Benchmark Brands, Inc. v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA1006001330855
Complainant is Benchmark Brands, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <foorsmart.com>, registered with ABOVE.COM PTY LTD.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2010.
On June 22, 2010, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <foorsmart.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 June 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@foorsmart.com by e-mail. Also on June 23, 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 July 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a direct retailer of foot and lower body healthcare products.
Complainant conducts business through 55 million catalogs it mails annually, as well as through its <footsmart.com> website with 2009 online sales exceeding $66.2 million.
Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its FOOTSMART mark (including Reg. No. 2,035,973, issued February 4, 1997).
Respondent is not commonly known by the <foorsmart.com> domain name and Complainant has not given Respondent permission to use its mark in any way.
Respondent registered the <foorsmart.com> domain name on November 30, 2006.
Respondent’s domain name resolves to a website featuring a search engine and links to the websites of companies that provide foot care products in competition with the business of Complainant.
Respondent receives click-through fees from the businesses advertised on Respondent’s resolving website.
Respondent
has a history of registering domain names that infringe upon the trademark
rights of others and has been ordered by previous UDRP panels to transfer the
disputed domain names to the respective complainants.
Respondent’s <foorsmart.com> domain name is confusingly similar to Complainant’s FOOTSMART mark.
Respondent does not have any rights to or legitimate interests in the <foorsmart.com> domain name.
Respondent registered and uses the <foorsmart.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence adequate to establish its rights in the trademark FOOTSMART under Policy ¶ 4(a)(i) through its mark registrations with the USPTO. See 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.” See also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
The <foorsmart.com> domain name is confusingly similar to Complainant’s FOOTSMART mark, merely misspelling the mark by replacing the letter “t” with the letter “r” and adding the generic top-level domain (“gTLD”). This is not enough to create a domain name that is distinct from Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in a complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to a complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that the <foorsmart.com> domain name is confusingly similar to Complainant’s FOOTSMART mark under Policy ¶ 4(a)(i).
Complainant is required to produce a prima facie case to support of its allegations under this head of the Policy. Once Complainant has satisfied this requirement, the burden of proof shifts to Respondent to prove that it holds rights to or legitimate interests in the <foorsmart.com> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in a domain name).
Complainant has produced a prima facie case in support of its allegations on the question of Respondent’s rights to or interests in the contested domain name. Owing to Respondent’s failure to respond to the Complaint filed in these proceedings, we may comfortably presume that Complainant’s allegations are true. See, for example, 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.” See also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
Nevertheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in any of the contested domain name which are cognizable under the policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that
Respondent is not commonly known by the <foorsmart.com> domain name and Complainant has not given
Respondent permission to use its mark in any way. Moreover, the WHOIS information for the <foorsmart.com> domain name does
not indicate that Respondent is commonly known by the disputed domain
name. On this record, we are constrained
to conclude that Respondent is not commonly known by the <foorsmart.com> domain name so as to have established that it
has rights to or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See
We also note that Complainant contends, without objection from Respondent, that Respondent is using the website resolving from the <foorsmart.com> domain name to provide links to the websites of business competitors of Complainant within the foot care industry. There is likewise no dispute as to Complainant’s further contention that Respondent receives click-through fees from the businesses advertised on Respondent’s website. This indicates that Respondent’s use of the disputed domain name does 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). See 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 contested 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)); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that a respondent’s use of a contested domain name to maintain a website with links to the products and services of a complainant’s commercial competitors did not represent 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)).
We further conclude that Respondent’s <foorsmart.com> domain name is a typo-squatted
version of complainant’s FOOTSMART mark.
Respondent is thus diverting Internet users to its website by using a
common misspelling of Complainant’s mark to form the contested domain name. Typo-squatting is itself evidence of
Respondent’s lack of rights to or legitimate interests in the <foorsmart.com> domain name under
Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
engaged in
typosquatting, which provides additional evidence that respondent lacks rights
and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
See also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to or legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has submitted evidence showing that Respondent
is a serial cybersquatter who has maintained a pattern of trademark infringing
domain name registrations and has been ordered by previous UDRP panels to
transfer the infringing domain names to various complainants. See Acad., Ltd. v. Transure
Enter. Ltd.,
FA 128916 (Nat. Arb. Forum Oct. 27, 2009); see
also Ryder Sys., Inc. v. Transure Enter. Ltd., FA 1274369 (Nat. Arb. Forum
Aug. 31, 2009); further see Sears Brands,
LLC v. Transure Enter. Ltd., FA 1289248 (Nat. Arb. Forum Nov. 21, 2009). Respondent
does nto dispute this showing. Respondent’s serial pattern of bad
faith registration of domain names is evidence that Respondent has also registered
and used the <foorsmart.com>
domain name in bad faith within the meaning of Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Respondent is using the contested <foorsmart.com> domain name to redirect Internet users to
its website, which provides links to the websites of Complainant’s competitors
in the foot care industry. Respondent’s
use of the disputed domain name in this manner is evidence of Respondent’s bad
faith registration and use of the subject domain name under Policy ¶ 4(b)(iii). See
Respondent evidently receives click-through fees when an
Internet user clicks on the links carried on the website resolving from the
contested domain name. Thus Respondent
uses the contested domain to attract Internet users to Respondent’s website for
commercial gain, which is evidence of bad faith registration and use of the
domain under Policy ¶ 4(b)(iv). See Asbury
Auto. Group, Inc. v.
Finally under this head of the Complaint, Respondent has engaged
in typo-squatting by registering and using the <foorsmart.com> domain name containing a commonly
misspelled version of Complainant’s mark.
Typo-squatting is further evidence that Respondent registered and uses
the disputed domain name in bad faith under 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
that a respondent registered and used a domain name in bad faith where that
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 Nextel
Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s
registration and use of the <nextell.com> domain name was in bad faith
because the domain name epitomized typo-squatting in its purest form).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <foorsmart.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 20, 2010
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