Pacific Sunwear.com Corp v. Venkateshwara Distributor Private Limited
Claim Number: FA0908001279901
Complainant is Pacific
Sunwear.com Corp (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pacsum.com>, registered with Lead Networks Domains Pvt. Ltd.
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
On August 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 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@pacsum.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <pacsum.com> domain name is confusingly similar to Complainant’s PAC SUN mark.
2. Respondent does not have any rights or legitimate interests in the <pacsum.com> domain name.
3. Respondent registered and used the <pacsum.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pacific Sunwear.com Corp., designs, markets, and sells youth and extreme sport apparel. Complainant operates stores and outlet stores in all fifty states and generated over $1.4 billion in net sales in 2007. Complainant is publicly traded on the NASDAQ under the symbol PSUN. Complainant has operated under the “Pacific Sunwear” name since 1982 and holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for multiple variations of the name, most relevant in the instant proceedings, PAC SUN (Reg. No. 1,613,010 issued September 9, 1990).
Respondent registered the <pacsum.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.
Complainant registered the PAC
Complainant alleges the <pacsum.com> domain
name is confusingly similar to Complainant’s PAC SUN mark. The disputed domain name nearly contains
Complainant’s mark in its entirety except for the removal of a space separating
the terms in the mark, replacement of the letter “n” with the letter “m,” and
the addition of the top-level domain “gTLD” “.com.” In past panel decisions, panels have found
the removal of a space, the replacement of a single letter, and the addition of
a gTLD fail to adequately distinguish a disputed domain name from a
complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat.
Arb. Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights or
legitimate interests in the <pacsum.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has made a sufficient prima
facie case. Due to Respondent’s failure
to respond to the Complaint, the Panel may assume that Respondent does not have
rights or legitimate interests in the <pacsum.com> domain
name. However, the Panel will examine
the record to determine whether Respondent has rights or legitimate interests
in the disputed domain name under Policy ¶ 4(c). See 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 the complainant, the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum
The <pacsum.com> domain name resolves to a
website featuring links to third-party websites, some of which are
Complainant’s competitors in the apparel business.
Complainant asserts that Respondent receives click-through fees from displaying
the aforementioned hyperlinks. The Panel
finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain name under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see also 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).
Complainant contends Respondent is not commonly known by the
<pacsum.com> domain name. The
WHOIS information lists Respondent as, “Venkateshwara Distributor Private
Limited,” which suggests Respondent is known as an entity other than the
disputed domain name or Complainant’s PAC SUN mark. Complainant asserts that Respondent is not
sponsored by or legitimately affiliated with Complainant and that Complainant
has not given Respondent permission to use the PAC SUN mark or the disputed
domain name. Respondent has failed to
provide evidence contradicting the evidence and arguments offered by
Complainant. The Panel fails to find any
evidence on the record that suggests Respondent is commonly known by the <pacsum.com>
domain name. Thus, the Panel finds
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Moreover, Respondent’s <pacsum.com> domain name
is an example of typosquatting.
Respondent engaged in typosquatting by replacing the letter “n” in
Complainant’s PAC SUN mark with the letter “m.”
Respondent’s intentional misspelling of Complainant’s mark takes
advantage of Internet users who attempt to access Complainant’s website or find
information on Complainant’s apparel products.
The Panel finds that by engaging in typosquatting, Respondent fails to
establish rights or interests pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds the elements of Policy ¶ 4(a)(ii) have been
satisfied.
Complainant alleges Respondent’s use of the <pacsum.com> domain name to resolve to a website featuring links to third-parties, some of which are to Complainant’s competitors, constitutes a disruption of Complainant’s apparel business. The disputed domain name redirects Internet users interested in the Complainant and Complainant’s apparel products to Respondent’s website which leads to Complainant’s competitors. The Panel finds Respondent’s use of the disputed domain is a disruption of Complainant’s apparel business, and constitutes bad faith registration and use under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel presumes that Respondent receives click-through
fees from the aforementioned hyperlinks. From those click-through fees,
Respondent commercially gains from the redirection of Internet users interested
in Complainant to the website resolving from the <pacsum.com>
domain name. The Panel finds Respondent’s
use of the disputed domain name constitutes bad faith registration and use
under Policy ¶ 4(b)(iv). See
Additionally, Respondent’s <pacsum.com> domain
name is a typosquatted version of Complainant’s PAC SUN mark. Through Respondent’s practice of
typosquatting, Respondent created a likelihood of confusion as to Complainant’s
sponsorship, affiliation, or endorsement of the website resolving from the
disputed domain name. Previous panels
have found that registering and using a typosquatted domain name constitutes
bad faith registration and use under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme,
FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the
domain names in dispute constitutes bad faith because the domain names are
merely typosquatted versions of the [complainant’s] IMDB mark.); see also 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).”). Therefore, the
Panel finds Respondent’s practice of typosquatting constitutes bad faith
registration and use under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pacsum.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 29, 2009
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