Frederick's of Hollywood Group Inc. v. Domain Admin c/o Taranga Services Pty Ltd
Claim Number: FA1001001301302
Complainant is Frederick's of Hollywood Group Inc. (“Complainant”), represented by Citizen Hawk, Inc., California, USA. Respondent is Domain Admin c/o Taranga Services Pty Ltd (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com>, registered with Moniker.
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.
Sandra J. Franklin 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 5, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names are registered with Moniker and that Respondent is the current registrant of the names. Moniker has verified that Respondent is bound by the Moniker 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 postmaster@freddericksofhollywood.com, postmaster@fredericksofholloywood.com, postmaster@fredericsofhollywood.com, and postmaster@frederiksofhollywood.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 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names are confusingly similar to Complainant’s FREDERICK’S OF HOLLYWOOD mark.
2. Respondent does not have any rights or legitimate interests in the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names.
3. Respondent registered and used the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Frederick’s of Hollywood Group Inc., develops, markets, and sells women’s lingerie products. Complainant sells these products through retail stores, Complainant’s catalog, and online at Complainant’s websites under the <fredericks.com> and <fredericksofhollywood.com> domain names. Complainant began offering its lingerie products in 1946. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its FREDERICK’S OF HOLLYWOOD mark (e.g., Reg. No. 1,627,771 issued December 11, 1990).
Respondent registered the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names no earlier than August 4, 2004. The disputed domain names resolve to parked websites that feature hyperlinks to and advertisements for third-party companies. Some of these third-parties directly compete with Complainant by offering competing lingerie products.
Respondent has been the respondent in other UDRP proceedings in which disputed domain names were transferred from Respondent to the respective complainants. See Capital One Fin. Co. v. Domain Admin c/o Taranga Servs. Pty Ltd., FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Eidos Intersctive Ltd. v. Moniker Privacy Servs./Taranga Servs. Pty Ltd., D2009-0124 (WIPO March 31, 2009).
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 FREDERICK’S OF HOLLYWOOD mark with the USPTO (e.g., Reg. No. 1,627,771 issued December 11, 1990). Previous panels have held that a 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 FREDERICK’S OF HOLLYWOOD 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)).
Respondent’s <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names contain common misspellings of Complainant’s FREDERICK’S OF HOLLYWOOD mark. Respondent simply removes the apostrophe and spaces from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com” to these common misspellings. The Panel finds Respondent’s use of common misspellings of Complainant’s mark, removal of an apostrophe and spaces, and the addition of a gTLD are insufficient to adequately distinguish the disputed domain names from Complainant’s mark. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark); 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also 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). Thus, the Panel concludes that Respondent’s <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names are confusingly similar to Complainant’s FREDERICK’S OF HOLLYWOOD mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.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 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 <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names. Complainant asserts that Respondent has never been authorized to use the FREDERICK’S OF HOLLYWOOD mark. The WHOIS information lists the domain name registrant as “Domain Admin c/o Taranga Services Pty Ltd.” Therefore, the Panel finds Respondent has failed to establish rights or legitimate interests in the disputed 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 uses the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names to resolve to websites featuring advertisements for and hyperlinks to third-party companies, including competitors of Complainant’s lingerie business. Respondent likely profits from these hyperlinks and advertisements. The Panel finds that this 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 names under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); 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 <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names constitutes typosquatting. The Panel finds that Respondent’s use of domain names that are common misspellings of the FREDERICK’S OF HOLLYWOOD mark to redirect Internet users seeking Complainant’s website to Respondent’s website is further evidence that Respondent lacks 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names is a part of a pattern of bad faith use and registration. Respondent has been the respondent in other UDRP proceedings in which disputed domain names were transferred from Respondent to the respective complainants in those cases. For example, see Capital One Fin. Co. v. Domain Admin c/o Taranga Servs. Pty Ltd., FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Eidos Intersctive Ltd. v. Moniker Privacy Servs./Taranga Servs. Pty Ltd., D2009-0124 (WIPO March 31, 2009). The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See 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); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).
Respondent uses the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names to resolve to websites featuring hyperlinks to and advertisements for Complainant’s competitors in the lingerie business. The Panel finds Respondent’s use of confusingly similar disputed domain names for this purpose constitutes a disruption to Complainant’s bsuiness, which is evidence of bad faith registration and use pursuant to 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 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).
The Panel infers Respondent receives click-through fees from the aforementioned hyperlinks and advertisements. Respondent is using the confusingly similar disputed domain names to profit from Internet user’s confusion as to Complainant’s affiliation with the resolving websites. The Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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).”); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent has engaged in typosquatting through its use of the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names, which are common misspellings of Complainant’s FREDERICK’S OF HOLLYWOOD 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freddericksofhollywood.com>, <fredericksofholloywood.com>, <fredericsofhollywood.com>, and <frederiksofhollywood.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 17, 2010
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