Benchmark Brands, Inc. v. Secure Hosts c/o Domains Administrator
Claim Number: FA1006001330862
Complainant is Benchmark Brands, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <footssmart.com> and <wwwfootsmart.com>, registered with 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2010.
On June 21, 2010, DOTSTER confirmed by e-mail to the National Arbitration Forum that the <footssmart.com> and <wwwfootsmart.com> domain names are registered with DOTSTER and that Respondent is the current registrant of the names. DOTSTER has verified that Respondent is bound by the 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 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@footssmart.com and postmaster@wwwfootsmart.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 10, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <footssmart.com> and <wwwfootsmart.com> domain names are confusingly similar to Complainant’s FOOTSMART mark.
2. Respondent does not have any rights or legitimate interests in the <footssmart.com> and <wwwfootsmart.com> domain names.
3. Respondent registered and used the <footssmart.com> and <wwwfootsmart.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Benchmark Brands, Inc. is an online and catalog retailer of foot care and lower body healthcare products. Complainant was founded in 1989, has over 300 employees and mails 55 million catalogs annually. Complainant has applied for and received several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its FOOTSMART mark (e.g., Reg. No. 2,035,973 issued Feb. 4, 1997).
Respondent, Secure Hosts c/o Domains Administrator registered the <footssmart.com> and <wwwfootsmart.com> domain names in April 2002. Respondent’s disputed domain names resolve to Complainant’s official <footsmart.com> 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.
The Panel finds that Complainant has provided sufficient
evidence to establish rights in its FOOTSMART mark under Policy ¶ 4(a)(i)
through its trademark registrations with the USPTO (e.g., Reg. No. 2,035,973 issued Feb. 4, 1997).
Complainant contends that the <footssmart.com> and <wwwfootsmart.com> domain names are confusingly similar to Complainant’s FOOTSMART mark. Complainant contends that the <footssmart.com> domain name contains a misspelled version of its mark by adding the letter “s” and the generic top-level domain (“gTLD”) “.com.” Complainant further notes that the <wwwfootsmart.com> domain name contains its mark entirely while leaving out the period between the “www” and Complainant’s mark while also adding the gTLD “.com.” The Panel finds that the <footssmart.com> and <wwwfootsmart.com> domain names are confusingly similar to Complainant’s FOOTSMART mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights and legitimate interests in the <footssmart.com> and <wwwfootsmart.com> domain names. Complainant is required to produce a prima facie case to support such allegations. Once Complainant has submitted a prima facie case the burden of proof shifts to Respondent to show that it holds rights or legitimate interests in the <footssmart.com> and <wwwfootsmart.com> domain names. See 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has produced a prima facie case in support of its allegations. Due to Respondent’s failure to respond to these proceedings the Panel finds that it may assume Complainant’s allegations within the Complaint are true. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent is not commonly known by the <footssmart.com> and <wwwfootsmart.com> domain names and Complainant has not given Respondent permission to use its FOOTSMART mark in a domain name. The WHOIS information for the <footssmart.com> and <wwwfootsmart.com> domain names does not indicate that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that absent evidence refuting Complainant’s allegations that Respondent is not commonly known by the <footssmart.com> and <wwwfootsmart.com> domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed 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 contends that Respondent is using the disputed
domain names to divert Internet traffic to Complainant’s official
<footsmart.com> website in violation of Complainant’s affiliate program
terms. Complainant argues that such use
of the domain names for Respondent’s profit is evidence that Respondent lacks
rights and legitimate interests in the disputed domain name. The Panel agrees and finds that Respondent’s
diversion of Internet users to Complainant’s website, in violation of the terms
of its affiliate program, through confusingly similar domain names is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair used pursuant to Policy ¶ 4(c)(iii). See
Deluxe Corp. v.
Complainant argues
that Respondent is taking advantage of Internet users trying to reach
Complainant’s official <footsmart.com> website by using common
misspellings of Complainant’s FOOTSMART mark.
Further, Complainant argues that Respondent is using the confusingly
similar <footssmart.com> and <wwwfootsmart.com>
domain names to violate Complainant’s affiliate program terms. The Panel finds that Respondent’s engagement
in what is commonly referred to as typosquatting is evidence that Respondent
lacks any rights and legitimate interests in the disputed domain names under
Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain names redirect Internet users
to Complainant’s official <footsmart.com> website in violation of
Complainant’s affiliate program.
Respondent is using common misspellings of Complainant’s FOOTSMART mark
in order to attract Complainant’s customers for Respondent’s own commercial
gain as Respondent receives affiliate fees from Complainant when the Internet
users reach Complainant’s site through Respondent’s typosquatted <footssmart.com> and <wwwfootsmart.com>
domain names instead of arriving at Complainant’s site directly. The Panel finds these efforts to attract
Complainant’s customers for Respondent’s financial benefit in violation of
Complainant’s affiliate program are evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Deluxe Corp. v.
The Panel has previously concluded that Respondent is
engaged in the practice of typosquatting through the registration and use of
the confusingly similar <footssmart.com> and <wwwfootsmart.com>
domain names. The Panel finds that
Respondent’s use of commonly misspelled versions of Complainant’s mark is
further evidence of Respondent’s bad faith registration and use 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 the respondent registered and
used the domain name in bad faith because the 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 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).
Lastly, Complainant asserts that Respondent had actual and/or
constructive notice of Complainant and its rights in the mark prior to
registration of the domain names.
Complainant contends that
Respondent enrolled in Complainant’s affiliate program and therefore knew of
Complainant’s rights in the FOOTSMART mark when it registered the <footssmart.com> and <wwwfootsmart.com>
domain names. Although constructive
knowledge has generally not been held sufficient to support a finding of bad
faith, if the Panel finds Respondent has actual knowledge of Complainant's
mark, the Panel may find Respondent registered and used the disputed domain
names in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002)
(finding bad faith where the method by which the respondent acquired the
disputed domain names indicated that the respondent was well aware that the
domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v.
The Panel finds that Complainant has satisfied 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 <footssmart.com> and <wwwfootsmart.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 20, 2010
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