Cabela's, Inc. v. Bladimir Boyiko
Claim Number: FA0911001293621
Complainant is Cabela's, Inc. (“Complainant”), represented by , of CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cabeles.com>, registered with Enom, Inc.
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.
Judge Harold Kalina (Ret.) 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, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cabeles.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 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@cabeles.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 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <cabeles.com> domain name is confusingly similar to Complainant’s CABELA’S mark.
2. Respondent does not have any rights or legitimate interests in the <cabeles.com> domain name.
3. Respondent registered and used the <cabeles.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cabela’s Inc., owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CABELA’S mark (e.g., Reg. No. 1,151,981 issued April 21, 1981) in connection with retail and mail order services for sporting and related goods.
Respondent, Bladimir Boyiko,
registered the disputed domain name on June 27, 2000. The disputed domain name resolves to an
inactive website.
Complainant contends that Respondent has been the Respondent in several other UDRP proceedings. See Compania Mexicana de Aviacion, S.A. de C.V. v. Boyiko, FA 195963 (Nat. Arb. Forum July 9, 2008); see also Smith & Hawken, Ltd. v. Boyiko, FA 755733 (Nat. Arb. Forum September 6, 2006).
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 asserts rights in its CABELA’S mark through its
holding of multiple registrations for the CABELA’S mark with the USPTO (e.g.,
Reg. No. 1,151,981 issued April 21, 1981).
The Panel finds that Complainant has established rights in the CABELA’S
mark under Policy ¶ 4(a)(i) through its registration
with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
June 29, 2007) (“As the [complainant’s] mark is registered with the
USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant argues that
Respondent’s <cabeles.com>
domain name is confusingly similar to Complainant’s CABELA’S mark pursuant to
Policy ¶ 4(a)(i). Respondent’s disputed
domain name is confusingly similar to Complainant’s CABELA’S mark because
Respondent’s domain name misspells Complainant’s mark by substituting the
letter “e” for the letter “a”, deletes the apostrophe and adds the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the misspelling of Complainant’s mark creates a confusing
similarity between the disputed domain name and Complainant’s mark. See 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”); see also The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA
714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by
misspelling Complainants’ mark, Respondent has not sufficiently differentiated
the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶
4(a)(i).”). Additionally, the Panel
finds that the deletion of an apostrophe does not distinguish the disputed
domain name from Complainant’s mark and is confusingly similar. See
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); see also
Daddy’s Junky Music Stores, Inc. v.
Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an
apostrophe in the domain name is not a distinguishing difference because
punctuation is not significant in determining the similarity of a domain name
and a mark.”). The Panel also finds that
the addition of a gTLD to a domain name is irrelevant in distinguishing a
disputed domain name and a mark. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the 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.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Bladimir Boyiko.” Respondent is not sponsored by or legitimately affiliated with Complainant in any way and Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed domain name was registered on June 27, 2000. The disputed domain name resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use of the domain name does not constitute a bona fide offering of goods or services or a legitimate noncommerical or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)).
Complainant argues that Respondent is using a typographical
error in the confusingly similar disputed domain name which, the Panel finds,
is itself evidence that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has been the respondent
in several other UDRP proceedings. See
Compania Mexicana de Aviacion, S.A. de
C.V. v. Boyiko, FA 195963 (Nat. Arb. Forum July 9, 2008); see also Smith & Hawken, Ltd. V. Boyiko, FA 755733 (Nat. Arb. Forum September
6, 2006). The Panel finds that several
adverse UDRP decisions against Respondent is evidence of Respondent’s bad faith
registration and use of the disputed domain name under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Respondent is not making an active use of the confusingly
similar <cabeles.com> domain name. The Panel finds Respondent’s failure to make
an active use over a period of nine years is sufficient to support a finding of
bad faith registration and use under Policy ¶ 4(a)(iii). See Thermo
Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12,
2006) (finding that the respondent’s non-use of the disputed domain names
demonstrates that the respondent is not using the disputed domain names for 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)); see also TMP Int’l, Inc. v. Baker
Enters., FA 204112 (Nat. Arb. Forum Dec.
6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active
use] of the domain name does not establish rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).”).
As established previously,
Respondent has engaged in the practice of typosquatting by intentionally
misspelling Complainant’s CABELA’S mark.
The Panel finds typosquatting is itself evidence of bad faith
registration and use under Policy ¶ 4(c)(iii). See Nextel
Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the
respondent’s registration and use of the <nextell.com> domain name was in
bad faith because the domain name epitomized typosquatting in its purest form);
see also Microsoft Corp. v.
Domain Registration
The Panel finds that 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 <cabeles.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 17, 2009
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