Claim Number: FA1001001301936
Complainant is Frederick's of Hollywood Group Inc. (“Complainant”), represented by , of CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <frediricksofhollywood.com>, registered with Moniker.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 6, 2010; the National Arbitration Forum received a hard copy of the Complaint January 7, 2010.
On January 9, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <frediricksofhollywood.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker verified that Respondent is bound by the Moniker 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 January 14, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 3, 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@frediricksofhollywood.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 10, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The
domain name that Respondent registered, <frediricksofhollywood.com>,
is confusingly similar to Complainant’s
2. Respondent has no rights to or legitimate interests in the <frediricksofhollywood.com> domain name.
3. Respondent registered and used the <frediricksofhollywood.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Frederick's of
Hollywood Group Inc., holds multiple trademark registrations for its
Respondent, NA Na c/o Digi
Real Estate Foundation, registered the disputed domain name November 26,
2005. The disputed domain name resolves
to a website featuring generic links to third-party websites, some of which
directly compete with Complainant.
Respondent presumably receives pay-per-click fees from these linked
websites.
Complainant contends that Respondent has been the respondent in multiple other UDRP proceedings. See Citigroup Inc. v. Digi Real Estate Foundation, FA964679 (Nat. Arb. Forum May 30, 2007); see also Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. Digi Real Estate Foundation, FA590680 (Nat. Arb. Forum December 27, 2005).
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.
Complainant asserts rights in its
Complainant argues that
Respondent’s <frediricksofhollywood.com> domain name is confusingly similar to Complainant’s
The Panel finds that the deletion of the spaces between the
words in Complainant’s mark does not distinguish the disputed domain name from
Complainant’s mark. See Bond & Co. Jewelers, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have such rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant made a prima facie case in support of its contentions and Respondent failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Nevertheless, the Panel will examine the record to determine if the evidence suggests that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information for the disputed domain name lists the
registrant as “NA Na c/o Digi Real Estate
Foundation.” Complainant reports that it
has not licensed, authorized, or permitted Respondent to register domain names
incorporating Complainant’s mark.
Without evidence to the contrary, the Panel finds that Respondent is not
commonly known by the disputed domain name pursuant to 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 Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent’s
disputed domain name was registered November 26, 2005. The disputed domain name resolves to a website featuring generic links to third-party
websites, some of which directly compete with Complainant. Respondent presumably receives pay-per-click
fees from these linked websites. The
Panel finds that Respondent is not using the disputed domain name in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and is not making a legitimate
noncommercial or fair use of the disputed domain name pursuant to Policy ¶
4(c)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the
respondent was not using the <tesco-finance.com> domain name in
connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use by maintaining a web page with misleading
links to the complainant’s competitors in the financial services industry); see
also Persohn v. Lim, FA 874447 (Nat.
Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed
domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by redirecting Internet users to a commercial search engine website with
links to multiple websites that may be of interest to the complainant’s
customers and presumably earning “click-through fees” in the process).
Complainant argues that Respondent is using a tyopgraphical error in the confusingly similar disputed domain name to redirect Internet users to Respondent’s website and that Respondent is enjoying monetary gain from this use through the collection of pay-per-click fees. The Panel agrees and finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the 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 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 Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent has been the respondent
in multiple other UDRP proceedings. See Citigroup Inc.
v. Digi Real Estate Foundation, FA964679 (Nat. Arb. Forum May 30, 2007); see also Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. Digi Real
Estate Foundation, FA590680 (Nat. Arb. Forum December 27, 2005). The Panel finds that the filing of numerous
other UDRP proceedings against Respondent supports findings of bad faith
registration and use under Policy ¶ 4(b)(ii).
See Westcoast Contempo Fashions
Ltd. v.
The Panel also finds that Respondent’s registration and use of the disputed domain name to link Internet users to websites featuring third-party links, which are in competition with Complainant, constitutes a disruption of Complainant’s business and also supports findings of 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 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)).
The Panel finds that Respondent’s use of the disputed domain name and Respondent’s attempt to intentionally attract Internet users and profit through the receipt of pay-per-click fees by creating a strong likelihood of confusion with Complainant’s FREDERICK’S OF HOLLYWOOD mark also supports findings of bad faith pursuant to Policy ¶ 4(b)(iv). See 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)(iv) 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); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
As established previously, Respondent has engaged in the
practice of typosquatting by intentionally misspelling Complainant’s
The Panel finds that Complainant satisfied the element of ICANN 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 <frediricksofhollywood.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 24, 2010
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