national arbitration forum

 

DECISION

 

Charlotte Russe Merchandising, Inc. v. COMDOT INTERNET SERVICES PRIVATE LIMITED.

Claim Number: FA0912001299750

 

PARTIES

Complainant is Charlotte Russe Merchandising, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is COMDOT INTERNET SERVICES PRIVATE LIMITED. (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <carlotterusse.com>, <charlott-russe.com>, <charlotteerusse.com>, <charlotterrusse.com>, <chartlotterusse.com>, and <chrlotterusse.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 18, 2009; the National Arbitration Forum received a hard copy of the Complaint December 21, 2009.

 

On December 19, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <carlotterusse.com>, <charlott-russe.com>, <charlotteerusse.com>, <charlotterrusse.com>, <chartlotterusse.com>, and <chrlotterusse.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On February 1, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 22, 2010, 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@carlotterusse.com, postmaster@charlott-russe.com, postmaster@charlotteerusse.com, postmaster@charlotterrusse.com, postmaster@chartlotterusse.com, and postmaster@chrlotterusse.com by e-mail.

 

On January 7, 2010, the National Arbitration Forum granted the parties’ January 5, 2010, Joint Request to Stay the Administrative Proceeding, thereby setting a deadline of February 1, 2010, by which either party could submit a request to continue the Administrative Proceeding. 

 

On January 28, 2010, the National Arbitration Forum granted Complainant’s January 27, 2010, Request to Remove the Stay of the Administrative Proceeding, thereby setting a deadline of February 22, 2010, by which Respondent could file a response to the Complaint.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.      The domain names that Respondent registered, <carlotterusse.com>, <charlott-russe.com>, <charlotteerusse.com>, <charlotterrusse.com>, <chartlotterusse.com>, and <chrlotterusse.com>, are confusingly similar to Complainant’s CHARLOTTE RUSSE mark.

 

2.      Respondent has no rights to or legitimate interests in the <carlotterusse.com>, <charlott-russe.com>, <charlotteerusse.com>, <charlotterrusse.com>, <chartlotterusse.com>, and <chrlotterusse.com> domain names.

 

3.      Respondent registered and used the <carlotterusse.com>, <charlott-russe.com>, <charlotteerusse.com>, <charlotterrusse.com>, <chartlotterusse.com>, and <chrlotterusse.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Charlotte Russe Merchandising, Inc., is a mall-based specialty retailer of clothing and accessories.  Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHARLOTTE RUSSE mark (e.g., Reg. No. 1,485,692 issued April 19, 1988).

 

Respondent registered the disputed domain names on or after August 9, 2005.  Respondent’s disputed domain names resolve to websites displaying third-party links to websites offering clothing and accessories in competition with Complainant.

 

Respondent is a serial cybersquatter who has been the respondent in a number of other UDRP proceedings in which the respective disputed domain names were transferred to the Complainant.  See Morgan Stanley v. Comdot Internet Servs. Private Ltd., FA 1178866 (Nat. Arb. Forum June 9, 2008); see also Mike Anderson Chevrolet of Merrillville, Inc. v. COMDOT INTERNET SERVS. PRIVATE LTD., FA 1177933 (Nat. Arb. Forum June 11, 2008); see also Manpower, Inc. v. Comdot Internet Servs. Private Ltd., FA 1221627 (Nat. Arb. Forum Oct. 13, 2008).

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant owns multiple trademark registrations for the CHARLOTTE RUSSE mark with the USPTO (e.g., Reg. No. 1,485,692 issued April 19, 1988).  The Panel finds that Complainant established rights in the CHARLOTTE RUSSE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See 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)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s CHARLOTTE RUSSE mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain names contain misspelled versions of Complainant’s mark and add the generic top-level domain (“gTLD”) “.com.”  The Panel finds that a disputed domain name that contains a misspelled version of a complainant’s mark is not distinguishable from the mark it contains but instead is a confusingly similar domain name using the complainant’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 Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).  The Panel also finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s CHARLOTTE RUSSE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant met its burden of making a prima facie case showing that Respondent lacks rights to and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  Therefore, the burden of proof shifts to Respondent to show that it does have such rights to or legitimate interests in the disputed domain names under Policy ¶ 4(c).  See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).  However, Respondent has failed to respond to the Complaint.  Consequently, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”). Although the Panel may presume that Respondent lacks such rights and interests when no appearance is made in a proceeding, this Panel, nevertheless, examines the record in consideration of the factors cited under Policy ¶ 4(c) to see if the evidence suggests that Respondent has any rights or interests.

 

Respondent offered no evidence, and the evidence in the record lacks any suggestion that Respondent is commonly known by the disputed domain names.  Complainant also asserts that Respondent is not authorized to use the CHARLOTTE RUSSE mark.  The WHOIS information identifies registrant as “COMDOT INTERNET SERVICES PRIVATE LIMITED.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Respondent’s disputed domain names resolve to websites featuring advertisements and links relating to Complainant’s competitors in the clothing and accessories industry.  These circumstances permit the Panel to make an inference that Respondent profits through the generation of click-through fees from the links to Complainant’s competitors.  Therefore, the Panel finds that Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).  See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant contends that Respondent has engaged in the practice of typosquatting.  Respondent is taking advantage of Internet users that are attempting to reach Complainant, but mistakenly misspell Complainant’s CHARLOTTE RUSSE mark.  The Panel finds that Respondent’s engagement in the practice of typosquatting is evidence that supports a finding that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in other UDRP proceedings, wherein the disputed domain names were ordered to be transferred from Respondent to the respective complainants in those cases.  See Morgan Stanley v. Comdot Internet Servs. Private Ltd., FA 1178866 (Nat. Arb. Forum June 9, 2008); see also Mike Anderson Chevrolet of Merrillville, Inc. v. COMDOT INTERNET SERVS. PRIVATE LTD., FA 1177933 (Nat. Arb. Forum June 11, 2008); see also Manpower, Inc. v. Comdot Internet Servs. Private Ltd., FA 1221627 (Nat. Arb. Forum Oct. 13, 2008).  The Panel finds that Respondent has therefore engaged in a pattern of conduct that supports findings of bad faith registration and use under the parameters of Policy ¶ 4(b)(ii).  See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).

 

The Panel finds that the circumstances suggest that Respondent intended to disrupt Complainant’s business and to take advantage of Complainant’s goodwill surrounding its mark by displaying third-party links to Complainant’s competitors in the clothing and accessories industry.  The Panel therefore finds that Respondent registered and used these disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant contends that Respondent is gaining commercially by this diversion through click-through fees that Respondent is presumably receiving from its use of the disputed domain names. The Panel finds that Respondent is intentionally using the disputed domain names for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), the Panel finds that this use for commercial gain also constitutes evidence of registration and use in bad faith.  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Complainant also alleges that typosquatting, standing alone, constitutes evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  The Panel agrees and finds that Respondent’s disputed domain names are merely typosquatted versions of Complainant’s CHARLOTTE RUSSE mark, and that such typosquatting supports findings of bad faith registration and use under Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <carlotterusse.com>, <charlott-russe.com>, <charlotteerusse.com>, <charlotterrusse.com>, <chartlotterusse.com>, and <chrlotterusse.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: March 15, 2010

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum