Current USA, Inc. v. Micah Smurthwaite
Claim Number: FA1003001315731
Complainant is Current
USA, Inc. (“Complainant”), represented by Collin B. Foulds, of Gray, Plant, Mooty, Mooty & Bennett,
P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <liliianvernon.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2010.
On March 28, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <liliianvernon.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 April 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@liliianvernon.com. Also on April 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. Respondent’s <liliianvernon.com> domain name is confusingly similar to Complainant’s LILLIAN VERNON mark.
2. Respondent does not have any rights or legitimate interests in the <liliianvernon.com> domain name.
3. Respondent registered and used the <liliianvernon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Current USA, Inc., sells gift, household, children’s, and fashion accessory products through its catalog and online through its websites. Complainant offers these products under its LILLIAN VERNON mark for which it holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,285,663 issued July 10, 1984).
Respondent, Micah Smurthwaite, registered the <liliianvernon.com> domain name on August 16, 2004. The disputed domain name resolves to a website featuring a commercial search engine and third-party hyperlinks, some of which resolve to Complainant’s competitors in the gift, household, children’s, and fashion accessory products businesses.
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.
Respondent, Micah Smurthwaite, registered the <liliianvernon.com>
domain name on August 16, 2004. Previous
panels have held that a federal trademark registration is sufficient to
establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v.
Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that
the complainants had established rights in marks where the marks were
registered with a trademark authority); see
also
Complainant contends that Respondent’s <liliianvernon.com>
domain name is confusingly similar to Complainant’s LILLIAN VERNON mark. The disputed domain is made up of a common
misspelling of Complainant’s mark by removing the letter “l” and adding the
letter “i.” The disputed domain name
also removes the spaces separating the terms of the mark and adds the generic
top-level domain (“gTLD”) “.com.” Past
panels have found that the use of a common misspelling coupled with the removal
of a space and the addition of a gTLD fails to adequately distinguish a
disputed domain name from a complainant’s mark.
See Bond & Co. Jewelers, Inc.
v.
The Panel determines Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <liliianvernon.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a 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 <liliianvernon.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known by the <liliianvernon.com> domain name. The Panel finds Respondent has not provided any evidence in support of a determination that Respondent is commonly known by the disputed domain name. The WHOIS information identifies the domain name registrant as “Micah Smurthwaite,” which the Panel finds is not similar to the disputed domain name. Complainant asserts that Respondent is not associated or affiliated with Complainant in any way. Complainant further claims that Respondent is not licensed to utilize Complainant’s LILLIAN VERNON mark. Based on the evidence on the record, the Panel finds Respondent is not commonly known by the <liliianvernon.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
Complainant alleges that Respondent uses the <liliianvernon.com> domain name to resolve to a website containing a commercial search engine and third-party hyperlinks. According to Complainant, some of the third-party hyperlinks resolve to Complainant’s competitors in the gift, household, children’s, and fashion accessory products businesses. Complainant further argues that Respondent receives click-through fees from the hyperlinks. The Panel determines that Respondent’s use of the <liliianvernon.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial use of the <liliianvernon.com> domain name pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Moreover, Complainant claims that Respondent’s use of
the <liliianvernon.com>
domain name constitutes typosquatting and provides further evidence that
Respondent lacks rights or legitimate interests in the disputed domain
name. The disputed domain name contains
a common misspelling of Complainant’s LILLIAN VERNON mark that differs from
Complainant’s mark by one letter.
Respondent uses this disputed domain name to take advantage of a typing
mistake Internet users have made in order to redirect Internet users to
Respondent’s website. The Panel
concludes that Respondent’s use of a common misspelling of Complainant’s mark
for that purpose constitutes typosquatting and provides further evidence that
Respondent lacks rights or legitimate interests in the <liliianvernon.com>
domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant asserts that Respondent’s <liliianvernon.com> domain name resolves to a website that contains a commercial search engine and hyperlinks that resolve to Complainant’s competitors. Internet users interested in Complainant’s gift, household, children’s, and fashion accessory products may purchase similar products from one of Complainant’s competitors solely because of Respondent’s use of the <liliianvernon.com> domain name. The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s business, which signifies bad faith registration and use of the <liliianvernon.com> domain name pursuant to 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 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).
Complainant further argues that Respondent profits from its use of the <liliianvernon.com> domain name through the receipt of click-through fees. Complainant alleges that the aforementioned hyperlinks are pay-per-click links from which Respondent receives a fee each time an Internet user clicks on the hyperlinks. Internet users interested in Complainant may become confused as to Complainant’s affiliation with or sponsorship of the <liliianvernon.com> domain name and resolving website. Respondent is attempting to profit from that confusion through its receipt of the click-through fees. Consequently, the Panel finds Respondent’s use of the <liliianvernon.com> domain name establishes bad faith registration and use under 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 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).”).
Furthermore, Complainant alleges that Respondent’s use of the <liliianvernon.com> domain name constitutes typosquatting. The disputed domain name differs from Complainant’s LILLIAN VERNON mark by one letter and is a common misspelling of Complainant’s mark. Respondent is using this common misspelling to redirect Internet users to Respondent’s website. The Panel determines that Respondent’s use of the <liliianvernon.com> domain name does constitute typosquatting, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.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 concludes that Policy ¶ 4(a)(iii) has been 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 <liliianvernon.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 10, 2010
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