Lands' End, Inc. v. Domain Admin
Claim Number: FA1005001323995
Complainant is Lands' End, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <landsedn.com> and <landsemd.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 10, 2010.
On May 11, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <landsedn.com> and <landsemd.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@landsedn.com and postmaster@landsemd.com by e-mail. Also on May 14, 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 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <landsedn.com> and <landsemd.com>, are confusingly similar to Complainant’s LANDS’ END mark.
2. Respondent has no rights to or legitimate interests in the <landsedn.com> and <landsemd.com> domain names.
3. Respondent registered and used the <landsedn.com> and <landsemd.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lands’ End, Inc., is a general clothing and home furnishings designer and distributor, specializing in casual clothing, footwear and accessories, luggage and home furnishings. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its LANDS’ END mark (e.g., Reg. No. 1,263,612 issued January 10, 1984).
Respondent registered the <landsedn.com> and <landsemd.com> domain names February 20, 2002. Respondent’s disputed domain names resolve to websites that display a variety of third-party links to websites that compete with Complainant’s business as well as to websites that are unrelated to 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 submitted evidence of its many trademark
registrations with the USPTO for its LANDS’ END mark (e.g., Reg. No. 1,263,612 issued January 10, 1984). The Panel finds that Complainant established
rights in its mark under Policy ¶ 4(a)(i) through these
registrations and that Complainant need not own a trademark registration in
Respondent’s country of residence for such rights to exist. See 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); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant argues that the <landsedn.com> and <landsemd.com> domain
names are confusingly similar to Complainant’s LANDS’ END mark. Complainant contends that both disputed
domain names contain a misspelled version of Complainant’s mark by either
transposing the letters “n” and “d” or replacing the letter “n” with the letter
“m” in the “end” portion of Complainant’s mark.
Further, Complainant notes that both disputed domain names delete the
apostrophe and space between the terms in its mark and add the generic top-level
domain (“gTLD”) “.com.” Complainant argues
that the above noted changes to Complainant’s mark do not make the disputed
domain names distinct from its mark. The
Panel agrees, and finds that Respondent’s <landsedn.com> and <landsemd.com>
domain names are confusingly similar to Complainant’s LANDS’ END mark under
Policy ¶ 4(a)(i).
See LOreal USA Creative Inc v.
Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec.
8, 2003) (finding that the omission of an apostrophe did not significantly
distinguish the domain name from the mark); see
also 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.”);
see also 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 Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum
May 29, 2001) (finding the <belken.com> domain name confusingly similar
to the complainant's BELKIN mark because the name merely replaced the letter
“i” in the complainant's mark with the letter “e”); see also Jerry Damson, Inc. v.
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <landsedn.com> and <landsemd.com> domain names. Complainant is required to make a prima facie case to support these allegations. Once Complainant makes a prima facie case the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the <landsedn.com> and <landsemd.com> domain names. 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 Complainant made a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the <landsedn.com> and <landsemd.com> domain names. 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). This Panel, however, still examines the record to determine whether evidence before the Panel suggests that Respondent has such rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant contends that Respondent has not been commonly
known by the disputed domain names and that Respondent is not sponsored by or
legitimately affiliated with Complainant.
The WHOIS information for the disputed domain names does not indicate
that Respondent is commonly known by the disputed domain name and Respondent
offers no evidence to counter Complainant’s allegations. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See
Complainant further urges that Respondent is using the
disputed domain names to display various third-party links to websites that
compete with Complainant as well as websites that are unrelated to
Complainant’s clothing, footwear and home furnishings business. Complainant contends that Respondent receives
click-through fees from the linked websites and as such Respondent lacks rights
and legitimate interests in the disputed domain names. The Panel finds that Respondent’s use of the
disputed domain names to display various competing and unrelated third-party
links, presumably for financial gain, 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 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 Jerry Damson, Inc. v.
Lastly, Complainant contends
that Respondent is using typographical errors to redirect Internet users to
various websites that are displayed on Respondent’s resolving websites. Complainant contends that such use and
engagement in typosquatting is further evidence that Respondent lacks rights
and legitimate interests in the disputed domain name. The Panel finds that Respondent’s engagement
in typosquatting, as evidenced by its registration and use of the <landsedn.com> and <landsemd.com> domain names,
is further evidence that Respondent does not have rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that
Respondent has no rights or legitimate interests in the disputed domain names;
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has posted third-party
links to competing and unrelated businesses on Respondent’s websites resolving
from the <landsedn.com> and <landsemd.com>
domain names. Complainant contends that
such use by Respondent results in a disruption of Complainant’s clothing,
footwear and home furnishings business because Internet users who are
interested in Complainant’s clothing, footwear and related accessories products
are being diverted to competitors of Complainant. The Panel finds that Respondent’s use of the
disputed domain names to operate directory websites that divert Internet users
away from Complainant’s products and to the products of Complainant’s competitors
is evidence of and supports findings 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
Complainant further alleges that Respondent is attempting to intentionally attract Internet users to its websites, where it benefits commercially from click-through fees that Respondent receives from the links displayed on its websites. Complainant argues that Respondent’s use of the confusingly similar domain names to profit from Internet users is further evidence of Respondent’s bad faith registration and use. The Panel agrees, and finds that Respondent’s use of the disputed domain names to display various competing and unrelated third-party links, presumably for its own financial gain, is further evidence of bad faith registration and use under 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 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)).
The Panel previously determined that Respondent has engaged in typosquatting through its registration and use of the <landsedn.com> and <landsemd.com> domain names. Previous panels have found that the use of typographical errors within a domain name can be evidence in itself of bad faith registration and use pursuant to 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 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 [the] 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.”).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <landsedn.com> and <landsemd.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 23, 2010
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