Charlotte Russe Merchandising, Inc. v. Venkateshwara Distributor Private Limited c/o Caas Serviced Office solutions
Claim Number: FA1001001305562
Complainant is Charlotte Russe Merchandising, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <charletterusse.com> and <charlotterousse.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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 29, 2010; the National Arbitration Forum received a hard copy of the Complaint February 2, 2010.
On January 29, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <charletterusse.com>, and <charlotterousse.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. 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 February 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 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@charletterusse.com, and postmaster@charlotterousse.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <charletterusse.com> and <charlotterousse.com>, are confusingly similar to Complainant’s CHARLOTTE RUSSE mark.
2. Respondent has no rights to or legitimate interests in the <charletterusse.com> and <charlotterousse.com> domain names.
3. Respondent registered and used the <charletterusse.com> and <charlotterousse.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Charlotte Russe Merchandising, Inc., is a mall based specialty retailer of women’s clothing and accessories with more than 500 stores and annual sales in excess of $820 million. Complainant owns several trademarks with the United States Patent and Trademark Office (“USPTO”) for its CHARLOTTE RUSSE mark (e.g., Reg. No. 2,414,477 issued on December 19, 2000).
Respondent registered the <charletterusse.com> and <charlotterousse.com>
domain names August 30, 2000.
Respondent’s disputed domain names resolve to a website that displays
third-party links to websites both in competition with Complainant as well as
un-related to Complainant’s business.
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe upon trademark rights of others and has been ordered by previous UDRP
panels to transfer the disputed domain names to the respective complainants. See Cricket Commc’ns, Inc. v. Venkateshwara
Private Ltd., FA 1290435 (Nat. Arb. Forum Dec. 2, 2009); see also Pac. Sunwear.com Corp. v.
Venkateshwara Private Ltd., FA 1279901 (Nat. Arb. Forum Sept. 29, 2009); see also H Samuel Ltd. v. PrivacyProtect.org
& Venkateshwara Private Ltd., D200090973 (WIPO Sept. 7, 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."
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 owns numerous trademark registrations with the
USPTO for its CHARLOTTE RUSSE mark (e.g.,
Reg. No. 2,414,477 issued on December 19, 2000). Complainant contends that its trademark
registration need not be within the country where Respondent resides for
purposes of Policy ¶ 4(a)(i) analysis. The Panel finds that Complainant established
rights in the CHARLOTTE RUSSE mark through its registrations with the USPTO,
and the Panel further finds that the trademark registration need not be in the
country of Respondent for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes,
FA 652743 (Nat. Arb. Forum Apr.
17, 2006) (“Complainant has established rights in the MICROSOFT mark through
registration of the mark with the USPTO.”); 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). The Panel
further finds that the applicable date of a trademark is the filing date with
the USPTO for purposes of Policy ¶ 4(a)(i), which in
this case was August 19, 1998. See Phoenix
Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The
effective date of Complainant's federal rights is . . . the filing date of its
issued registration. Although it might be possible to establish rights prior to
that date based on use, Complainant has submitted insufficient evidence to
prove common law rights before the filing date of its federal registration.”); see also Hershey Co. v. Reaves,
FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights
in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the
trademark application and predate [the] respondent’s registration”).
Complainant argues that the <charletterusse.com> and <charlotterousse.com> domain names are confusingly similar to its CHARLOTTE RUSSE mark. Complainant submits that by simply misspelling its mark by replacing the letter “o” with the letter “e” and adding the letter “o” in the disputed domains, as well as by removing the space between the words, and adding the generic top level domain name (“gTLD”) “.com” that Respondent does not create domain names distinct from Complainant’s mark. The Panel finds that Respondent, by intentionally misspelling Complainant’s mark as well as taking out the space between the words, has not sufficiently distinguished the disputed domain names from Complainant’s mark. 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 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.”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The Panel further finds that addition of the gTLD “.com” is not relevant for purposes of a Policy ¶ 4(a)(i) analysis. See 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); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark for purposes of Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <charletterusse.com> and <charlotterousse.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant makes a prima facie case, the burden of proof shifts to Respondent to prove that it does have rights to or interests in the disputed domain names. 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 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.”). The Panel finds that the Complainant made a prima facie case. Respondent failed to respond in these proceedings and the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain names. This Panel, however, examines the record to if it suggests that Respondent has such rights or legitimate interests in the disputed domains pursuant to Policy ¶ 4(c). See 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.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complaint argues that Respondent is not commonly known by the disputed domain names, and that Complainant has not given Respondent permission to use Complainant’s mark. The WHOIS information indicates that Respondent is known as “Venkateshwara Distributor Private Limited,” and no evidence in the record suggests that Respondent is commonly known by the <charletterusse.com> and <charlotterousse.com> domain names. Without affirmative evidence of Respondent being commonly known by the disputed domain names, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 of 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).
