Cabela's, Inc. v. Domains Administrator c/o Secure Hosts
Claim Number: FA1005001325758
Complainant is Cabela's,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwcabelas.com>, registered with Dotregistrar, Dotster.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2010.
On May 20, 2010, Dotregistrar, Dotster confirmed by e-mail to the National Arbitration Forum that the <wwwcabelas.com> domain name is registered with Dotregistrar, Dotster and that Respondent is the current registrant of the name. Dotregistrar, Dotster has verified that Respondent is bound by the Dotregistrar, Dotster 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 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@wwwcabelas.com. Also on May 25, 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 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <wwwcabelas.com> domain name is confusingly similar to Complainant’s CABELA’S mark.
2. Respondent does not have any rights or legitimate interests in the <wwwcabelas.com> domain name.
3. Respondent registered and used the <wwwcabelas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cabela’s, Inc., is a mail-order, retail and Internet outdoor outfitter. Complainant has used the CABELA’S mark in connection with retail store services since 1961. Complainant began operating the <www.cabelas.com> domain name in 1998. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CABELA’S mark (e.g., Reg. No. 1,151,981 registered on April 21, 1981).
Respondent registered the <wwwcabelas.com> domain name on May 7, 2002. The disputed domain name was registered by Respondent as a member of Complainant’s affiliate program and redirects Internet users to Complainant’s own website.
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 rights in the CABELA’S mark through its multiple registrations of the mark with the USPTO (e.g., Reg. No. 1,151,981 registered on April 21, 1981). The Panel finds these registrations sufficiently establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). 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 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.”).
Complainant argues the <wwwcabelas.com> domain
name is confusingly similar to its CABELA’S mark. Except for the omitted apostrophe, Respondent
entirely incorporates Complainant’s mark in the disputed domain name. Respondent’s disputed domain name also adds
the prefix “www” without separating it from the rest of the domain name with a
period and adds the generic top-level domain (“gTLD”) “.com” to Complainant’s
mark. The Panel finds these changes do
not distinguish Respondent’s disputed domain name from the CABELA’S mark. 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 Bank of Am. Corp. v. InterMos,
FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain
name <wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing Respondent lacks rights or legitimate interests in the <wwwcabelas.com> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel finds that Respondent’s failure to submit a Response shows that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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 American 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.”). Despite Respondent’s failure to submit a Response, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests in the <wwwcabelas.com> domain name according to the Policy ¶ 4(c) factors.
Complainant states that it is not affiliated with Respondent and that it has not given Respondent permission to use its mark in a domain name. Moreover, the WHOIS information lists “Domains Administrator c/o Secure Hosts” as the registrant of the <wwwcabelas.com> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name, which leads to a finding that Respondent lacks rights and legitimate interests under 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 Respondent’s <wwwcabelas.com> domain name
redirects Internet users to Complainant’s own website through Complainant’s
affiliate program. The Panel finds that
such misuse of an affiliate program that takes advantage of a typographical
error to cause Internet users to pass through Respondent’s disputed domain name
on their way to Complainant’s actual site for Respondent’s presumed commercial
gain is not a bona fide offering of
goods or services according to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Deluxe Corp. v.
Complainant contends that Respondent’s <wwwcabelas.com> domain name is a simple typographical error that omits the period between the “www” prefix and the remainder of the disputed domain name. The Panel finds that Respondent’s registration of the disputed domain name including such a common typographical error represents typosquatting, which supports a finding that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>); see also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent lacked rights and legitimate interests in the <wwwcanadiantire.com> domain name where respondent used the domain name as a part of the complainant’s affiliate program in exchange for specified commissions).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that Respondent is a member of
Complainant’s affiliate program who was aware of Complainant’s rights in the
CABELA’S mark and the restrictions on registering versions of that mark in
domain names. Complainant asserts that
Respondent nevertheless registered the <wwwcabelas.com>
domain name, a version of Complainant’s mark consisting of a typographical
error, to attract Internet users and then to redirect them through that
disputed domain name to Complainant’s own site in order to earn the affiliate
fee. The Panel finds that registering a
confusingly similar domain name to attract customers and profit from
redirecting Internet users to Complainant’s own site while a member of
Complainant’s affiliate program constitutes bad faith registration and use
according to Policy ¶ 4(b)(iv). See Sports
The Panel has previously concluded that Respondent’s registration of the <wwwcabelas.com> 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 Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
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 <wwwcabelas.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 25, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum