Cabela’s, Inc. v Domain Names LLC
Claim Number: FA1005001326393
Complainant is Cabela’s, Inc. (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cabelsa.com>, registered with DOTREGISTRAR.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on May 25, 2010.
On May 25, 2010, DOTREGISTRAR confirmed by e-mail to the National Arbitration Forum that the <cabelsa.com> domain name is registered with DOTREGISTRAR and that Respondent is the current registrant of the name. DOTREGISTRAR has verified that Respondent is bound by the DOTREGISTRAR 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 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@<cabelsa.com>. Also on May 26, 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 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <cabelsa.com> domain name is confusingly similar to Complainant’s CABELA’S mark.
2. Respondent does not have any rights or legitimate interests in the <cabelsa.com> domain name.
3. Respondent registered and used the <cabelsa.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 based outdoor outfitter, producing nearly
100 different catalogs per year which are shipped to all 50 states and 125
countries worldwide, including specialty books focusing on outdoor pursuits
such as archery, fly-fishing and boating.
Complainant holds multiple trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for its CABELA’S mark:
CABELA’S Reg. No. 1,151,981 issued April 21, 1981
CABELA’S CLUB Reg. No. 2,116,567 issued November 11, 1997
CABELA’S Reg. No. 2,163,936 issued June 9, 1998
CABELAS.COM Reg. No. 2,247,977 issued May 25, 1999
CABELAS Reg. No. 3,130,554 issued August 15, 2006
Respondent, Domain Names LLC,
registered the disputed domain name on July 5, 2003. The disputed domain name resolves to an
inactive 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 asserts rights in its CABELA’S mark based on its holding of multiple trademark registrations with the USPTO:
CABELA’S Reg. No. 1,151,981 issued April 21, 1981
CABELA’S CLUB Reg. No. 2,116,567 issued November 11, 1997
CABELA’S Reg. No. 2,163,936 issued June 9, 1998
CABELAS.COM Reg. No. 2,247,977 issued May 25, 1999
CABELAS Reg. No. 3,130,554 issued August 15, 2006
The Panel finds that Complainant’s USPTO registrations for
its CABELA’S mark is overwhelming evidence of its rights in the mark pursuant
to Policy ¶ 4(a)(i).
The Panel further finds that it is irrelevant whether Complainant
registered the mark in the country in which Respondent resides or operates and
that registration with any federal trademark authority is sufficient. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding
that it is irrelevant whether the complainant has registered its trademark in
the country of the respondent’s residence).
Complainant asserts that
Respondent’s <cabelsa.com> domain
name is confusingly similar to Complainant’s CABELA’S mark. Respondent’s disputed domain name eliminates
the apostrophe from Complainant’s mark and transposes the letters “a” and “s”
in Complainant’s mark. The disputed
domain name also appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of the
apostrophe from Complainant’s mark does not prevent a finding of confusing
similarity. 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 Daddy’s Junky Music
Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The
lack of an apostrophe in the domain name is not a distinguishing difference
because punctuation is not significant in determining the similarity of a
domain name and a mark.”). The Panel
also finds that the transposition of two letters renders the disputed domain
name confusingly similar to Complainant’s mark.
See 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 Delta Corporate Identity, Inc. v.
SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the
<dleta.com> domain name was confusingly similar to the complainant’s DELTA
mark). Additionally, the Panel finds
that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i)
analysis. See 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);
see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the mere addition of the generic top-level domain “.com” is insufficient
to differentiate a disputed domain name from a mark. Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <cabelsa.com> domain name is confusingly similar to Complainant’s
CABELA’S mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights and legitimate interests in the disputed domain name. The requirements of Policy ¶ 4(a)(ii) dictate that Complainant must first make a prima facie case in support of its allegations before the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant did make a sufficient prima facie case and infers from Respondent’s failure to respond that the allegations made by Complainant are true. 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nevertheless, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests in accord with the factors outlined in Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name and that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Additionally, Complainant asserts that it has not given Respondent permission to use Complainant’s mark in a domain name. The WHOIS information lists the registrant of the disputed domain name as “Domain Names LLC” which the Panel finds does not indicate that Respondent is commonly known by the disputed domain name. Without evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 has failed to make an
active use of the disputed domain name.
The Panel finds that Respondent’s use of the disputed domain name which
fails to resolve to an active website is neither a use in connection with a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had
no rights or legitimate interests in a domain name under either Policy ¶
4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the
domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA
702527 (Nat.
Arb. Forum June 21,
2006) (finding that the respondent’s failure to use the disputed domain name
for several years was not a bona
fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii)).
Complainant asserts
that Respondent has engaged in typosquatting.
The Panel finds that Respondent’s disputed domain name which
incorporates a common misspelling of Complainant’s mark consisting of the
transposition of two letters. The Panel
further finds that typosquatting is additional evidence that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that it is not limited to the enumerated factors in Policy ¶
4(b). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.”).
Complainant asserts that Respondent’s disputed domain name fails to resolve to an active website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
As established previously, Respondent has engaged in the practice of typosquatting. The Panel finds that typosquatting is itself evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cabelsa.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 30, 2010
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