Cabela's, Inc. v. Rodrique Calasbo
Claim Number: FA1001001301888
Complainant is Cabela's, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cabelasa.com>, registered with Dynadot, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2010.
On January 7, 2010, Dynadot, LLC. confirmed by e-mail to the National Arbitration Forum that the <cabelasa.com> domain name is registered with Dynadot, LLC. and that Respondent is the current registrant of the name. Dynadot, LLC. has verified that Respondent is bound by the Dynadot, LLC. 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@cabelasa.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 Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds 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:
Trademark/Service Mark Information:
[i].
CABELA'S for retail store services and mail order
services in supplying sporting and related goods (U.S. Reg. No. 1151981);
[ii].
CABELAS.COM for mail order and retail store services in
the field of fishing, hunting and outdoor gear (U.S. Reg. No. 2247977);
[iii].
CABELAS for mail order, retail store services and
on-line retail store service, in the field of fishing, hunting and outdoor gear
(U.S. Reg. No. 3130554);
[iv].
CABELA'S for, namely, clothing, metal goods, hand
tools, firearms, camping, archery and fishing goods, leather goods, paper goods
and printed matter, glassware, clocks and foods (U.S. Reg. No. 2163936);
[v].
CABELA'S GREAT OUTDOOR DAYS for Retail store services,
and computerized online retail store services, in the fields of supplies and
equipment for fishing, hunting and recreational activities (U.S. Reg. No.
3245500);
[vi].
CABELA'S CLUB for newsletters in the fields of travel
for hunting and fishing programs, and relating to financial issues, catalogs in
the fields of clothing and accessories, sporting goods, and camping equipment,
credit cards (U.S. Reg. No. 2116567).
Complainant is the owner of numerous federal trademark
and/or service mark registrations in the United States that consist of or
include the word CABELAS. The marks
cited above are hereafter referred to as the “Marks.”
FACTUAL
AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Complainant, Cabela’s, Inc. (Cabela’s), is a corporation
with its principal place of business in
A significant portion of Cabela’s retail sales are conducted online at <www.cabelas.com>. The company’s web site went live in 1998 and has been well received. The site features continuously updated content site, community pages, company information and much more. In 2006 Cabela's web site was ranked No. 1 in the outdoor retailer industry.
Cabela’s is publicly traded on the NASDAQ under the symbol CAB. On June 25, 2004, when Cabela's made its debut on the New York Stock Exchange, investors drove the stock's value up 40% in the opening minutes of trading, making it one of the most successful Wall Street debuts to date. Cabela’s has clearly established itself in the outdoor apparel and equipment market and enjoys wide consumer recognition.
Furthermore, Cabela’s has continuously used the CABELAS marks in connection with retail store services since 1961, and since 1998 for on-line retail store services.
Cabela’s owns the Marks for which it has obtained federal trademark registrations. None of these federal mark registrations have been abandoned cancelled or revoked.
Cabela’s has spent hundreds of thousands of dollars in advertisement and promotion of the Marks in media and on the Internet. Based on its federal trademark registrations and extensive use, Cabela’s owns the exclusive right to use the Marks in connection with retail store services and on-line retail store services featuring sporting goods, namely, in the field of fishing, hunting and outdoor gear.
a)
By virtue of its federal trademark and/or service mark
registrations, Complainant is the owner of the Complainant’s Mark(s). See, e.g., United Way of America v. Alex
Zingaus, NAF Claim No. FA0707001036202 (“Panels have long recognized
Complainant’s registration of a mark with a trademark authority is sufficient
to confer rights in the mark pursuant to Policy ¶4(a)(i)”).
When comparing the Disputed Domain Name(s) to the Complainant’s Mark(s), the
relevant comparison to be made is between only the second-level portion of the
Disputed Domain Name(s) and the Complainant’s Mark(s). Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (finding
that the top-level domain, such as “.net” or “.com”, does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 (“[t]he 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.”)
