant at the <www.cabelas.com> address.
is further evidence Respondent lacks rights or legitimate interests in the disputed
domain name. See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the 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’”); and LTD Commodities
LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum
Complainant has therefore succeeded in establishing the second element of the test in Policy ¶ 4(a)(ii).
This Panel accepts Complainant’s arguments that Respondent has engaged in the practice of typosquatting.
On the evidence Complainant had registered and was using its CABELA’S, CABELAS and CABELAS.COM registered trademarks prior to the registration of the disputed domain name on August 30, 2000.
Complainant claims to have established a significant goodwill through its use of its registered trademarks and in its Internet based business through the < cabelas.com> website by that date.
On the evidence before this Panel and in the absence of any explanation to the contrary from Respondent, this Panel is satisfied on the balance of probabilities that Respondent chose, registered and is using the confusingly similar <cablelas.com> domain name to take predatory advantage Complainant’s goodwill.
This Panel finds that such activity amounts to
registration and use of the disputed domain name in bad faith. See for example Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum
Respondent has not furnished any alternative explanation as to why it chose the domain name.
This Panel notes that Respondent has caused the disputed domain name to resolve to a website displaying links to third-party websites, some of which compete with Complainant, thereby disrupting Complainant’s business. This also allows the Panel to take an inference that the domain name was registered and is being used in bad faith. See for example 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)).
Complainant has suggested that Respondent receives compensation in the form of click-through fees for its use of the confusingly similar disputed domain name. While there is no evidence submitted supporting this assertion, the allegation remains unchallenged by Respondent and in the absence of any other explanation it is the most probable reason why Respondent has established and maintains the website to which the disputed domain name resolves. While maintaining a website to generate click through revenue is not in itself objectionable, taking predatory advantage of Complainant’s reputation and goodwill to misguide Internet users to the Respondent’s website to generate such income amounts to bad faith use of the domain name for the purposes of the Policy.
In an annex to the Complaint, Complainant has furnished evidence of examples of other domain names held by Respondent which it alleges are examples of typosquatting. It should be noted that this Panel has not taken this allegation into account as it is unsupported by any evidence from the alleged victims.
In the circumstances, this Panel finds that Complainant has registered and is using the disputed domain name in bad faith.
Complainant has therefore satisfied the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cablelas.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
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