CompUSA Management Company v. JordanHaines.com
Claim Number: FA0211000129137
Complainant is CompUSA Management Company, Dallas, TX (“Complainant”) represented by Lee Ann Wheelis, of Thompson & Knight LLP. Respondent is JordanHaines.com, Valdosta, GA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwcompusaauctions.com>, registered with Dotster, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 6, 2002; the Forum received a hard copy of the Complaint on November 8, 2002.
On November 7, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <wwwcompusaauctions.com> is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 November 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 29, 2002 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.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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:
Respondent’s <wwwcompusaauctions.com> domain name is confusingly similar to Complainant’s registered COMPUSA mark.
Respondent does not have any rights or legitimate interests in the <wwwcompusaauctions.com> domain name.
Respondent registered and used the <wwwcompusaauctions.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CompUSA Management Company, holds numerous trademark registrations for the COMPUSA mark, dating back to 1992 (e.g. U.S. Reg. No. 1,735,429, registered on November 24, 1992 on the Principal Register of the United States Patent and Trademark Office). Complainant is the largest U.S. retailer and reseller of personal computer-related products and services, including items such as personal computers, printers, keyboards, pointing devices, and video games. In addition to its retail stores, Complainant sells products online at <compusa.com> and <compusaauctions.com>.
Respondent, JordanHaines.com, registered the <wwwcompusaauctions.com> domain name on June 1, 2002. Respondent, who is not authorized or licensed to use the COMPUSA mark for any purpose, uses the disputed domain name to redirect Internet users to <inkcartridgesforless.com>, another website operated by Respondent. At that website, Internet users can purchase inkjet cartridges, laser toners, fax and copier toners, ribbons and paper. All of these products are also sold by Complainant at the <compusaauctions.com> domain name.
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 the 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.
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 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
Complainant has established rights in the COMPUSA mark through registration on the Principal Register of the United States Patent and Trademark Office as well as through widespread and continuous use of the mark.
Respondent’s <wwwcompusaauctions.com> domain name is confusingly similar to Complainant’s registered COMPUSA mark. Besides adding the generic word “auctions”, Respondent has only added a “www” prefix to Complainant’s mark. The generic word “auctions” doesn’t disguise the fact that the predominate characteristic of the disputed domain name is Complainant’s COMPUSA mark. In fact, as Complainant operates a website at the <compusaauctions.com> domain name, the addition of this particular word will actually increase the likelihood of confusion. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
By adding a “www” prefix to the disputed domain name, Respondent has done nothing to decrease the domain name’s confusing similarity with Complainant’s mark. Respondent’s registration takes advantage of Internet users who, when keying in the Uniform Resource Locator (URL), inadvertantly fail to add the period between the “www” and whatever second-level domain that they are attempting to reach. In this case, Internet users who are hoping to arrive at Complainant’s “www.compusaauctions.com” website but accidently do not type a period after they have entered “www,” will be diverted to Respondent’s <wwwcompusaauctions.com> domain name. Again, the dominant feature of the domain name remains Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).
The addition of the top-level domain “.com”, a feature that is required of all domain name registrants, also fails to prevent the Panel from finding Respondent’s domain name to be confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
Accordingly, the Panel finds that the <wwwcompusaauctions.com> domain name is confusingly similar to Complainant’s registered COMPUSA mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Policy paragraphs 4(c)(i)-(iii) identify three circumstances encompassing situations where Respondent would have rights or legitimate interests in the disputed domain name. As Respondent has failed to respond to the Complaint, a showing by Complainant that none of these three circumstances apply is sufficient for Complainant to meet its burden under the Policy. At that point, the burden shifts to Respondent to rebut Complainant’s allegations. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent’s failure to respond to the Complaint not only results in its failure to meet its burden, but is viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant has successfully shown that Policy paragraphs 4(c)(i)-(iii) are inapplicable to Respondent. Respondent is using a confusingly similar domain name in an attempt to draw Internet users to his own website, which competes with Complainant’s website at <compusaauctions.com>. In deliberately creating and fostering this confusion in order to commercially capitalize on it, all at the expense of Complainant, Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of its domain name pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).
Complainant has not granted permission to Respondent to use the COMPUSA mark in any fashion, and the record reflects no evidence that Respondent has ever been “commonly known by” the name WWWCOMPUSAAUCTIONS or <wwwcompusaauctions.com>. As Respondent has submitted no evidence contradicting Complainant’s substantiated assertions, the Panel concludes that Respondent does not fall under the ambit of Policy ¶ 4(c)(ii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwcompusaauctions.com> domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
While Policy paragraph 4(b) lists four circumstances evidencing bad faith use and registration of a domain name, that list is not meant to be all-inclusive. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).
One example of bad faith use and registration not directly illustrated in the Policy, yet nevertheless representing bad faith use and registration of a domain name under Policy ¶ 4(a)(iii), is typosquatting. See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants). In light of Complainant’s previously registered <compusaauctions.com> domain name, Respondent’s registration and use of the <wwwcompusaauctions.com> domain name qualifies as typosquatting (simply adding a “www” prefix to a mark in which another has rights exemplifies typosquatting) and therefore evidences bad faith use and registration.
Further evidence of Respondent’s bad faith use and registration of the disputed domain name can be inferred from the fact that Respondent had actual knowledge of Complainant’s mark when it registered the infringing domain name, and used it to redirect Internet users to its own website. Respondent’s website incorporates, in its entirety, Complainant’s COMPUSA mark as well as its <compusaauctions.com> domain name, a circumstance the Panel refuses to find coincidental. Such registration and use is another non-enumerated example of bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).
Under Policy ¶ 4(b)(iv), as Respondent’s registration and use of the domain name “intentionally attempted to attract for commercial gain” Internet users “by creating a likelihood of confusion…as to the source, sponsorship, affiliation, or endorsement” of Respondent’s website,” these actions evidence registration and use in bad faith. The confusingly similar nature of Respondent’s infringing <wwwcompusaauctions.com> domain name creates the “likelihood of confusion” that Policy ¶ 4(b)(iv) addresses, while Respondent’s redirection to its own competing commercial website satisfies Policy ¶ 4(b)(iv)’s “attraction for commercial gain.” See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).
Accordingly, the Panel finds that Respondent registered and used the <wwwcompusaauctions.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwcompusaauctions.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 19, 2002
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