The Disputed Domain Name(s) are confusingly similar to Complainant’s Mark(s)
because they differ by only a single character from Complainant’s Mark(s), or
because they differ by only the juxtaposition of two characters when compared
to Complainant’s Mark(s). For clarification, the Disputed Domain Name(s)
contain either:
[i]. the addition of one extra character, or...
[ii]. the removal of one character, or...
[iii]. one character which is incorrect, or...
[iv]. two juxtaposed characters
as
compared to Complainant’s Mark(s).
The Disputed Domain Name(s) are, simply put, a classic example of “typosquatting”.
The practice of typosquatting is designed to take advantage of Internet users’
typographical errors, which means the names must be confusingly similar by
design.
See Reuters Ltd. v.
Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain
name which differs by only one letter from a trademark has a greater tendency
to be confusingly similar to the trademark where the trademark is highly
distinctive); Caterpillar Inc. v. Center
for Ban on Drugs, NAF Claim No. FA0603000661437 (“the omission of a single
letter from Complainant’s mark(s) does not adequately distinguish the Disputed
Domain Name from the mark”); and Victoria’s
Secret v. Zuccarini, NAF Claim No. FA0010000095762 (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 mark(s)).
b)
Respondent has no rights or legitimate interests
in respect of the Disputed Domain Name(s) for the following reasons:
[i].
Respondent has not
been commonly known by the Disputed Domain Name(s). See Policy, ¶4(c)(ii). Where, as
here, “the WHOIS information suggests Respondent is known as” an entity other
than the trademark associated with Complainant, and Complainant has not “licensed,
authorized, or permitted Respondent to register domain names incorporating
Complainant’s... mark,” a Panel should find that the Respondent is not commonly
known by the Disputed Domain Name. United Way of
[ii].
Respondent is not
sponsored by or legitimately affiliated with Complainant in any way.
[iii].
Complainant has not
given Respondent permission to use Complainant’s Mark(s) in a domain name.
[iv].
Respondent is using
(some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet
users to a website featuring generic links to third-party websites, some of
which directly compete with Complainant’s business. Presumably, Respondent
receives pay-per-click fees from these linked websites. As such, Respondent is
not using the domain name to provide a bona
fide offering of goods or services as allowed under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use as allowed
under Policy ¶4(c)(iii). See 24 Hour
Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
[v].
The earliest date on
which Respondent registered the Disputed Domain Name(s) was April 16, 2009, which is significantly after Complainant’s
registration of CABELAS.COM on February 08, 1995.
[vi].
The earliest date on
which Respondent registered the Disputed Domain Name(s) was April 16, 2009, which is significantly after
Complainant’s registration of their relevant Mark(s) with the USPTO.
[vii].
The earliest date on which
Respondent registered the Disputed Domain Name(s) was April 16, 2009, which is significantly after Complainant’s first
use in commerce as specified in their relevant registration with the USPTO.
c) The domain names should be considered as having been registered and being used in bad faith for the following reasons:
[i]. Respondent has ignored Complainant’s attempts to resolve the dispute outside of this administrative proceeding.
[ii]. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark(s) 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 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.”).
[iii].
Respondent is a recalcitrant, serial
cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision
databases reveal that Respondent has engaged in an ongoing pattern of such
behavior.
[iv].
Respondent holds registrations on other domain
names that appear to be straightforward examples of typosquatting. Although
those names are not directly involved in this complaint, they serve as further
evidence of bad faith intent on the part of Respondent. See Policy, ¶4(b)(ii) and Time Warner Inc. v.
Zone MP3, NAF Claim No. FA0706001008035 (typosquatting combined with
registration of as few as four domain names that are identical or confusingly
similar to “protected marks” is sufficient to establish a pattern leading to
bad faith). See also Citigroup Inc. v.
Digi Real Estate Foundation, NAF Claim No. FA0704000964679.
[v].
