Benchmark Brands, Inc. v. Sky Blue Marketing
Claim Number: FA1006001331227
PARTIES
Complainant is Benchmark Brands,
Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <footsnart.com> and <gootsmart.com>, registered with GoDaddy.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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2010.
On June 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <footsnart.com> and <gootsmart.com> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@footsnart.com and postmaster@gootsmart.com. Also on June 25, 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.
A timely Response was received and determined to be complete on July 13, 2010.
On July 19, 2010 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant's contentions can be summarised as follows:
Founded in 1989, Footsmart, a
division of the Complainant is the largest direct retailer of foot and lower
body health products in the
The Complainant owns US federal trade mark registrations for FOOTSMART.
The Disputed Domain Names are a classic example of typosquatting and as such must be confusingly similar to the targeted trade mark by design.
Respondent is not commonly known by the Disputed Domain Names, is not affiliated with the Complainant in any way and has no permission from the Complainant.
The Disputed Domain Names were registered in 2003 after the Complainant's registration of the <footsmart.com> domain name in 1997, registration of the Complainant's trade marks and use of its FOOTSMART mark in commerce.
The Disputed Domain Names are not currently attached to any web sites but the Respondent has previously connected content and/or keywords to the Disputed Domain Names which were directly related to the Complainant's business.
Respondent has ignored attempts to resolve matters outside this proceeding.
Respondent's typosquatting behaviour is, in and of itself, evidence of bad faith.
B. Respondent
The Respondent's contentions can be summarised as follows:
It did register the Domain Names, but it did not receive the Complainant's initial communications as they went to an old e mail address. The mailing address has not changed but was not used. There is no dispute over the domain names complained about and they have already offered to transfer the names.
FINDINGS
The Complainant
founded in 1989 is the owner of the
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
ICANN POLICY 4(A) ANALYSIS
The Panel’s view is that the Complainant has shown it has rights in the name FOOTSMART and, as the Respondent has engaged in typosquatting and has pointed the Disputed Domain Names to material connected with the Complainant, the Respondent has no legitimate interest in the Disputed Domain Names. The Respondent has given no reasons why typosquatting versions of the FOOTSMART name were adopted. The Domain Names were adopted in bad faith. The panelist sees no reason not to state its basic finding on these issues. Indeed these basic findings give it the jurisdiction to order transfer of the Domain Names under the Policy.
However, in circumstances such as this where the Respondent has not contested the transfer of the Domain Names and agrees to transfer the Domain Names to the Complainant, the Panel may decide to forego the lengthy traditional UDRP analysis and order an immediate transfer of the Disputed Domain Names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent agreed to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). As such the Panel will order the transfer of the Disputed Domain Names to the Complainant.
DECISION
Having reviewed the Complainant’s request for relief and the Respondent’s consent to that relief the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <footsnart.com> and <gootsmart.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne of
Palmer Biggs Legal, Panelist
Dated: July 23, 2010
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