national arbitration forum

 

DECISION

 

Frederick's of Hollywood Group Inc. v. Blue Water LLC

Claim Number: FA0910001290927

 

PARTIES

Complainant is Frederick's of Hollywood Group Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Blue Water LLC (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofhoolywood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, <rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com>, registered with Wild West Domains, Inc.

 

PANEL

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 A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2009.

 

On October 23, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofhoolywood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, <rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 October 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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@ferdericksofhollywood.com, postmaster@fredeircksofhollywood.com, postmaster@fredercksofhollywood.com, postmaster@fredericksofhollwyood.com, postmaster@fredericksofhoolywood.com, postmaster@fredericksofohllywood.com, postmaster@frederikcsofhollywood.com, postmaster@rfedericks.com, postmaster@rfedericksofhollywood.com, and postmaster@wwwlfredericks.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 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofhoolywood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, and <rfedericksofhollywood.com> domain names are confusingly similar to Complainant’s FREDERICK’S OF HOLLYWOOD mark.  Respondent’s <rfedericks.com> and <wwwlfredericks.com> domain names are confusingly similar to Complainant’s FREDERICK’S mark. 

 

2.      Respondent does not have any rights or legitimate interests in the <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofhoolywood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, <rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com> domain names.

 

3.      Respondent registered and used the <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofhoolywood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, <rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Frederick's of Hollywood Group Inc., has continuously used the FREDERICK’S OF HOLLYWOOD and FREDERICK’S marks in connection with its women’s clothing, lingerie, and undergarments business since 1946.  The United States Patent and Trademark Office (“USPTO”) has issued Complainant registrations of the marks (Reg. No. 1,627,771 issued Dec. 11, 1990 and Reg. No. 664,746 issued July 22, 1958, respectively).  Complainant’s official website resolves from the <fredricks.com> domain name.  Additionally, Complainant runs an affiliate program whereby third-parties receive fees for directing Internet users to its official website.  This program prohibits the participants from using misspellings of Complainant’s marks to direct Internet users to Complainant’s website.

 

Respondent, Blue Water LLC, registered the <fredericksofhoolywood.com> domain name on July 21, 2003 and the <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, <rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com> domain names on May 11, 2006.  The disputed domain names resolve to Complainant’s official website resolving from its <fredericks.com> domain name.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the FREDERICK’S OF HOLLYWOOD (Reg. No. 1,627,771 issued Dec. 11, 1990) and FREDERICK’S (Reg. No. 664,746 issued July 22, 1958) marks under Policy ¶ 4(a)(i) through registration of the mark with the USPTO.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

The <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofhoolywood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, and <rfedericksofhollywood.com> domain names each contain Complainant’s FREDERICK’S OF HOLLYWOOD mark with the apostrophe and spaces removed and the generic top-level domain (“gTLD”) “.com” added.  The Panel finds that these changes and additions are irrelevant under a Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also 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.”).  Additionally, one or more of the following changes were made in each disputed domain name to the mark (1) the addition of one extra letter; (2) the transposition of two letters in the mark; or (3) the replacement of one letter in the mark with another.  The Panel finds that these changes are insufficient to overcome the confusing similarity that arises from using Complainant’s mark in the disputed domain name.  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark).  Therefore, the Panel finds that Respondent’s <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofhoolywood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, and <rfedericksofhollywood.com> domain names are confusingly similar to Complainant’s FREDERICK’S OF HOLLYWOOD mark under Policy ¶ 4(a)(i).

 

Complainant contends that the <rfedericks.com> and <wwwlfredericks.com> domain names are confusingly similar to Complainant’s FREDERICK’S mark.  Both of these disputed domain names omit the apostrophe from Complainant’s mark and add the gTLD “.com.”  The Panel finds that these changes are irrelevant under a Policy ¶  4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, supra; see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark).  The <rfedericks.com> domain name transposes the first two letters of Complainant’s FREDERICK’S mark.  The Panel finds this is insufficient to distinguish the <rfedericks.com> domain name from Complainant’s mark.  See Delta Corporate Identity, Inc., supra.  The <wwwlfredericks.com> domain name adds the letters “wwwl” in front of Complainant’s FREDERICK’S mark.  The Panel finds that these changes are insufficient to over the confusing similarity the arises from using Complainant’s mark.  See 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 Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark).  The Panel therefore finds that Respondent’s <rfedericks.com> and <wwwlfredericks.com> domain names are confusingly similar to Complainant’s FREDERICK’S mark under Policy ¶ 4(a)(i). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”). 

 

Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use either of Complainant’s marks, and the WHOIS information identifies the registrant as “Blue Water LLC.”  The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names.  Thus, the Panel finds that Respondent is not commonly known by any of the disputed domain names and has therefore not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Complainant’s affiliate program compensates other domain name holders who direct Internet users to Complainant’s website.  Complainant argues that Respondent is using typographical errors in the confusingly similar disputed domain names to redirect Internet users to Complainant’s website and attempting to profit from it through Complainant’s affiliate program.  The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) respectively.  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy  ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat. Arb. Forum Jan. 9, 2003) (finding that registering a domain name which differs by one letter from the complainant’s commercial website, and using that domain name to redirect Internet consumers to the complainant’s website as a part of the complainant’s affiliate program is not a bona fide offering of goods or services nor a noncommercial use of the domain name).

 

Additionally, typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who commit those typographical errors.  The disputed domain names take advantage of Internet users who mistype Complainant’s FREDERICK’S OF HOLLYWOOD or FREDERICK’S mark.  The Panel finds that Respondent engaged in typosquatting by misspelling Complainant’s marks in the disputed domain names.  This is further evidence that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>); see also 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’”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent began registering the disputed domain names on July 21, 2003, forty-five years after Complainant had established rights in the FREDERICK’S mark and nearly 13 years after Complainant had established rights in the FREDERICK’S OF HOLLYWOOD mark.  Complainant contends that Respondent is attempting to profit by using domain names that are confusingly similar to Complainant’s marks.  The disputed domain names resolve to Complainant’s website, so Internet users could easily be confused as to Complainant’s control or affiliation with the disputed domain names.  Respondent is attempting to profit from this confusion and Internet users mistyping Complainant’s mark by leading these users to Complainant’s legitimate website and collecting affiliate fees.  The Panel finds this is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

The disputed domain names each contain typographical errors of Complainant’s FREDERICK’S OF HOLLYWOOD or FREDERICK’S marks.  The Panel finds that Respondent’s engagement in typosquatting is evidence that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).

 

Complainant asserts that Respondent is acting in violation of the affiliate program by registering domain names based on the mark in an attempt to profit from commissions.  The Panel finds that this action is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” and therefore registered and used the domain name in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ferdericksofhollywood.com>, <fredeircksofhollywood.com>, <fredercksofhollywood.com>, <fredericksofhollwyood.com>, <fredericksofhoolywood.com>, <fredericksofohllywood.com>, <frederikcsofhollywood.com>, <rfedericks.com>, <rfedericksofhollywood.com>, and <wwwlfredericks.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated:  December 3, 2009

 

 

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