Backcountry.com, LLC v. Joe Harris
Claim Number: FA1004001318452
Complainant is Backcountry.com, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Joe Harris (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <backcounrty.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2010.
On April 11, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <backcounrty.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 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@backcounrty.com by email. Also on April 15, 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 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <backcounrty.com> domain name is confusingly similar to Complainant’s BACKCOUNTRY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <backcounrty.com> domain name.
3. Respondent registered and used the <backcounrty.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Backcountry.com, LLC, is an online retailer of outdoor products and gear for backcountry excursions, backpacking, climbing, skiing, snowboarding, trail running and adventure travel with annual sales of more than $200 million. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its family of marks including the BACKCOUNTRY.COM mark (e.g., Reg. No. 3,243,545 issued May 22, 2007).
Respondent, Joe Harris, registered the <backcounrty.com> domain name on August 8, 2009. Respondent’s disputed domain name resolves to a website that displays third-party links to outdoor equipment providers in competition with Complainant.
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.
The Panel finds that Complainant has established rights in
its BACKCOUNTRY.COM mark under Policy ¶ 4(a)(i) through its trademark
registration with the USPTO (Reg. No. 3,243,545 issued May 22, 2007). 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 Renaissance Hotel Holdings, Inc. v.
Renaissance Cochin, FA 932344 (Nat.
Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the
complainant has registered its trademark in the country in which the respondent
resides, only that it can establish rights in some jurisdiction).
Respondent’s <backcounrty.com> domain name is confusingly similar to Complainant’s BACKCOUNTRY.COM mark. Respondent’s disputed domain name is Complainant’s entire mark with the letters “t” and “r” transposed. The Panel finds that Respondent’s disputed domain name is a simple misspelling of Complainant’s mark and is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <backcounrty.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show it does have rights or legitimate interests in the disputed domain name. 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 has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <backcounrty.com> domain name. 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). The Panel will review the evidence on record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complaint argues that Respondent is neither commonly known by the <backcounrty.com> domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information identifies “Joe Harris” as the registrant of the <backcounrty.com> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, 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
name is not being used in connection with a bona
fide offering of goods or services, nor is Respondent making a legitimate
noncommercial or fair use of the domain name.
Respondent’s disputed domain name resolves to a website that displays
third-party links to websites offering outdoor products and services in
competition with Complainant, presumably for profit. The Panel finds that Respondent’s use of the
disputed name to redirect Internet users to Complainant’s competitors,
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 Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not
using the <tesco-finance.com> domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by maintaining a web page with misleading links to the complainant’s
competitors in the financial services industry); see also Metro. Life Ins. Co.
v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar
domain name to divert Internet users to competing websites 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)).
Lastly, Complainant argues that Respondent’s registration and use of the <backcounrty.com> domain name consists of typosquatting, a practice that has been found by previous UDRP panels to show Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Respondent’s practice of typosquatting, as evidenced by its registration and use of the <backcounrty.com> domain name, is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See 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).”); 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”). Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s official <backcountry.com> domain name to Respondent’s website creates a disruption to Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Respondent’s use of the confusingly similar domain name to display third-party links to competitors of Complainant leads to a loss of sales for Complainant, which also constitutes bad faith 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s disputed domain name creates a likelihood of confusion between the disputed domain name and Complainant’s mark as well as Complainant’s official <backcountry.com> domain name. Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites in competition with Complainant that are displayed on Respondent’s website. The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and this use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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).
Respondent has engaged in typosquatting through its
registration and use of the <backcounrty.com>
domain name, evidence by itself of bad faith registration and use under Policy
¶ 4(a)(iii), and so this Panel finds. 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 Philippines,
FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration
and use of the <microssoft.com> domain name as it merely misspelled the
complainant’s MICROSOFT mark). Therefore, the Panel finds that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(a)(iii).
The Panel finds 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 <backcounrty.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 20, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum