national arbitration forum

 

DECISION

 

BuySeasons, Inc. v. Telecom Tech Corp.

Claim Number: FA1004001317176

 

PARTIES

Complainant is BuySeasons, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Telecom Tech Corp. (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <celabrateexpress.com>, registered with Bargin Register, Inc.

 

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 April 2, 2010.

 

On April 2, 2010, Bargin Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <celabrateexpress.com> domain name is registered with Bargin Register, Inc. and that Respondent is the current registrant of the name.  Bargin Register, Inc. verified that Respondent is bound by the Bargin Register, Inc. 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 April 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@celabrateexpress.com. Also on April 5, 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 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" 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.

 

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, <celabrateexpress.com>, is confusingly similar to Complainant’s CELEBRATE EXPRESS mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, BuySeasons, Inc., registered its CELEBRATE EXPRESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,330,631 issued November 6, 2007; filed July 12, 2004). Complainant uses the mark in connection with mail order catalog services featuring party supplies, online retail store services featuring party supplies, and retail store services featuring party supplies.

 

Respondent, Telecom Tech Corp., registered the disputed domain name April 28, 2007. The disputed domain name resolves to a web directory with links to third-party websites unrelated to Complainant.

 

Respondent has been the respondent in prior UDRP proceedings, resulting in the transfer of the disputed domain names to the respective complainants. See Allen Tate Co. Inc. v. Telecom Tech Corp., FA1278777 (Nat. Arb. Forum Sept. 29, 2009); see also Amer. Airlines, Inc. v. Telecom Tech Corp., FA1224015 (Nat. Arb. Forum Oct. 29, 2008); see also Baylor Univ. v. Telecom Tech Corp., FA1142636 (Nat. Arb. Forum Mar. 27, 2008).

 

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 asserts rights in its CELEBRATE EXPRESS mark through registration with the USPTO (Reg. No. 3,330,631 issued November 6, 2007; filed July 12, 2004). The Panel finds that Complainant’s registration of its mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).  Complainant’s trademark registration application for the CELEBRATE EXPRESS mark was subsequently approved by the USPTO. Therefore the Panel finds Complainant’s rights in the registered mark date back to Complainant’s trademark registration filing date of July 12, 2004, which predates Respondent’s disputed domain name registration on April 28, 2007.

 

The Panel further finds that the relevant date to be considered for Complainant’s rights in the mark under Policy ¶ 4(a)(i) is the filing date of the subsequently registered trademark.  See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); 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 also asserts that Respondent’s disputed <celabrateexpress.com> domain name is confusingly similar to Complainant’s CELEBRATE EXPRESS mark. Respondent’s <celabrateexpress.com> domain name replaces the letter “e” of Complainant’s mark with the letter “a,” removes the space between the words of Complainant’s mark, and adds the generic top-level domain “.com.” Complainant contends that the intentional misspelling of its mark by replacement of one letter in the mark with another letter creates confusing similarity between the disputed domain name and Complainant’s mark.  The Panel finds that the <celabrateexpress.com> domain name is confusingly similar to Complainant’s mark, pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”); 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”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <celabrateexpress.com> domain name. Once Complainant has made a prima facie case to support its allegations, the burden of proof shifts to Respondent to show that it has such rights or legitimate interests in the disputed domain name under ICANN Policy ¶ 4(a)(ii).  The Panel finds that Complainant made a prima facie case, shifting the burden to the Respondent to show that it does have such rights or interests.

 

Although Respondent failed to respond with proof in this proceedings, the Panel still analyzes the record in light of Policy ¶ 4(c) to determine if the record suggests that Respondent does have such rights or interests.  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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).

 

The WHOIS information for the <celabrateexpress.com> domain name identifies “Telecom Tech Corp.” as the registrant, which indicates that Respondent is not commonly known by the disputed domain name. Complainant asserts that it has given no license or other authorization to Respondent to use its CELEBRATE EXPRESS mark. Furthermore, Respondent offered no evidence to suggest that Policy ¶ 4(c)(ii) applies as to it in this case. Without affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 know by the disputed domain name); 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).

 

The disputed domain name resolves to a web directory that contains links to third-party websites unrelated to the Complainant. The Panel finds that Respondent’s use of the <celabrateexpress.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).

 

Complainant further asserts that the disputed domain name is an intentional misspelling of the CELEBRATE EXPRESS mark. Complainant alleges that Respondent is capitalizing on this misspelling to misdirect Internet users seeking Complainant’s services to Respondent’s own site for commercial gain. The Panel finds that the misspelling of Complainant’s mark constitutes the practice of typosquatting, which standing alone constitutes evidence that Respondent lacks rights and 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 Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent has established a pattern of cybersquatting as evidenced by several adverse UDRP proceedings against Respondent.  Complainant has offered numerous other UDRP decisions against Respondent where Respondent was found to have registered and used other disputed domain names in bad faith. See Allen Tate Co. Inc. v. Telecom Tech Corp., FA 1278777 (Nat. Arb. Forum Sept. 29, 2009); see also Amer. Airlines, Inc. v. Telecom Tech Corp., FA1224015 (Nat. Arb. Forum Oct. 29, 2008); see also Baylor Univ. v. Telecom Tech Corp., FA1142636 (Nat. Arb. Forum Mar. 27, 2008). The Panel finds that such conduct establishes and supports findings here that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent).

 

The disputed domain name resolves to a web directory that contains links to third-party websites unrelated to the Complainant. Internet users, interested in Complainant and Complainant’s related products, may become confused as to Complainant’s sponsorship and affiliation of the resolving website. Respondent attempts to profit from this confusion by presumably earning referral fees for redirecting traffic to third-party websites. Thus the Panel finds that Respondent’s registration and use of the <celabrateexpress.com> domain name is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites);  see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

The Panel has previously found that Respondent is engaged in the practice of typosquatting through the use of the <celabrateexpress.com> domain name. The Panel finds that this practice is also evidence of bad faith registration and use pursuant to 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 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 finds that Respondent registered and used the disputed domain name in bad faith; 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 <celabrateexpress.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: May 17, 2010

 

 

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