national arbitration forum

 

DECISION

 

Charlotte Russe Merchandising, Inc. v. Forsyte Corporation

Claim Number: FA1004001319979

 

PARTIES

Complainant is Charlotte Russe Merchandising, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Forsyte Corporation (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <charlotterussel.com>, registered with Zidodomain.ca.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2010.

 

On Apr 22, 2010, Zidodomain.ca confirmed by e-mail to the National Arbitration Forum that the <charlotterussel.com> domain name is registered with Zidodomain.ca and that Respondent is the current registrant of the name.  Zidodomain.ca has verified that Respondent is bound by the Zidodomain.ca 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 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@charlotterussel.com.  Also on April 23, 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 24, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <charlotterussel.com> domain name is confusingly similar to Complainant’s CHARLOTTE RUSSE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <charlotterussel.com> domain name.

 

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

 

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

 

FINDINGS

Complainant, Charlotte Russe Merchandising, Inc., holds multiple trademark registrations for its CHARLOTTE RUSSE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,414,477 issued December 19, 2000).  Complainant is a specialty retailer founded in 1975 with over 500 stores focusing on young women’s clothing and accessories.

 

Respondent, Forsyte Corporation, registered the disputed domain name on November 27, 2005.  The disputed domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

A complainant need not hold a trademark registration in the country where the respondent operates or resides; a trademark registration in any jurisdiction is sufficient to establish a complainant’s rights in a mark.  See 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); 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).  Therefore, the Panel finds the Complainant has established rights in its CHARLOTTE RUSSE mark through its holding of multiple trademark registrations with the USPTO.  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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Respondent’s <charlotterussel.com> domain name is confusingly similar to Complainant’s CHARLOTTE RUSSE mark.  Respondent’s disputed domain name incorporates the entirety of Complainant’s mark and merely misspells it by adding the letter “l.”  The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the intentional misspelling of Complainant’s mark through the addition of a single letter creates a confusing similarity between the disputed domain name and 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.Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that the respondent’s domain name, <americanonline.com>, is confusingly similar to the complainant’s famous AMERICA ONLINE mark).  The Panel also finds that the addition of a gTLD to a mark is irrelevant in distinguishing between a disputed domain name and a mark for the purposes of Policy ¶ 4(a)(i).  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 mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Therefore, the Panel finds that Respondent’s <charlotterussel.com> domain name is confusingly similar to Complainant’s CHARLOTTE RUSSE mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden then shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Based on the allegations contained in the Complaint, the Panel finds that Complainant has established a prima facie case.  The Panel infers from Respondent’s failure to submit a Response that Respondent lacks rights and legitimate interests in the disputed domain name, but will examine the evidence nonetheless.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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.”).

 

Complainant asserts that Respondent is not commonly known by the disputed domain name, based on the WHOIS information and the fact that Complainant has not licensed, authorized, or permitted Respondent to register a domain name incorporating Complainant’s mark.  The WHOIS information lists the registrant of the disputed domain name as “Forsyte Corporation” which Complainant alleges is not similar to the disputed domain name.  Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant alleges that the earliest Respondent could have registered the disputed domain name was November 27, 2005.  The disputed domain name resolves to a website featuring generic third-party links to Complainant’s competitors in the clothing and accessories business.  Complainant asserts, and the Panel presumes, that Respondent receives pay-per-click fees through these third-party links.  The Panel finds that Respondent’s use of the disputed domain name to display pay-per-click links to Complainant’s competitors is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).

 

Complainant alleges that Respondent’s intentional misspelling of Complainant’s CHARLOTTE RUSSE mark, which differs by only one letter, amounts to the practice of typosquatting and is evidence that Respondent lacks rights and legitimate interests in the disputed domain name.  The Panel finds that Respondent has engaged in the practice of typosquatting through the registration of the confusingly similar disputed domain name and that typosquatting is itself evidence that Respondent lacks rights and legitimate interests in the <charlotterussel.com> domain name pursuant to 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 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”). 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to display links to third-parties in competition with Complainant in the clothing and accessories market.  As a result, an Internet user seeking Complainant’s goods may instead purchase goods from one of the third-party competitors.  The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business pursuant to 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 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).

 

Respondent uses the disputed domain name to intentionally attract Internet users intending to obtain access to the products sold under Complainant’s mark.  Respondent likely profits through the receipt of pay-per-click fees from the display of commercial links to Complainant’s competitors on Respondent’s resolving website.  The Panel finds that Respondent registered the confusingly similar disputed domain name solely for Respondent’s commercial gain which is evidence of bad faith pursuant to 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 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 under Policy ¶ 4(b)(iv)).

 

Respondent is engaged in the practice of typosquatting through the registration of the intentionally misspelled disputed domain name.  The Panel finds that typosquatting is further evidence of Respondent’s 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 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).

 

The Panel finds that Complainant has satisfied 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 <charlotterussel.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra J. Franklin, Panelist

Dated:  June 2, 2010

 

 

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