Benchmark
Brands, Inc. v.
Claim Number: FA1006001331222
Complainant is Benchmark
Brands, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <footsmasrt.com>, registered with COMPANA, LLC.
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 22, 2010.
On June 24, 2010, COMPANA, LLC confirmed by e-mail to the National Arbitration Forum that the <footsmasrt.com> domain name is registered with COMPANA, LLC and that Respondent is the current registrant of the name. COMPANA, LLC has verified that Respondent is bound by the COMPANA, LLC 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 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@footsmasrt.com by e-mail. Also on June 28, 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 21, 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 the owner and operator of Footsmart, which is a direct retailer of footwear and foot health and care products that offers over 3,000 products.
Complainant employs more than 300 employees and mails 55 million catalogs annually with website sales exceeding $66.2 million in 2009.
Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its FOOTSMART mark (including that identified as Reg. No. 2,035,973, issued Feb. 4, 1997).
Respondent is not commonly known by the <footsmasrt.com> domain name, and Complainant has not authorized Respondent to use Complainant’s FOOTSMART mark in any way.
Respondent registered the <footsmasrt.com> domain name on December 13, 2005.
Respondent’s domain name resolves to a website which displays links to the websites of footwear and foot care companies in competition with the business of Complainant.
Respondent receives financial compensation in the form of click-through fees from its association with the links displayed on its 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 domain names at issue to the respective complainants.
Respondent’s <footsmasrt.com> domain name is confusingly similar to Complainant’s FOOTSMART mark.
Respondent does not have any rights to or legitimate interests in the <footsmasrt.com> domain name.
Respondent registered and uses the <footsmasrt.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 a 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 established rights in its FOOTSMART mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, 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.”).
Respondent’s <footsmasrt.com> domain name is confusingly similar to Complainant’s FOOTSMART mark. The disputed domain name contains a misspelled version of Complainant’s FOOTSMART mark, created merely by adding the letter “s” to the mark. Further, the addition of the generic top-level domain (“gTLD”) “.com” is not relevant to a Policy ¶ 4(a)(i) analysis. 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 Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).); Further see 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.
Therefore, the Panel finds that Respondent’s <footsmasrt.com> domain name is confusingly similar to Complainant’s FOOTSMART mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights to or legitimate interests in the <footsmasrt.com> domain name under Policy ¶ 4(a)(ii). Complainant must produce a prima facie case in support of its contentions in order to shift the burden to Respondent to show that it does possess rights to or legitimate interests in the <footsmasrt.com> domain name. See, for example, 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 a complainant, the burden then shifts to a respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).
Complainant has produced a prima facie case to support its contentions that Respondent lacks rights and legitimate interests in the <footsmasrt.com> domain name. Owing to Respondent’s failure to provide a Response to these proceedings, we may accept as true Complainant’s assertions under this heading of the Complaint. See 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.
See also 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.”
We will nonetheless examine the record before us, by reference to the criteria 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 the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <footsmasrt.com> domain name, and that Complainant has not authorized Respondent to use Complainant’s FOOTSMART mark in any way. Moreover, the WHOIS information for the <footsmasrt.com> domain name identifies the registrant only as “Texas International Property Associates – NA NA”. On this record, we are constrained to conclude that Respondent is not commonly known by the <footsmasrt.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that a respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because that respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the domain name, including the pertinent WHOIS information, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also observe that Complainant argues, without objection
from Respondent, that Respondent is using the contested <footsmasrt.com>
domain name to operate a directory website that contains links to the websites
of Complainant’s competitors in the footwear and foot care product
industry. Complainant further contends
that Respondent receives financial compensation in the form of click-through
fees in association with the links displayed on its website. Respondent does not dispute this further
assertion. Accordingly, we conclude that
Respondent’s use of the disputed domain name to maintain a website containing
links to the websites of Complainant’s competitors does not amount to a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
contested domain 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 Wal-Mart
Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s
use of domain names confusingly similar to a complainant’s WAL-MART mark to
divert Internet users seeking that complainant’s goods and services to websites
competing with the business of that complainant did 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)).
We cannot but notice that Respondent is evidently
deliberately taking advantage of Internet users attempting to reach
Complainant’s website by capitalizing on the misspelling of Complainant’s
FOOTSMART mark. Respondent’s use of this
“typo-squatting” technique in the formation of the contested domain name is
further evidence that Respondent lacks rights to and legitimate interests in
the disputed 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 LTD
Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommadaties.com> domain names were
intentional misspellings of Complainant’s LTD COMMODITIES mark and this
“’typosqatting’ is evidence that Respondent lacks right or legitimate interests
in the disputed domain names”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is a pattern
cyber-squatter with a history of registering domain names that infringe upon
the trademark rights of others, as a result of which Respondent has been
ordered by panels to transfer disputed domain names to various
complainants. See Goya Foods, Inc. v.
Respondent’s use of the <footsmasrt.com> domain name to attract Internet users to Respondent’s website and from there to the websites of Complainant’s business competitors disrupts Complainant’s business and is therefore evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the disputed domain to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
Respondent’s use of the <footsmasrt.com> domain name to intentionally attract Internet users for commercial gain is further evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). Indeed Respondent’s domain name creates a likelihood of confusion between the domain name and Complainant’s mark, and Respondent seeks to capitalize on that confusion by generating click-through fees paid by websites whose links are displayed on Respondent’s website. This behavior is evidence of bad faith registration and use of the contested domain pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to websites that offered services similar to those offered by a complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent registered and used a disputed domain name in bad faith under Policy ¶ 4(b)(iv) where that respondent gained commercially from a likelihood of confusion between a complainant’s AIM mark and the competing instant messaging products and services advertised on that respondent’s website which resolved from the disputed domain name).
We have already determined that Respondent has engaged in
typo-squatting through its registration and use of the <footsmasrt.com> domain name.
This practice has been found by previous panels to constitute evidence
of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii). See 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); see also Microsoft Corp. v. Domain Registration
Therefore, the Panel finds that Respondent registered and
uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <footsmasrt.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 28, 2010
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