Mason Companies, Inc. v. Forsyte Corporation
Claim Number: FA1005001322975
Complainant is Mason Companies, Inc. (“Complainant”), represented by William
D. Schultz, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shoemalll.com>, registered with REBEL.com CORP.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2010.
On May 6, 2010, REBEL.com CORP. confirmed by e-mail to the National Arbitration Forum that the <shoemalll.com> domain name is registered with REBEL.com CORP. and that Respondent is the current registrant of the name. REBEL.com CORP. has verified that Respondent is bound by the REBEL.com CORP. 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 May 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@shoemalll.com. Also on May 12, 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 June 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 (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:
1. Respondent’s <shoemalll.com> domain name is confusingly similar to Complainant’s SHOE MALL mark.
2. Respondent does not have any rights or legitimate interests in the <shoemalll.com> domain name.
3. Respondent registered and used the <shoemalll.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mason Companies,
Inc., is an online retailer specializing in footwear. Complainant owns trademark registrations with
the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,605,442 issued August. 6, 2002) and with the
Canadian Intellectual Property Office (“CIPO”) (e.g., TM736,423 issued March 17, 2009).
Respondent, Forsyte
Corporation, registered the <shoemalll.com>
domain name on December 18, 2002. The
disputed domain name resolves to a generic website listing links to third-party
websites offering products 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.
Complainant owns trademark registrations for the SHOE MALL and related marks with the USPTO (e.g., Reg. No. 2,605,442 issued August. 6, 2002) and the CIPO (e.g., TM736,423 issued March 17, 2009). The Panel finds that evidence of trademark registrations with the USPTO and the CIPO sufficiently demonstrates Complainant’s rights in the SHOE MALL mark pursuant to Poilcy ¶ 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).”); see also 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).”).
Complainant asserts that Respondent’s <shoemalll.com> domain name is confusingly similar to Complainant’s SHOE MALL mark. Respondent’s disputed domain name includes Complainant’s mark, adding only an extra letter “l” and the generic top-level domain (“gTLD”) “.com” and deleting the space between the words. The Panel finds that a single extra letter added to Complainant’s mark, especially one that is likely the result of a typographical error, fails to differentiate the disputed domain name and Complainant’s mark according to Policy ¶ 4(a)(i). 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 Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).). The Panel also finds that a deleted space and attached gTLD do not affect a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds Respondent’s <shoemalll.com> disputed domain name is confusingly similar to Complainant’s SHOE MALL mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent in support of Complainant’s allegation that Respondent lacks rights and legitimate interests in the disputed domain name. Since the Panel finds that Complainant has presented a sufficient prima facie case, the burden now shifts to Respondent to counter Complainant’s assertion and demonstrate rights and legitimate interests. As Respondent has failed to respond to the Complaint, however, Respondent has not satisfied this burden. The Panel accordingly infers that Respondent lacks rights and legitimate interests in the disputed domain and that Complainant’s allegations against Respondent are true. 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).
Complainant contends that Respondent does not have rights and legitimate interests in the <shoemailll.com> disputed domain name because Respondent is not commonly known by the disputed domain name. The Panel finds that there is no correlation between the registrant identified in the WHOIS information, “Forsyte Corporation,” and the disputed domain name. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent uses the <shoemalll.com> disputed domain name to redirect Internet users seeking Complainant to a generic website advertising goods in competition with Complainant. Complainant argues that the goods are advertised on Respondent’s resolving website through pay-per-click links that result in profit to Respondent. The Panel finds that diverting Complainant’s customers via the disputed domain name to a website filled with pay-per-click links is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 asserts that Respondent’s <shoemalll.com> disputed domain name
differs from Complainant’s mark primarily in the inclusion of an extra letter
“l.” As this is a common typographical
error, the Panel finds Respondent’s registration of the <shoemalll.com> represents
typosquatting, which supports a finding of no rights and legitimate interests
for Respondent. See Microsoft
Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant argues that Respondent’s <shoemalll.com> disputed domain name
disrupts Complainant’s business because the disputed domain name redirects
Complainant’s intending customers to a website featuring links to competing
products. The Panel finds that Respondent’s
efforts to compete with Complainant and disrupt its business through the
advertising of competing pay-per-click hyperlinks is evidence of bad faith
registration and use according to Policy ¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Complainant alleges that the links Respondent features on its website resolving from the <shoemalll.com> disputed domain name are pay-per-click links designed to raise revenue for Respondent. Since Respondent then profits from the traffic diverted to its website, Respondent is profiting from its use of Complainant’s mark and the confusion created from the similarity between the mark and the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name to attract Internet users for Respondent’s own commercial gain demonstrates 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).
The Panel has previously concluded that Respondent’s registration of the <shoemalll.com> disputed domain name is typosquatting. The Panel finds typosquatting to be evidence in and of itself of bad faith registration and use according to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds 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 <shoemalll.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 15, 2010
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