Complainant further asserts that Respondent’s disputed
domain names are not being used in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain names.
The Panel agrees. Respondent’s disputed domain names each resolve to a
website that displays click-through links to websites both in competition with
and unrelated to Complainant, presumably for profit. The Panel finds that Respondent’s use of the
disputed names to redirect Internet users to websites in competition with
Complainant as well as websites unrelated to Complainant’s business, presumably
for financial gain, does not constitute 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). See Jerry
Damson, Inc. v.
Complainant further argues that Respondent is taking
advantage of Internet users trying to reach Complainant’s official <charlotterusse.com>
and <charlotte-russe.com> domain names by using common misspellings of
Complainant’s CHARLOTTE RUSSE mark. The
Panel finds that Respondent’s conduct constitutes typosquatting
and is evidence that Respondent
lacks any rights or legitimate interests in the disputed domain names under
Policy ¶ 4(a)(ii). See Microsoft
Corp. v. Domain Registration
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent has been the respondent in other UDRP
proceedings, where the disputed domain names were ordered to be transferred
from Respondent to the respective complainant’s in those cases. See Cricket Commc’ns, Inc.
v. Venkateshwara Private Ltd., FA 1290435 (Nat. Arb. Forum Dec. 2, 2009); see also Pac. Sunwear.com Corp. v.
Venkateshwara Private Ltd., FA 1279901 (Nat. Arb. Forum Sept. 29, 2009); see also H Samuel Ltd. v. PrivacyProtect.org
& Venkateshwara Private Ltd., D200090973 (WIPO Sept. 7, 2009). The Panel finds that Respondent has engaged
in a pattern of cybersquatting and that this conduct supports findings that
Respondent has acted in bad faith in registering and using domain names
contained this Complainant’s protected marks pursuant to Policy ¶
4(b)(ii). See 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); see also Calvin Klein,
Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding
that the respondent has registered numerous domain names containing sexual
references and domain names which are confusingly similar to third party
trademarks; which points to a pattern of conduct on the part of the respondent,
revealing that the respondent is registering domain names in order to prevent trademark
owners from reflecting their marks in corresponding domain names).
Complainant also argues
that Respondent’s display of third-party links in competition with Complainant
disrupts Complainant’s apparel and accessory business by diverting customers seeking
Complainant’s website to competing websites.
The Panel finds that Respondent’s diversion of Internet users’ to
websites that seek to compete with Complainant also constitutes 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 Am. Online,
Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is
referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating
Complainant’s mark to refer customers seeking Complainant to Complainant’s
competitors is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii).”).
Complainant further alleges that Respondent’s use of the disputed domain names to intentionally attract Internet users for commercial gain is evidence itself of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s disputed domain names create a likelihood of confusion between the disputed domain names and Complainant’s CHARLOTTE RUSSE marks. Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites displayed on its website both in competition with and unrelated to Complainant. The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); 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).
The Panel previously determined that Respondent has engaged
in typosquatting. The Panel finds that
the use of typosquatting is itself evidence of bad faith registration and use
under Policy ¶ 4(a)(iii). See 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); see also Microsoft
Corp. v. Domain Registration
The Panel finds that Complainant satisfied the elements 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 <charletterusse.com>, and <charlotterousse.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 17, 2010
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