REDCATS USA, L.P. v. Dong Wang a/k/a Tan Kim Fong
Claim Number: FA1008001343688
Complainant is REDCATS USA, L.P. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Dong Wang a/k/a Tan Kim Fong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <roamanns.com> and <roamons.com>, registered with DotRegistar.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2010.
On August 30, 2010, DotRegistar.com confirmed by e-mail to the National Arbitration Forum that the <roamanns.com> and <roamons.com> domain names are registered with DotRegistar.com and that Respondent is the current registrant of the names. DotRegistar.com has verified that Respondent is bound by the DotRegistar.com 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 August 31, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@roamanns.com and postmaster@roamons.com by e-mail. Also on August 31, 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 October 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <roamanns.com> and <roamons.com> domain names are confusingly similar to Complainant’s ROAMAN’S mark.
2. Respondent does not have any rights or legitimate interests in the <roamanns.com> and <roamons.com> domain names.
3. Respondent registered and used the <roamanns.com> and <roamons.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, REDCATS USA, L.P., holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ROAMAN’S mark (e.g., Reg. No. 1,169,405 registered September 15, 1981). Complainant uses the ROAMAN’S mark in connection with women’s apparel and online retail store services.
Respondent registered the <roamanns.com> and <roamons.com> domain names on June 22, 2002 and April 28, 2002 respectively. The disputed domain names resolve to a website that features hyperlinks to third-party websites, some of which directly compete with Complainant’s business.
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.
Complainant contends that, although Respondent uses two different aliases, a single person owns and uses the disputed domain names. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant first claims that the <roamanns.com> and <roamons.com> domain names are both registered through DotRegistrar LLC and that both domain names resolve to the same parked website via the <usseek.com> domain name. Complainant argues that it is significant that the disputed domain names redirect to the same parked website because the only way to have domain names forward in this manner is to enter a forwarding record on the hosting servers. In addition, Complainant states that the WHOIS information lists “Dong Wang” as the registrant of the <roamanns.com> domain name and youg@ownbox.com as the administrative email address for the domain name. Complainant further states that the WHOIS information lists “Tan Kim Fong” as the registrant of the <roamons.com> domain name and tankim@ownbox.com as the administrative email address. Complainant explains that the <roamanns.com> domain name redirects using the <ownbox.com> domain name. Complainant contends this fact is significant since “ownbox.com” is the root domain name of all the email addresses noted for all aliases. Finally, Complainant claims a prior UDRP panel has already established that “Dong Wang” and “Tan Kim Fong” are aliases for a single entity. See Microsoft Corp. v. Tan Kim Fong a/k/a Dong Wang a/k/a Ali Aziz a/k/a Nadeem Qadir a/k/a Bladimir Boyiko a/k/a NA Dotsan a/k/a Leonard Bogucki a/k/a Venta a/k/a The data in Bulkregister.com's WHOIS database is p a/k/a Registrate Co. a/k/a Cosmos1, FA 1265720 (Nat. Arb. Forum July 14, 2009).
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant asserts rights in the ROAMAN’S mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,169,405 registered September 15, 1981). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the ROAMAN’S 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). Furthermore, the Panel finds it irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant avers Respondent’s <roamanns.com> and <roamons.com> domain names are confusingly similar to its ROAMAN’S mark. Respondent omits the apostrophe from Complainant’s mark in both of the disputed domain names. Respondent then adds an extra “n” to Complainant’s ROAMAN’S mark in the <roamanns.com> domain name. In addition, Respondent replaces the second letter “a” in Complainant’s mark with the letter “o” in the <roamons.com> domain name. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain names. The Panel finds Respondent’s slight alterations combined with the addition of a gTLD do not render Respondent’s domain names distinct from Complainant’s mark. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also 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 Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <roamanns.com> and <roamons.com> domain names are confusingly similar to Complainant’s ROAMAN’S mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <roamanns.com> and <roamons.com> domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts it has not given Respondent permission to use its ROAMAN’S mark in a domain name. Complainant also asserts Respondent is not sponsored by or legitimately affiliated with Complainant. Furthermore, the WHOIS information lists “Dong Wang” and “Tan Kim Fon” as the registrants of the disputed domain names, which the Panel finds is not similar to either the <roamanns.com> domain name or the <roamons.com> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the <roamanns.com> and <roamons.com> domain names under 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 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).
Complainant alleges the <roamanns.com> and <roamons.com> domain names resolve to a website that features hyperlinks to third-party websites, some of which that directly compete with Complainant’s women’s apparel business. A screen shot of the resolving websites show hyperlinks with titles such as “Women Clothing,” “Buy Women’s Clothing,” and “Women’s Clothing: 75% Off.” The Panel presumes that Respondent profits from its use of the disputed domain name through pay-per-click fees. Therefore, the Panel finds Respondent is not using the <roamanns.com> and <roamons.com> domain names to make 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 confusingly similar 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Finally, the Panel finds that Respondent incorporates common misspellings of Complainant’s mark in the disputed domain names by employing typographical errors. Therefore, the Panel finds Respondent has engaged in typosquatting and that this behavior provides further evidence that Respondent lacks rights and legitimate interests in the <roamanns.com> and <roamons.com> domain names under Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s <roamanns.com> and <roamons.com> domain names resolve to a website that features hyperlinks to third-party websites that compete with Complainant’s business. Accordingly, the Panel finds the disputed domain names disrupt Complainant’s business, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Furthermore, the Panel determines that Respondent uses confusingly similar domain names in an attempt to profit from pay-per-click fees. As a result, the Panel concludes Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark. Accordingly, the Panel finds the disputed domain names disrupt Complainant’s business, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); 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)).
The Panel also finds Respondent has engaged in typosquatting, which is further evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also 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).”).
The Panel finds 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 <roamanns.com> and <roamons.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 8, 2010
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