Macy's
Department Stores, Inc. v.
Claim Number: FA0911001293614
Complainant is Macy's
Department Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <maycs.com>,
registered with Internet.bs Corp.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 10, 2009.
On November 9, 2009, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <maycs.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 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@maycs.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <maycs.com> domain name is confusingly similar to Complainant’s MACY’S mark.
2. Respondent does not have any rights or legitimate interests in the <maycs.com> domain name.
3. Respondent registered and used the <maycs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Macy’s Department Stores, Inc., operates department stores and furniture galleries in forty-five states. Complainant offers products online at websites resolving from <macys.com> and <bloomingdales.com> domain names. Complainant has operated under Complainant’s MACY’S mark since 1858. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MACY’S mark (e.g., Reg. No. 78,333 issued June 7, 1910).
Respondent registered the <maycs.com> domain name on August 22, 2000. The disputed domain name resolves to a website containing a third-party hyperlink directory, some of the hyperlinks resolve to Complainant’s competitors in the retail department store business.
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 has registered its MACY’S mark with the USPTO (e.g., Reg. No. 78,333 issued June 7, 1910). Previous panels have held that trademark registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel finds Complainant has established rights in the MACY’S mark through its registration with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant alleges Respondent’s <maycs.com>
domain name is confusingly similar to Complainant’s MACY’S mark. The disputed domain name contains a common
misspelling of Complainant’s MACY’S by transposing the letters “c” and “y,”
removes the apostrophe from the mark, and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds a
common misspelling of Complainant’s mark, with the removal of an apostrophe and
the addition of a gTLD, fails to adequately distinguish the disputed domain
name from Complainant’s MACY’S mark. See Google Inc. v. Jon G.,
FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to
be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error”); see also
Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000)
(finding the domain name <chichis.com> to be identical to the
complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen
from the mark); see also Jerry Damson,
Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <maycs.com> domain
name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a
sufficient 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 disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l
Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June
27, 2000) (finding it appropriate for the panel to draw adverse inferences from
the respondent’s failure to reply to the complaint).
Respondent offers no evidence to suggest Respondent is commonly known by the <maycs.com> domain name. Furthermore, the Panel fails to find evidence in the record that Respondent is commonly known by <maycs.com> domain name. Complainant asserts that Respondent has never been authorized to use the MACY’S mark. The WHOIS information does not provide a connection between the domain name registrant information and the disputed domain name. Therefore, the Panel finds Respondent has failed to establish rights or legitimate interests in the <maycs.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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.”).
Respondent’s <maycs.com> domain name resolves to a website featuring a hyperlink directory that includes hyperlinks to Complainant’s competitors in the retail store industry. Respondent likely profits from the inclusion of these hyperlinks on the resolving website. The Panel finds Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In addition, Complainant contends Respondent’s use of the
disputed domain name, a common misspelling of Complainant’s MACY’S mark, constitutes
typosquatting. The Panel finds that
Respondent’s use of the disputed domain name to redirect Internet users seeking
Complainant’s retail store business is further evidence that Respondent has
failed to establish rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <maycs.com> domain name to resolve to a website
featuring third-party hyperlinks, some of which resolve to Complainant’s competitors
in the retail store industry. Internet
users interested in Complainant and Complainant’s retail stores may instead
purchase products or visit a competing retail store website because of
Respondent’s use of the confusingly similar disputed domain name. Respondent attempts to profit from this
confusion. The Panel finds Respondent’s
use of the disputed domain name disrupts Complainant’s retail store business,
which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the
use of a confusingly similar domain name to attract Internet users to a
directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under
Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v.
Tex. Int’l Prop. Assoc., FA
914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where
the respondent’s website featured hyperlinks to competing websites and included
a link to the complainant’s website, the respondent’s use of the
<redeemaamiles.com> domain name constituted disruption under Policy ¶
4(b)(iii)).
The Panel infers Respondent receives click-through fees from
the aforementioned hyperlinks.
Respondent is using the confusingly similar disputed domain name to
profit from Internet users’ confusion as to Complainant’s affiliation with the
resolving website. The Panel finds
Respondent’s use of the disputed domain name constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See
Furthermore, Respondent has engaged in typosquatting through the use of the disputed domain name, which is a common misspelling of Complainant’s MACY’S mark. Therefore, the Panel finds Respondent’s engagement in the practice of typosquatting additionally constitutes bad faith registration and use 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 Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maycs.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 23, 2009
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