national arbitration forum

 

DECISION

 

Frederick's of Hollywood Group, Inc. v. SMVS Consultancy Private Limited

Claim Number: FA1001001302531

 

PARTIES

Complainant is Frederick's of Hollywood Group Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is SMVS Consultancy Private Limited (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fredericksofhollyhood.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically January 11, 2010; the National Arbitration Forum received a hard copy of the Complaint January 12, 2010.

 

On January 12, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <fredericksofhollyhood.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 18, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 8, 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@fredericksofhollyhood.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 17, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <fredericksofhollyhood.com>, is confusingly similar to Complainant’s FREDERICK’S OF HOLLYWOOD mark.

 

2.      Respondent has no rights to or legitimate interests in the <fredericksofhollyhood.com> domain name.

 

3.      Respondent registered and used the <fredericksofhollyhood.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Frederick’s of Hollywood Group Inc., holds registrations for the FREDERICK’S OF HOLLYWOOD and related marks in association with its retail and mail order services specializing in women’s clothing, lingerie, undergarments, cosmetics and accessories.  Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FREDERICK’S OF HOLLYWOOD and related marks (e.g., Reg. No. 1,627,771 issued Dec. 11, 1990).

 

Respondent, SMVS Consultancy Private Limited, registered the <fredericksofhollyhood.com> domain name March 16, 2007.  Respondent’s disputed domain name redirects Internet users to a directory website displaying various third-party links, some of which offer products and services that compete with Complainant.

 

Respondent is a serial cybersquatter who has been the respondent in at least two other UDRP proceedings in which the respective disputed domain names were transferred to the respective complainants.  See, e.g., LEGO Juris A/S v. PrivacyProtect.org/ SMVS Consultancy Private Ltd, D2009-1094 (WIPO Oct. 9, 2009); United Health Group Inc. v. SMVS Consultancy Privacy Limited, FA 1275517 (Nat. Arb. Forum Sept. 4, 2009).

 

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."

 

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.

 

Identical to and/or Confusingly Similar

 

Complainant owns multiple trademarks for the FREDERICK’S OF HOLLYWOOD and related marks with the USPTO (e.g., Reg. No 1,627,771 issued Dec. 11, 1990).  The Panel finds Complainant established rights in the FREDERICK’S OF HOLLYWOOD mark for the purposes of Policy ¶ 4(a)(i) through its USPTO trademark registrations.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant asserts that Respondent’s disputed domain name is confusingly similar to Complainant’s FREDERICK’S OF HOLLYWOOD mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain name varies only slightly from Complainant’s mark: the disputed domain name exchanges the “w” in “Hollywood” for an “h,” deletes the apostrophe and spaces between words, and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that a simple misspelling that exchanges one letter for another fails to differentiate the disputed domain name from the Complainant’s mark.  See Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling); see also Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”).  The Panel also finds that deleted apostrophes and spaces do not prevent confusing similarity or distinguish the disputed domain name from the Complainant’s 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 the domain name from the mark); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”).  Similarly, an appended gTLD is irrelevant in proving confusing similarity between the disputed domain name and Complainant’s mark because a gTLD is a required element of domain names.  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s FREDERICK’S OF HOLLYWOOD mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name.  Once Complainant makes a prima facie case, the burden of proof shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name, pursuant to Policy ¶ 4(c).  The Panel finds that Complainant established a prima facie case in these proceedings.  Since Respondent failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name.  The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if the evidence suggests that Respondent has such rights or legitimate interests in the disputed domain name.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 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.”)

 

Complainant contends that Respondent is not commonly known by the disputed domain name.  The WHOIS information lists the registrant of the disputed domain name as “SMVS Consultancy Private Limited,” which demonstrates that the Respondent is known by something other than the disputed domain name.  Additionally, no evidence indicates that the Respondent is commonly known by the disputed domain name.  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by the disputed domain name and accordingly has not established any rights or legitimate interests in the disputed domain name.  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also 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).

 

Respondent’s disputed domain name redirects Internet users to a website listing various links for products and third-party websites, some of which compete with Complainant’s business.  The Panel finds this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

Complainant urges that Respondent is capitalizing on a simple misspelling of Complainant’s FREDERICK’S OF HOLLYWOOD mark in order to cause the unsuspecting Internet user seeking Complainant to arrive at Respondent’s site.  The Panel finds this practice constitutes typosquatting, which is supports findings that Respondent has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); 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).

 

Registration and Use in Bad Faith

 

Respondent has engaged in a pattern of cybersquatting as evidenced by several adverse UDRP proceedings against Respondent.  See, e.g., LEGO Juris A/S v. PrivacyProtect.org/ SMVS Consultancy Private Ltd, D2009-1094 (WIPO Oct. 9, 2009); United Health Group Inc. v. SMVS Consultancy Privacy Limited, FA 1275517 (Nat. Arb. Forum Sept. 4, 2009).  Because Respondent has shown a pattern of registering domain names containing third-party marks, as evidenced by prior UDRP proceedings, the Panel finds that this pattern of use supports findings of bad faith registration and use under Policy ¶ 4(b)(ii).  Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).

 

Respondent’s disputed domain name resolves to a website containing links to third-party websites, some of which compete with Complainant.  Such an activity clearly disrupts Complainant’s business because Internet users seeking Complainant’s products are diverted against their will to sites featuring competing products.  The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors also supports findings of bad faith registration and use under Policy ¶ 4(b)(iii).  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)(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); 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)).

 

Respondent’s simple misspelling of Complainant’s mark in the disputed domain name is intended to attract Internet users seeking Complainant’s products.  When the Internet users are diverted to Respondent’s website and then click on any of the third-party links, the Respondent presumably receives compensation in the form of “click-through” fees.  The Panel finds that Respondent’s efforts to mislead Internet users and divert those  seeking Complainant’s business for its own commercial gain, supports findings of bad faith registration and use under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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).”).

 

The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar disputed domain name.  The Panel finds that this practice of typosquatting is evidence standing alone of bad faith registration and use under Policy ¶ 4(a)(iii).  See, e.g., Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). 

 

Therefore, for the above reasons, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii).  See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatologica.com> domain name was a “simple misspelling” of the complainant’s DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <fredericksofhollyhood.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: March 3, 2010

 

 

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