Stampin' Up! Inc. v.
Claim Number: FA0909001282731
Complainant is Stampin'
Up! Inc. (“Complainant”),
represented by Brett D.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stamppinup.com>, registered with Compana, LLC.
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 September 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 3, 2009.
On September 4, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <stamppinup.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 September 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 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@stamppinup.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is in the business of creating and selling decorative rubber stamp sets and accessories for greeting cards, scrapbooking, craft projects, and home décor.
Complainant has been doing business under the STAMPIN’ UP! trademark since 1989.
Complainant is the owner of the STAMPIN’ UP! mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,152,494, issued April 21, 1998).
Respondent has no license from or agreement with Complainant authorizing Respondent to use the STAMPIN’ UP! mark.
Respondent registered the <stamppinup.com> domain name on February 28, 2005.
The disputed domain name resolves to an adult-oriented website from which Respondent receives commercial profit.
Respondent has been subjected to at least one-hundred adverse UDRP proceedings, and, in each of those proceedings, a panel has ordered Respondent to transfer a disputed domain name to a complainant.
Respondent’s <stamppinup.com> domain name is confusingly similar to Complainant’s STAMPIN’ UP! mark.
Respondent does not have any rights to or legitimate interests in this domain name.
Respondent registered and uses the <stamppinup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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 sufficiently established rights in the
STAMPIN’ UP! trademark under Policy ¶ 4(a)(i) through
its registration of the mark with the USPTO.
Respondent’s <stamppinup.com> domain name incorporates the distinctive portion of Complainant’s STAMPIN’ UP! mark, with the mere omission of the apostrophe and exclamation point, the deletion of the space between the words of the mark, the addition of the letter “p,” and the affixation of the generic top-level domain “.com.” Punctuation marks are not acceptable characters for registered domain names, which makes the apostrophe and exclamation point omissions irrelevant for the purposes of a Policy ¶ 4(a) analysis. Moreover, the addition of the letter “p” and the affixation of the gTLD “.com” are insufficient to distinguish the disputed domain name from Complainant’s STAMPIN’ UP! mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name to a competing mark); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to Policy
¶ 4(a)(i).
See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether, under the Policy, it is identical or confusingly similar to a competing mark).
Therefore, we find that Respondent’s domain name is confusingly similar to Complainant’s STAMPIN’ UP! trademark under Policy ¶ 4(a)(i).
Complainant has asserted that Respondent lacks rights to and legitimate interests in the <stamppinup.com> domain name. Complainant must assert a prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights to or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has met its burden of proof prima facie, while Respondent has failed to respond to the allegations against it. Thus, we may presume that Respondent lacks rights to and legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
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).
We will nonetheless examine the record before us to determine whether it reveals any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain sufficient for purposes of the Policy under the criteria set out in Policy ¶ 4(c).
We begin by observing that there is no dispute as to Complainant’s assertion that Respondent is using the <stamppinup.com> domain name to operate a website featuring adult-oriented images and content for Respondent’s commercial profit. Respondent’s use of a domain name as alleged does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that a respondent did not use a domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain name to divert Internet users seeking a complainant's goods or services to adult-oriented material and links, while presumably receiving a commission or referral fees from advertisers).
We also note that Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <stamppinup.com> domain name. In addition, Complainant asserts, and Respondent does not deny, that Respondent has no license from or agreement with Complainant authorizing Respondent to use the STAMPIN’ UP! mark. As well, the pertinent WHOIS information identifies Respondent merely as “Texas International Property Associates - NA NA.” Thus, we conclude that Respondent is not commonly known by the <stamppinup.com> domain name pursuant to Policy ¶ 4(c)(ii). 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); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by a disputed domain name).
Finally under this heading, typo-squatting occurs where a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who commit such typographical errors. The <stamppinup.com> domain name plainly takes advantage of Internet users who inadvertently mistype Complainant’s STAMPIN’ UP! mark. We conclude from the evidence that Respondent’s use of typo-squatting is further evidence that Respondent does not have rights to or legitimate interests in the disputed domain name 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 a complainant's LTD COMMODITIES mark, and that this:
typosquatting’ is evidence that Respondent lacks rights
or legitimate interests in the disputed domain names.
See also 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’”).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has previously been
subjected to at least one-hundred adverse UDRP proceedings, each resulting in
the transfer of the infringing domain name to the respective complainant. See, for example, Haas Outdoors, Inc. v.
Further, Respondent is using the contested domain name to redirect Internet users to Respondent’s website featuring adult-oriented content for Respondent’s commercial advantage. Therefore, Respondent’s use of the <stamppinup.com> domain name constitutes bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that a respondent’s use of the <googlesex.info> domain name to attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use of the domain under Policy ¶ 4(b)(iv)); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the domain name <holidayinnakron.com> and linked it to a adult-oriented website, the panel stating that:
[W]hatever the
motivation of Respondent, the diversion of the domain names to a adult-oriented site is itself certainly consistent with
the finding that the Domain Name was registered and is being used in bad faith.
Finally,
Respondent’s engagement in typo-squatting is also evidence that Respondent
registered and is using the <stamppinup.com> domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Typosquatting,
itself is evidence of bad faith registration and use[of
a disputed domain name] pursuant to Policy ¶ 4(a)(iii).
See also 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 the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <stamppinup.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 11, 2009
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