FragranceX.com Inc. v. Domain Administrator
Claim Number: FA1005001325230
Complainant is FragranceX.com Inc. (“Complainant”), represented by John W. Dozier, of Dozier Internet Law, P.C., Virginia, USA. Respondent is Domain Administrator (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <fragrancx.com>, registered with Rebel.com.
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 May 18, 2010.
On May 21, 2010, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <fragrancx.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@fragrancx.com by e-mail. Also on May 28, 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 30, 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 <fragrancx.com> domain name is confusingly similar to Complainant’s FRAGRANCEX.COM mark.
2. Respondent does not have any rights or legitimate interests in the <fragrancx.com> domain name.
3. Respondent registered and used the <fragrancx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, FragranceX.com Inc., is a New York corporation that sells discount perfumes, colognes, skincare products, aftershaves and cosmetic products online. Complainant has been using its mark in such capacity since it registered its FRAGRANCEX.COM mark and domain name on April 13, 2001. Complainant holds a trademark registration with the United States Patent and Trademark Office ("USPTO") for its FRAGRANCEX.COM mark (Reg. No. 3,365,121 issued Jan. 8, 2008.)
Respondent registered the <fragrancx.com> domain name on September 2, 2006. Respondent’s disputed domain name resolves to a website that displays various third-party links to websites and businesses 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 has submitted evidence to show that it possessed
common law rights in its FRAGRANCEX.COM mark prior to Respondent’s registration
of the disputed domain name on September 2, 2006. The Panel finds that a trademark registration
is not required for Complainant to establish rights in its mark under Policy ¶
4(a)(i), so long as Complainant can show that it has common law rights in its
mark as evidenced through the establishment of secondary meaning in its
mark. See SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Artistic
Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8,
2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration
if a complainant can establish common law rights in its mark).
Complainant submits
that on April 13, 2001 Complainant registered the FRAGRANCEX.COM domain name
and subsequently filed for incorporation
with the State of New York on May 31, 2001 under that name. Complainant states that since that date it
has maintained and continuously operated a successful business selling
discounted perfume and related products through its website. Complainant argues that it has established
secondary meaning in its mark as evidenced by its website popularity rating by
the third-party Alexa, which tracks the amount of “hits” that a website
receives per month and per year. Complainant
also alleges that it has become a widely known leader in the discount beauty
product industry as evidenced by its increasing sales revenues. Lastly, Complainant submits that it has filed
for and received a trademark registration for its FRAGRANCEX.COM mark with the
USPTO (Reg. No. 3,365,121 issued Jan. 8, 2008). The Panel finds that Complainant has
established rights in its mark under Policy ¶ 4(a)(i). See Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also George Weston
Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish
common law rights in its GW BAKERIES mark through consistent and continuous use
of the mark, which helped the mark become distinctive and generate “significant
goodwill”).
Respondent’s <fragrancx.com> domain name is confusingly similar to Complainant’s FRAGRANCEX.COM mark. Complainant notes that the disputed domain name contains a misspelled version of its mark that deletes the letter “e” in its mark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where it contains Complainant’s mark entirely with the absence of the letter “e” from the mark. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also 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”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <fragrancx.com> domain name under Policy ¶ 4(a)(ii). Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden shifts to 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 Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <fragrancx.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, however, continue to evaluate the evidence on record to determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information for the <fragrancx.com> domain name does not indicate that Respondent is commonly known by the disputed domain name. Complainant also alleges that it has not granted Respondent permission to use its mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); 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 argues that Respondent is using the disputed
domain name to advertise and offer links to Complainant’s competitors, and that
such use is evidence that Respondent lacks rights and legitimate interests in
the disputed domain name. Complainant
further argues that Respondent is receiving click-through fees in relation to
the links displayed on Respondent’s website.
The Panel finds that Respondent’s use of the disputed domain name to
display third-party links to competitors of Complainant in the discount
fragrance and related products industry 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of
the complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did 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)).
The Panel finds that Respondent is taking advantage of Internet users that are trying to reach Complainant’s official <fragrancex.com> website by using a common misspelling of Complainant’s FRAGRANCEX.COM mark. The Panel finds that Respondent’s engagement in what is commonly referred to as typosquatting is 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.
Respondent is using the disputed domain name to advertise
and display links to the competitors of Complainant thereby actively disrupting
Complainant’s Internet business and Internet traffic to its official
website. The Panel finds that Respondent’s use of
the disputed domain name to redirect Internet users to the websites of
competing businesses is evidence that Respondent registered and used the
disputed domain name in bad faith under Policy ¶ 4(b)(iii). [a1] 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).”).
Respondent is attempting to intentionally attract Internet users to Respondent’s website for commercial gain by receiving click-through fees from the businesses advertised and linked to on Respondent’s website. Respondent is attempting to confuse and detract Internet users from Complainant’s official website by using a close misspelling of Complainant’s mark. The Panel therefore finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); 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 <fragrancx.com>
domain name. This practice constitutes
evidence 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 <fragrancx.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 9, 2010
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[a1]Add another sentence here—expand on the disruption argument a little bit