national arbitration forum

 

DECISION

 

Frederick's of Hollywood Group Inc. v. Dong Wang

Claim Number: FA1001001301284

 

PARTIES

Complainant is Frederick's of Hollywood Group Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Dong Wang (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com>, registered with Dotregistrar.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

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, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names.  Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 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@freddericks.com, postmaster@fredericksofholywood.com, and postmaster@fredreicks.com> by e-mail.

 

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

 

On February 1, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names are confusingly similar to Complainant’s FREDERICKS.COM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names.

 

3.      Respondent registered and used the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Frederick’s of Hollywood Group Inc., markets and sells lingerie.  Complainant has been in operation since 1946.  Complainant has sold its lingerie products under the name FREDERICK’S since that time.  Complainant holds multiple trademarks with the United States Patent and Trademark Office ("USPTO") for its FREDERICKS.COM (e.g., Reg. No. 2403596 issued November 14, 2000).

 

Respondent, Dong Wang, registered the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names on November 10, 2002.  The disputed domain names resolve to a parked website featuring generic hyperlinks, some of which resolve to competing lingerie stores.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant holds multiple trademark registrations of the FREDERICKS.COM mark with the USPTO (e.g., Reg. No. 2403596 issued November 14, 2000).  Respondent, Dong Wang, registered the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names on November 10, 2002.

 

Complainant contends it has established rights in the FREDERICKS.COM mark.  Previous panels have found that trademark registration with a federal trademark authority is sufficient to establish rights in a mark.  See 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); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).  Previous panels have also found that a complainant is not required to register its mark within the country of the respondent.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Complainant holds multiple trademark registrations of the FREDERICKS.COM mark with the USPTO (e.g., Reg. No. 2403596 issued November 14, 2000).  Respondent, Dong Wang, registered the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names on November 10, 2002. Therefore, the Panel finds Complainant has established rights in the FREDERICKS.COM mark through Complainant’s trademark registration.

 

Respondent’s <freddericks.com> and <fredreicks.com> domain names contain common misspellings of Complainant’s FREDERICKS.COM mark by adding the letter “d” or by transposing the letters “e” and “r.”  The Panel finds Respondent’s use of common misspellings of Complainant’s mark fails to adequately distinguish the disputed domain names from Complainant’s mark.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”); see also 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 Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).  Respondent’s <fredericksofholywood.com> domain name contains Complainant’s entire FREDERICKS.COM mark and simply adds the descriptive terms “of hollywood,” which refer to Complainant’s company name, “Frederick’s of Hollywood Group Inc.”  The Panel finds the addition of descriptive terms is insufficient to adequately distinguish the disputed domain name from Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).  Therefore, the Panel finds Respondent’s <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names are confusingly similar to Complainant’s FREDERICKS.COM mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names.  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 names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).

 

The WHOIS information, provided by Complainant, lists Respondent as “Dong Wang.”  Respondent fails to offer evidence contradicting this information and showing Respondent is commonly known by the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names.  There is no other evidence on the record showing Respondent is commonly known by the disputed domain names.  Complainant further asserts that Respondent is not authorized to use the FREDERICKS.COM mark.  Therefore the Panel finds that Respondent is not commonly known by the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

 

Respondent is using the <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names to resolve to websites featuring hyperlinks to Complainant’s competitors in the lingerie business.  The Panel finds this use of the confusingly similar disputed domain names 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 domain name under Policy ¶ 4(c)(iii).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).

 

In addition, Respondent’s use of the <freddericks.com> and <fredreicks.com> domain names constitutes typosquatting.  The Panel finds that Respondent’s use of domain names that are common misspellings of the FREDERICKS.COM mark to redirect Internet users seeking Complainant’s website fails to establish rights or interests pursuant to Policy ¶ 4(a)(ii).  See 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).”); see also 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”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Respondent’s <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names resolve to websites featuring hyperlinks relating to Complainant’s competitors in the lingerie business.  Complainant claims that Respondent’s use of the disputed domain names disrupts Complainant’s lingerie business because Internet users looking to buy lingerie products from Complainant may be redirected to Complainant’s competitors through Respondent’s confusingly similar website.  The Panel finds Respondent’s use of the disputed domain names does disrupt Complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

The Panel infers Respondent receives click-through fees from the links relating to Complainant’s competitors in the lingerie business.  Internet users may become confused as to Complainant’s affiliation with and sponsorship of the competing hyperlinks and websites resolving from the disputed domain names.  The Panel finds Respondent’s receipt of click-through fees constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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).”).

 

Furthermore, Respondent has engaged in typosquatting through its use of the <freddericks.com> and <fredreicks.com> domain names, which are common misspellings of Complainant’s FREDERICKS.COM mark.  Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); 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 Policy ¶ 4(a)(iii) has been satisfied.

 

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 <freddericks.com>, <fredericksofholywood.com>, and <fredreicks.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  February 3, 2010

 

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