Backcountry.com, LLC v. Song Bin
Claim Number: FA1004001317284
Complainant is Backcountry.com,
LLC (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <backcontry.com>, registered with Dynadot, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2010.
On April 5, 2010, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <backcontry.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 7, 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@backcontry.com. Also on April 7, 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 April 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant provides online retail and e-commerce outdoor products.
Complainant offers outdoor gear and clothing for backcountry excursions, including backpacking, skiing, snowboarding, hiking and camping.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BACKCOUNTRY.COM mark (including Reg. No. 3,243,545, registered on May 22, 2007).
Respondent is not sponsored by or affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s mark in a domain name.
Respondent registered the <backcontry.com> domain name on August 9, 2009.
The disputed domain name resolves to a website featuring links to third-party websites, some of which directly compete with Complainant’s business
Respondent’s <backcontry.com> domain name is confusingly similar to Complainant’s BACKCOUNTRY.COM mark.
Respondent does not have any rights to or legitimate interests in the <backcontry.com> domain name.
Respondent’s use of the disputed domain name constitutes typo-squatting.
Respondent’s use of the <backcontry.com> domain name creates a likelihood of confusion as to the possibility of Complainant’s affiliation with the disputed domain name, and it disrupts Complainant’s business.
Respondent registered and uses the <backcontry.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its BACKCOUNTRY.COM trademark with the USPTO establishes its rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, 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 a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world).
Complainant claims that Respondent’s <backcontry.com> domain name is confusingly similar to Complainant’s BACKCOUNTRY.COM mark. Respondent’s domain name omits the letter “u” from the mark. This slight alteration fails to distinguish Respondent’s domain name from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i” from the mark in forming the offending domain name); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to a complainant’s MYSPACE mark because a slight difference in spelling did not avoid a finding of confusing similarity).
Similarly, the addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to a complainant’s mark in forming a domain name is insufficient to differentiate the domain name from the mark).
Therefore, the Panel finds Respondent’s that the disputed domain name is confusingly similar to Complaint’s BACKCOUNTRY.COM mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights to or legitimate interests in the <backcontry.com> domain name. The burden then shifts to Respondent to prove it has rights to or legitimate interests in the disputed domain. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
[C]omplainant
must first make a prima facie case
that respondent
lacks rights and legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii), and then the burden shifts to respondent to show it does have
rights or legitimate interests.
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent upon that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”)
Complainant has made out the requisite prima facie showing, while Respondent, for its part, has failed to
respond to the allegations of the Complaint.
We are therefore free to conclude that Respondent has no rights to or
legitimate interests in the contested domain. 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.
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant argues, and Respondent does not deny, that Respondent is not sponsored by or affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Moreover, the pertinent WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated rights to or legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, including the relevant WHOIS information, and where a complainant asserted without objection from that respondent that it did not authorize or license that respondent’s use of its mark in a domain name).
Complainant also alleges, without objection from Respondent,
that Respondent is using the <backcontry.com> domain name to
redirect Internet users to a website featuring links to third-party websites,
some of which directly compete with Complainant’s business. Respondent presumably profits from this use of
the disputed domain name through the receipt of pay-per-click or similar fees. From this we conclude that Respondent is not
using the disputed domain name to make a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the domain under Policy ¶
4(c)(iii). See Jerry Damson,
Inc. v.
Finally under this head of the Complaint, Complainant claims
that Respondent’s use of the disputed domain name constitutes typo-squatting. We agree.
The domain name contains a common misspelling of the “country” portion
of Complainant’s mark. Respondent’s use
of a domain name that incorporates a common misspelling of the BACKCOUNTRY.COM mark
to redirect Internet users seeking Complaint’s website is further evidence that
Respondent lacks rights to or legitimate interests in the contested domain under
Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
typosquatting, which
provides additional evidence that respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii).
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 a Complainant's LTD COMMODITIES mark, and that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts, and Respondent does not deny, that Respondent’s use of the <backcontry.com> domain name creates a likelihood of confusion as to the possibility of Complainant’s affiliation with the disputed domain name, and that it disrupts Complainant’s business. On the record before us, we come to the same conclusion. Respondent’s use of the disputed domain name to resolve to a website that features links to third-parties which compete with Complainant’s business disrupts Complainant’s business and therefore constitutes registration and use of the domain in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent
is appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The Panel finds this diversion is evidence of
bad faith registration and use [of the disputed domain name] pursuant to Policy
¶ 4(b)(iii).
To the same effect, see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003).
In addition, Respondent’s domain name is confusingly similar to Complainant’s mark, and it is apparent that Respondent is using it to attract Internet users to its website so that it can profit from pay-per-click or similar fees. This behavior evidences bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005):
The
Panel infers that Respondent receives click-through fees for diverting Internet
users to a competing website. Because
Respondent’s domain name is identical to Complainant’s … mark, Internet users
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s use of the … domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).
See also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).
As previously noted, Respondent has engaged in typo-squatting through its use of a common misspelling of Complainant’s BACKCOUNTRY.COM mark in forming the disputed domain name. Typo-squatting is independent evidence that Respondent both registered and uses the subject domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004): “By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).” See also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting
… is the intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is inherently parasitic and of itself evidence of
bad faith.
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <backcontry.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 30, 2010
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