Macy's Department Stores, Inc. v. La Duzi
Claim Number: FA0910001290068
Complainant is Macy's
Department Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <macya.com>, <macyc.com>, and <macyes.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2009.
On October 21, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <macya.com>, <macyc.com>, and <macyes.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 October 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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@macya.com, postmaster@macyc.com, and postmaster@macyes.com> by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson. Jr., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <macya.com>, <macyc.com>, and <macyes.com> domain names are confusingly similar to Complainant’s MACYS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <macya.com>, <macyc.com>, and <macyes.com> domain names.
3. Respondent registered and used the <macya.com>, <macyc.com>, and <macyes.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Macy’s Department Stores, Inc., provides
department store services in the physical department stores and online at
<macys.com>. Complainant operates
more than 800 stores and furniture galleries in forty-five states, the
Respondent, La Duzi, registered the <macya.com>, <macyc.com>, and <macyes.com> domain names each no earlier than November 27, 2005. The disputed domain names resolve to websites featuring a commercial search engine and hyperlinks to Complainant and Complainant’s competitors in the department store services business. Respondent has been a respondent in previous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases. See LEGO Juris A/S v. Deng Yi Xia, La Duzi, and Hu Li, Case No. D2009-0858 (WIPO August 18, 2009); see also Lernco, Inc. v. La Duzi, Case No. D2009-0960 (WIPO Sep. 7, 2009).
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 contends it has established rights in the
MACYS.COM mark. Previous panels have
found that trademark registration with a federal trademark authority is
sufficient to establish rights in a mark.
Complainant alleges that Respondent’s <macya.com>, <macyc.com>, and <macyes.com> domain names are confusingly similar to Complainant’s MACYS.COM mark. The disputed domain names contain common misspellings of Complainant’s mark involving keys placed near the keys comprising Complainant’s mark. The Panel finds common misspellings fail to adequately distinguish the disputed domain name from Complainant’s mark. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Therefore, the Panel finds Respondent’s <macya.com>, <macyc.com>, and <macyes.com> domain names are confusingly similar to Complainant’s MACYS.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <macya.com>, <macyc.com>, and <macyes.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a 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 <macya.com>, <macyc.com>, and <macyes.com> domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the <macya.com>, <macyc.com>,
and <macyes.com> domain names. Complainant asserts that
Respondent is not authorized to use the MACYS.COM mark. The WHOIS information identifies Respondent
as “La Duzi.” Therefore, the Panel finds
that Respondent has not established rights or legitimate interests in the <macya.com>,
<macyc.com>, and <macyes.com> domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac
Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed 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).
Respondent is using the <macya.com>, <macyc.com>, and <macyes.com>
domain names to resolve to websites
featuring a commercial search engine and links to Complainant and Complainant’s
competitors in the department store services industry. Respondent likely receives click-through fees
from the hyperlinks and presumably profits from the resolving websites. The Panel finds these uses of the confusingly
similar disputed domain names are 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 Jerry Damson, Inc. v.
In addition, Respondent’s use of the <macya.com>, <macyc.com>, and <macyes.com> domain names constitutes typosquatting. The disputed domain names all contain common typographical errors and misspellings of Complainant’s MACYS.COM mark. The Panel finds that Respondent’s use of the disputed domain names to redirect Internet users seeking Complainant’s website and travel services fails to establish rights or interests pursuant to Policy ¶ 4(a)(ii). 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’”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent’s use of the <macya.com>, <macyc.com>, and <macyes.com>
domain names is a part of a pattern of
bad faith use and registration.
Respondent has been a respondent in previous UDRP proceedings in
which disputed domain names were transferred from Respondent to the
complainants in those cases. See LEGO Juris A/S v. Deng Yi Xia, La Duzi,
and Hu Li, Case No. D2009-0858 (WIPO August 18, 2009); see also Lernco, Inc. v. La Duzi, Case
No. D2009-0960 (WIPO Sep. 7, 2009).
The Panel finds these prior UDRP proceedings as well as Respondent’s
registration of three confusingly similar disputed domain names containing
Complainant’s MACYS.COM mark constitute a pattern of bad faith registration and
use of domain names under Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Respondent’s <macya.com>, <macyc.com>, and <macyes.com> domain
names resolve to websites featuring
commercial search engines and hyperlinks relating to Complainant and Complainant’s
competitors in the department store services business. Complainant claims that Respondent’s use of
the disputed domain names disrupts Complainant’s department services business
because Internet users looking to buy products from Complainant may be
redirected to Complainant’s competitors through Respondent’s confusingly
similar disputed domain names. The Panel
finds Respondent’s use of the <macya.com>, <macyc.com>,
and <macyes.com> domain names does disrupt Complainant’s business and constitutes bad faith
registration and use pursuant to Policy 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb.
Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors); see
also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July
24, 2006) (finding that the respondent engaged in bad faith registration and
use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to
operate a commercial search engine with links to the products of the
complainant and to complainant’s competitors, as well as by diverting Internet
users to several other domain names).
The Panel infers
Respondent receives click-through fees from the links relating to Complainant’s
competing department stores. Internet
users may become confused as to Complainant’s affiliation and sponsorship of
the competing hyperlinks and website resolving from the disputed domain name. Respondent attempts to profit from this
confusion created by the confusingly similar disputed domain names. The Panel finds Respondent has engaged in bad
faith registration and use 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 Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent’s use of the <macya.com>, <macyc.com>, and <macyes.com> domain names constitute typosquatting by misspelling Complainant’s MACYS.COM mark. Internet users may accidentally misspell Complainant’s mark when attempting to reach Complainant, and may instead reach Respondent’s resolving websites and become confused. Respondent attempts to profit from the Internet users’ mistake and confusion. Therefore, the Panel finds Respondent’s practice of typosquatting constitutes bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 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’”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <macya.com>, <macyc.com>, and <macyes.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 25, 2009
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