Respondent has caused the website(s) reachable by (some
or all of) the domain name to display Complainant’s Mark(s) spelled correctly
(even though the domain name is a misspelled version of the same mark). This
serves as further evidence of bad faith intent because it removes any doubt as
to whether or not the misspelling was intentionally designed to improperly
capitalize on Complainant’s famous Mark(s).
[vi].
Respondent has caused the
website(s) reachable by (some or all of) the Disputed Domain Name(s) to display
content and/or keywords directly related to the Complainant’s business. This
serves as further evidence of bad faith intent because it removes any doubt as
to whether or not the misspelling was intentionally designed to improperly
capitalize on Complainant’s famous Mark(s) and its related business.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cabela’s, Inc., is a world-wide leader in retailing outdoor outfitting products. Complainant sells its outdoor outfitting products through various mediums including mail-order, retail stores and its official website located at the website resolving from the <cabelas.com> domain name. Complainant 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).
Respondent registered the <cabelasa.com> domain name on April 16,
2009. Respondent’s disputed domain name
resolves to a website displaying third-party links to websites offering outdoor
outfitting products in competition with Complainant.
Complainant
offers evidence Respondent has a history of registering domain names infringing
upon the trademark rights of others and has been ordered by previous UDRP
panels to transfer the disputed domain names to the respective complainants. See The Royal Bank of Scotland
Group plc v. Calasbo, FA
1294397 (Nat. Arb. Forum Dec. 23, 2009); see also
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 obtained multiple trademark registrations for the CABELA’S mark with the USPTO (e.g., Reg. No. 1,151,981 issued April 21, 1981). The Panel finds Complainant has established rights in the CABELA’S 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 the 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 the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues Respondent’s <cabelasa.com> domain name is confusingly similar to Complainant’s CABELA’S mark pursuant to Policy ¶4(a)(i). Respondent’s disputed domain name contains Complainant’s CABELA’S mark, omits the apostrophe, adds the letter “a,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of the letter “a” to Complainant’s mark fails to create a distinguishable characteristic within the disputed domain name. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). In addition, the Panel finds the omission of an apostrophe in a disputed domain name is not material because apostrophes are not permissible characters for domain names (to hold to the contrary would mean anyone with an apostrophe in their mark could not bring a UDRP proceeding…clearly not an appropriate result). 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.”). Lastly, the Panel finds the addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established 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 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). Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant alleges Respondent lacks all rights and legitimate interests in the disputed domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove its rights and legitimate interests exist pursuant to Policy ¶4(a)(ii). The Panel finds Complainant has established a prima facie case and Respondent has failed to submit a Response in this proceeding. 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain name as “Rodrique Calasbo” and there is no evidence in the record to suggest Respondent is otherwise commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under 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 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).
The disputed domain name resolves to a website that features links to websites offering the products and services of Complainant’s competitors in the outdoor outfitting industry. The Panel finds the use of the disputed domain name to promote Complainant’s competitors is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has been the respondent in two other UDRP
proceedings where the disputed domain names were ordered to be transferred from
Respondent to the respective complainants in those cases. See The Royal Bank of Scotland
Group plc v. Calasbo, FA
1294397 (Nat. Arb. Forum Dec. 23, 2009); see also
Respondent’s disputed domain name resolves to a website featuring links to Complainant’s competitors in the outdoor outfitting industry. The confusingly similar disputed domain name likely attracts Internet users that are attempting to access Complainant’s website. Those Internet users are unknowingly redirected to the websites of Complainant’s competitors. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Respondent has created a likelihood of confusion for
commercial gain as to Complainant’s source and affiliation with the disputed domain name
and the resolving website. Respondent is
presumably monetarily benefiting through the receipt of referral fees accrued
when Internet users click on the competitive links. This constitutes evidence Respondent has
registered and used the disputed domain name in bad faith under Policy ¶4(b)(iv). See Asbury Auto. Group,
Inc. v.
The Panel finds Policy ¶4(a)(iii) 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 <cabelasa.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: March 2, 2010
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