national arbitration forum

 

DECISION

 

Charlotte Russe Merchandising, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin

Claim Number: FA1004001320860

 

PARTIES

Complainant is Charlotte Russe Merchandising, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, (“Respondent”), Isle of Man.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <charlotteruse.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2010.  

 

On April 23, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <charlotteruse.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 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@charlotteruse.com by email.  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 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <charlotteruse.com> domain name is confusingly similar to Complainant’s CHARLOTTE RUSSE mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Charlotte Russe Merchandising, Inc., is a mall based specialty retailer of women’s clothing and accessories with over 500 stores and annual sales in excess of $820 million.  Complainant owns several trademarks with the United States Patent and Trademark Office (“USPTO”) for its CHARLOTTE RUSSE mark (e.g., Reg. No. 2,414,477 issued December 19, 2000).

 

Respondent registered the <charlotteruse.com> domain name on March 18, 2002.  Respondent’s disputed domain name resolves to a website that displays various third-party links to website and businesses both in competition with and unrelated to Complainant.

 

Complainant offers evidence that Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants.  See Deli Mgmt., Inc. v. YOLAPT, FA 1301280 (Nat. Arb. Forum Feb. 17, 2010); see also Dream Execut. Tech. Co. Ltd v. YOLAPT, FA 1218178 (Nat. Arb. Forum Sept. 29, 2008); see also NIHC v. YOLAPT, FA 1220714 (Nat. Arb. Forum Oct. 9, 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."

 

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

 

The Panel finds that Complainant has established rights in its CHARLOTTE RUSSE mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,414,477 issued December 19, 2000).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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).

 

Complainant contends that Respondent’s <charlotteruse.com> domain name is confusingly similar to Complainant’s CHARLOTTE RUSSE mark.  Complainant argues that misspelling its mark by deleting the letter “s” from the term “Russe” in its mark and adding the generic top-level domain (“gTLD”) “.com” is not sufficient to distinguish the disputed domain name from Complainant’s mark.  The Panel agrees and finds that Respondent’s <charlotteruse.com> domain name is confusingly similar to Complainant’s CHARLOTTE RUSSE mark under Policy ¶ 4(a)(i).  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also 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). 

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <charlotteruse.com> domain name.  Complainant is required to make a prima facie case in support of these allegations.  After Complainant has produced a prima facie case the burden of proof shifts to Respondent to offer evidence that it does possess 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 disputed domain name.  The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain pursuant to Policy ¶ 4(c).  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).

 

Complainant argues that Respondent has not been authorized to use Complainant’s mark, nor is Respondent commonly known by the disputed domain name.  The WHOIS information indentifies “YOLAPT c/o Domain Admin” as the registrant of the disputed domain name and Respondent does not offer any evidence indicating that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because there is no evidence on record to indicate that Respondent is commonly known by the <charlotteruse.com> domain name.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).   

 

Complainant contends that Respondent is using the <charlotteruse.com> domain name as a third-party link directory of which Respondent receives click-through fees for the links displayed on its website.  Complainant argues that this type of use is indicative of Respondent’s lack of rights and legitimate interests in the <charlotteruse.com> domain name.  The Panel finds that Respondent’s use of the disputed domain name to display various competing and unrelated third-party links to Complainant’s business is not a use in connection with 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).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute 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 argues that Respondent is taking advantage of Internet users that are trying to reach Complainant’s official <charlotterusse.com> domain name by using a common misspelling of Complainant’s CHARLOTTE RUSSE mark.  The Panel finds that Respondent’s engagement in what is known as typosquatting through Respondent’s registration and use of the <charlotteruse.com> domain name is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  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.

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in other UDRP proceedings, where the disputed domain names were ordered to be transferred from Respondent to the respective complainants in those cases.  See Deli Mgmt., Inc. v. YOLAPT, FA 1301280 (Nat. Arb. Forum Feb. 17, 2010); see also Dream Execut. Tech. Co. Ltd v. YOLAPT, FA 1218178 (Nat. Arb. Forum Sept. 29, 2008); see also NIHC v. YOLAPT, FA 1220714 (Nat. Arb. Forum Oct. 9, 2008).  The Panel finds that Respondent has engaged in a pattern of serial cybersquatting and that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) as evidenced from its past registration and use of trademark infringing domain names.  See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Calvin Klein, Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that the respondent has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trademarks; which points to a pattern of conduct on the part of the respondent, revealing that the respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names).

 

Complainant also argues that Respondent’s display of third-party links to businesses in competition with Complainant disrupts Complainant’s apparel and accessory business by diverting customers seeking Complainant’s website to competing websites.  The Panel finds that Respondent’s diversion of Internet users to competing websites of Complainant is evidence of bad faith registration and use 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 Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site.  The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).   

 

Complainant further alleges that Respondent’s use of the disputed domain name to intentionally attract Internet users for commercial gain is evidence itself of bad faith registration and use under Policy ¶ 4(b)(iv).  Complainant argues that Respondent’s disputed domain name creates a likelihood of confusion between the disputed domain name and Complainant’s CHARLOTTE RUSSE marks.  Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites displayed on Respondent’s website both in competition with and unrelated to Complainant.  The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant.  Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); 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).  

 

The Panel has previously determined that Respondent has engaged in typosquatting through its registration and use of the <charlotteruse.com> domain name.  The Panel finds that the use of typosquatting is itself evidence of bad faith registration and use under 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). Therefore, the Panel finds that Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <charlotteruse.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 25, 2010

 

 

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