national arbitration forum

 

DECISION

 

Benchmark Brands, Inc. v. Anunet Pvt Ltd c/o Jyoti Mehta

Claim Number: FA1006001331154

 

PARTIES

Complainant is Benchmark Brands, Inc. (“Complainant”), represented by , of CitizenHawk, Inc., California, USA.  Respondent is Anunet Pvt Ltd c/o Jyoti Mehta (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <footsmat.com> and <fotsmart.com>, registered with BIZCN.COM, INC.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2010.

 

On June 23, 2010, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <footsmat.com> and <fotsmart.com> domain names are registered with BIZCN.COM, INC. and that Respondent is the current registrant of the names.  BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.COM, INC. 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@footsmat.com and postmaster@fotsmart.com.  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 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <footsmat.com> and <fotsmart.com> domain names are confusingly similar to Complainant’s FOOTSMART mark.

 

2.      Respondent does not have any rights or legitimate interests in the <footsmat.com> and <fotsmart.com> domain names.

 

3.      Respondent registered and used the <footsmat.com> and <fotsmart.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Benchmark Brands, Inc., is a retailer of foot and lower body healthcare products founded in 1989.  Complainant holds rights in the FOOTSMART mark through its numerous registrations with the United States Patent and Trademark Office (“USPOT”) (e.g. Reg. No. 2,035,973 issued February 4, 1997).  Complainant offers its products through mail order catalogs and on its official website resolving from the <footsmart.com> domain name.

 

Respondent, Anunet Pvt Ltd c/o Jyoti Mehta, registered the <footsmat.com> and <fotsmart.com> domain names on February 11, 2005.  The disputed domain names resolve to websites with links to third-party websites of Complainant and Complainant’s competitors.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts it has rights in the FOOTSMART mark due to its numerous trademark registrations of the mark with the USPTO (e.g. Reg. No. 2,035,973 issued February 4, 1997).  The Panel finds that Complainant’s registration of its mark with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Respondent’s <footsmat.com> and <fotsmart.com> domain names are confusingly similar to Complainant’s FOOTSMART mark, alleges Complainant.  The disputed domain names, Complainant argues, each merely remove a letter from the mark, either the letter “r” or the letter “o,” and add a generic top-level domain (“gTLD”) (“.com”).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”); see also CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that … [the] addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because the mere alteration of removing a letter and adding a gTLD to a mark is insufficient to distinguish the disputed domain names from the mark.

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights and legitimate interests in the <footsmat.com> and <fotsmart.com> domain names. Once Complainant has made a prima facie case in support of this allegation, the burden shifts to the Respondent to establish rights or legitimate interests in the disputed domain names, pursuant to Policy ¶ 4(a)(ii). Based on the allegations made in the Complainant, the Panel finds Complainant has established a prima facie case, thus shifting the burden to the Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel, in its discretion, chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outline in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).

 

The WHOIS information for the disputed domain names lists the registrant for each as “Anunet Pvt Ltd c/o Jyoti Mehta” and Complainant argues this provides no evidence to suggest that Respondent is commonly known by the disputed domain names.  Complainant asserts that it has not given permission to Respondent for use of the mark, nor is Respondent sponsored by or affiliated with Complainant.  The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 lacks rights and legitimate interests in the disputed domain name because they do not provide a bona fide offering of goods or services nor are they used for a noncommercial or fair use.  Complainant asserts that the <footsmat.com> and <fotsmart.com> domain names resolve to websites that display links to third-party websites of Complainant’s competitors in the foot and lower-body healthcare products industry and presumably receives click-through fees from the same.  The Panel finds that Respondent’s use of the disputed domain names to display links to third-party websites and profiting when Internet users click the links and are redirected to Complainant’s competitors is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does 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)).

 

Complainant alleges that Respondent’s <footsmat.com> and <fotsmart.com> domain names are intentional misspellings of Complainant’s FOOTSMART mark.  The disputed domain names remove either the letter “r” or the letter “o” from Complainant’s FOOTSMART mark.  Complainant alleges that Respondent has engaged in typosquatting by registering these domain names, and that typosquatting is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names.  This Panel has found that Respondent’s disputed domain names constitute typosquatting, and finds that typosquatting is further evidence that Respondent does not have rights or legitimate interests in the <footsmat.com> and <fotsmart.com> domain names 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 Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s <footsmat.com> and <fotsmart.com> domain names divert business from Complainant, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  Respondent’s disputed domain names resolve to websites that display links to third-party websites that include competitors of Complainant in the foot and lower-body healthcare products business .  Internet users seeking Complainant’s healthcare products may be diverted to competitors of Complainant from Respondent’s confusingly similar disputed domain names.  The Panel finds that such diversion is a disruption of Complainant’s catalog and online business by Respondent and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also 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)).

 

Complainant alleges that Respondent uses the <footsmat.com> and <fotsmart.com> domain names to profit from the likely confusion of Internet users constitutes bad faith registration and use of the disputed domain names.  Complainant contends that Internet users seeking Complainant’s business may become confused by the disputed domain names and their resolving websites, which display Complainant’s mark and list links to third-party websites.  Complainant further contends that Respondent likely receives click-through fees from the third-parties each time an Internet user clicks on one of the displayed links.  The Panel finds that Respondent is profiting by creating Internet user confusion, which is bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

Lastly, Complainant contends that Respondent’s <footsmat.com> and <fotsmart.com> domain names epitomize typosquatting which is stand alone evidence of Respondent’s bad faith registration and use of the disputed domain names.  The Panel has found that Respondent’s disputed domain names constitute typosquatting, and the Panel determines typosquatting to be further evidence that Respondent has registered and used the <footsmat.com> and <fotsmart.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <footsmat.com> and <fotsmart.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated: July 23, 2010

 

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