Deli Management, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin
Claim Number: FA1001001301280
Complainant is Deli Management, Inc. (“Complainant”), represented by Jennifer
L. Dean, of Drinker Biddle & Reath LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jasondeli.com>, registered with Fabulous.com Pty Ltd.
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 January 4, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 5, 2010.
On January 4, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <jasondeli.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 January 8, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 28, 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 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 February 3, 2010, 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 owns and operates the chain of restaurants known as JASON’S DELI.
Complainant owns multiple trademark registrations for the JASON’S DELI mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,325,158, issued March 12, 1985).
Respondent is not commonly known by, and has never been licensed to register, the disputed domain name.
Respondent registered the <jasondeli.com> domain name on August 22, 2000.
Respondent’s domain name resolves to a website displaying third-party links to websites unrelated to Complainant.
Respondent’s <jasondeli.com> domain name is confusingly similar to Complainant’s JASON’S DELI mark.
Respondent does not have any rights to or legitimate interests in the <jasondeli.com> domain name.
Respondent registered and uses the <jasondeli.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 service mark 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
i. Respondent has no rights or legitimate interests in respect of the domain name; and
ii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the JASON’S DELI mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that a complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter, for purposes of paragraph 4(a)(i) of the Policy, whether a complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <jasondeli.com> domain name is confusingly similar to Complainant’s JASON’S DELI mark pursuant to Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark, with the exception of an apostrophe and the letter “s,” and adds the generic top-level domain (“gTLD”) “.com.” The omission of the letter “s” from the domain does not escape a finding of confusing similarity between the domain name and a competing mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to a complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”).
In addition, the omission of the apostrophe in forming the disputed domain name is such a subtle difference from Complainant’s mark that it does not avoid a conclusion of confusing similarity between the disputed domain name and the mark. 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 a domain name from a 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.
Finally, the addition of a gTLD fails to distinguish a disputed domain name from a registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect a domain name for the purpose of determining whether it is identical or confusingly similar).
Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations, 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, while Respondent has failed to submit a Response to these proceedings. We are therefore free to presume that Respondent lacks any rights or legitimate interests in the disputed odmain name to satisfy the requirements of the Policy. See 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 evidence of record, in light of the considerations recited in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interest in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by, and has never been licensed to register, the disputed domain name. The registrant’s WHOIS information appears to confirm that demonstrates that Respondent is not known by the disputed domain name. Therefore, we are constrained to conclude that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii) See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com> where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also note that there is no dispute as to Complainant’s
allegation that Respondent’s domain name
resolves to a website that features hyperlinks to unrelated third-party
websites. From the circumstances here
presented, we may presume that Respondent receives click-through fees for the
directed visits of Internet users to these hyperlinks. Therefore, we conclude that Respondent’s use
of the disputed domain name as alleged does not represent a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Constellation Wines
Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).
In addition, we take note of the fact that Respondent’s use of the disputed domain name constitutes typosquatting. This is because the domain name contains common typographical errors and misspellings of Complainant’s JASON’S DELI mark. The use of a domain name formed by such calculated typing errors so as to redirect Internet users seeking Complainant’s official website located at the <jasonsdeli.com> domain name to a website displaying links to unrelated third-party websites demonstrates that Respondent has no rights or interests in the contested domain name which are cognizable under the Policy. See 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’”); 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, a 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 thus finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent’s domain name resolves to a website that
displays the aforementioned hyperlinks, for which, presumably, for visits to
which Respondent presumably receives click-through fees. This use of the disputed domain name by
Respondent creates a likelihood of confusion as to Complainant’s possible affiliation
with the disputed domain name.
Accordingly, we conclude that Respondent’s conduct in registering and
using the contested domain name constitutes bad faith registration and use of
the domain under Policy ¶ 4(b)(iv). See
Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be
Moreover, Respondent’s use of the disputed domain name as alleged in the Complaint, constitutes typo-squatting, which is committed by deliberately misspelling Complainant’s JASON’S DELI mark in the formation of the domain name. Internet users may inadvertently misspell Complainant’s mark when attempting to reach Complainant, and may thus reach Respondent’s resolving website and thereby become confused. Respondent evidently attempts to profit from Internet users’ mistake and resulting confusion. Therefore, we conclude that Respondent’s practice of typo-squatting constitutes bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r email@example.com 1111111111, D2003-0232 (WIPO May 22, 2003) (finding that a respondent registered and used a domain name in bad faith where that 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 a 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, evidencing typo-squatting and thus bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has 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 <jasondeli.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 17, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum