OBBI LLC v. Jet Stream Enterprises Limited
Claim Number: FA0911001292959
Complainant is OBBI
LLC (“Complainant”), represented by John
M. Rannells, of Baker and Rannells PA,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cuddleduds.com>, registered with Tucows 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2009.
On November 4, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <cuddleduds.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 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 operates a lingerie, loungewear and sleepwear business under its CUDDL DUDS trademark.
Complainant holds a registration for its CUDDL DUDS trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,151,788, issued April 21, 1981).
Respondent registered the disputed domain name on April 29, 2002.
The disputed domain name resolves to a website that displays links to unrelated third-party websites.
Respondent’s <cuddleduds.com> domain name is confusingly similar to Complainant’s CUDDL DUDS mark.
Respondent is not commonly known by the disputed domain name.
Respondent is engaged in the practice known as “typo-squatting.”
Respondent does not have any rights to or legitimate interests in the <cuddleduds.com> domain name.
Respondent registered and uses the <cuddleduds.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 established rights in the CUDDL DUDS
trademark by virtue of its registration of the mark with the USPTO. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum
Accordingly, Complainant has provided sufficient evidence to establish rights in its CUDDL DUDS mark under Policy ¶ 4(a)(i).
Respondent’s <cuddleduds.com> domain name
contains Complainant’s entire CUDDL DUDS mark with the addition of the letter
“e,” the removal of the space between the terms, and the addition of the
generic top-level domain “.com.” These
alterations do not result in a domain name distinct from Complainant’s mark,
especially because the resulting domain name is phonetically identical to
Complainant’s mark. We thus conclude
that the disputed domain name is confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the mark where
the mark is highly distinctive); see
also Granarolo S.p.A. v. Dinoia, FA
649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com>
domain name was confusingly similar to a complainant’s registered GRANAROLO
mark); further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant evidences a prima facie case, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005):
Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.
See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant has established a prima facie case, and Respondent, for its part, has failed to submit a Response to this proceeding. We are therefore permitted to presume that Respondent lacks rights to and interests under Policy ¶ 4(a)(ii). See, for example, Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum, Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
We elect nonetheless to examine the record before us to determine if there is in it any basis, in consideration of the tests set out in Policy ¶ 4(c), for concluding that Respondent has any such rights or interests in the disputed domain name.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant only as “Jet Stream Enterprises Limited.” We must conclude therefore that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names where the relevant WHOIS information listed the registrant of disputed domain names as Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't and there was no other evidence in the record to suggest that that respondent was commonly known by those domain names); 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.”
We also note that there is no dispute as to Complainant’s assertion to the effect that the disputed domain name resolves to a website that displays links to third-party websites unrelated to Complainant’s business. From the circumstances here presented, we may presume that Respondent receives click-through fees for this use. Respondent’s use of the disputed domain name in this manner 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 disputed domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Constellation
Wines U.S., Inc. v.
Finally under this heading, Complainant contends, and Respondent does not deny, that Respondent’s conduct in forming the contested domain name as alleged constitutes “typo-squatting.” Typo-squatting is defined as the registration and use of a domain name with the intent of targeting Internet users who commit common typographical errors in searching for information or services on the Internet. Respondent’s practice of typo-squatting is evidence that Respondent lacks rights to and legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the domain names <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s submission demonstrates that Respondent has been found to have acted in bad faith with respect to the registration and use of disputed domain names in multiple prior UDRP proceedings. See, for example, Barry’s Ticket Serv., Inc. v. Jet Stream Enters. Ltd., FA 1270845 (Nat. Arb. Forum Aug. 5, 2009); see also Archstone Cmtys. v. Jet Stream Enters. Ltd., FA 1270459 (Nat. Arb. Forum Aug. 6, 2009). This is evidence of bad faith registration and use of the instant contested domain name under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name there in issue prevented a complainant from reflecting its mark in a domain name and where a respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber-squatting); see also Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003):
Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigbackyard.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.
Further under this heading, we have already concluded that
Respondent uses the disputed domain name to resolve to a commercial website
from which it presumably receives click-through fees for its display of links
to third-party sites unrelated to Complainant. Respondent is thus attempting to
capitalize on the goodwill Complainant has established in its CUDDL DUDS mark
by confusing Internet users as to Complainant’s possible affiliation with the
disputed domain name and resolving website.
This is evidence of bad faith registration and use of the contested
domain under Policy ¶ 4(b)(iv). See Bank of Am. Fork v.
Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a
respondent’s use of the <bankofamericanfork.com> domain name to maintain
a web directory was evidence of bad faith where that respondent presumably
benefited commercially by receiving click-through fees for diverting Internet users
to unrelated third-party websites); see
also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For
In addition, we have earlier concluded that Respondent practiced typo-squatting in the formation of the contested domain name. Typo-squatting is sufficient evidence, in and of itself, to support a finding that Respondent has engaged in bad faith registration and use of the contested domain name under 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 Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a misspelling of a complainant's DERMALOGICA mark which indicated typo-squatting, and, therefore, also bad faith registration and use of a domain pursuant to Policy 4 ¶ (a)(iii)).
For all of these reasons, the Panel finds that the requirements of Policy ¶ 4(a)(iii) have been satisfied.
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 <cuddleduds.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 15, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum