Things Remembered Personalized Gifts, Inc. v. Bunie.com c/o Shelly Heradia
Claim Number: FA1009001348999
Complainant is Things Remembered Personalized Gifts, Inc. (“Complainant”), represented by , of CitizenHawk, Inc., California, USA. Respondent is Bunie.com c/o Shelly Heradia (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thingsrememberd.com> and <thingremembered.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2010.
On September 28, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <thingsrememberd.com> and <thingremembered.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@thingsrememberd.com and postmaster@thingremembered.com by e-mail. Also on September 29, 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 November 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <thingsrememberd.com> and <thingremembered.com> domain names are confusingly similar to Complainant’s THINGS REMEMBERED mark.
2. Respondent does not have any rights or legitimate interests in the <thingsrememberd.com> and <thingremembered.com> domain names.
3. Respondent registered and used the <thingsrememberd.com> and <thingremembered.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Things Remembered Personalized Gifts, Inc., owns the exclusive rights to its THINGS REMEMBERED mark and uses it in connection with its personalized gift business, both online and in retail stores. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its THINGS REMEMBERED mark (e.g., Reg. No. 1,022,232 issued October 7, 1975).
Respondent, Bunie.com c/o Shelly Heradia, registered both the <thingsrememberd.com> and < thingremembered.com> domain names on September 22, 2000. Respondent makes use of Complainant’s affiliate program. The disputed domain names automatically redirect Internet users to Complainant’s official website.
Respondent has been the respondent in other UDRP proceedings in which disputed domain names were transferred from Respondent to the respective complainants in those cases. See DaimlerChrysler AG v. Bunie.com, FA 519308 (Nat. Arb. Forum Sept. 7, 2005); see also Freightliner LLC v. Bunie.com, FA 528542 (Nat. Arb. Forum Sept. 20, 2005); see also Mary Kay Inc. v. Bunie.com, FA 1285042 (Nat. Arb. Forum Oct. 24, 2009).
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 it has established rights in the THINGS REMEMBERED mark. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Complainant holds multiple trademark registrations with the USPTO for its THINGS REMEMBERED mark (e.g., Reg. No. 1,022,232 issued October 7, 1975). Therefore, the Panel finds that Complainant has established rights in the THINGS REMEMBERED mark pursuant to Policy ¶ 4(a)(i) through its federal trademark registrations.
Complainant contends Respondent’s domain name is confusingly similar to Complainant’s THINGS REMEMBERED mark. Both disputed domain name remove the space between the two words in Complainant’s mark and add the generic top-level domain (“gTLD”) “.com.” One of the domain names simply removes the letter “s” from THINGS and the other omits the letter “e” in REMEMBERED. Previous panels have found that the removal of a letter from a complainant’s mark renders the disputed domain name confusingly similar. Earlier panels have also asserted that the removal of a space and the addition of a gTLD do nothing to distinguish a disputed domain name from a complainant’s mark because both are essential elements of a web address. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel concludes that Respondent’s <thingsrememberd.com> and < thingremembered.com> domain names are confusingly similar to Complainant’s THINGS REMEMBERED mark.
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <thingsrememberd.com> and < thingremembered.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant makes a prima facie case. Due to Respondent’s failure to respond, the Panel may infer that Respondent does not have rights or legitimate interests in the <thingsrememberd.com> and <thingremembered.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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Nevertheless, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
When there is nothing set forth in the record to indicate that a respondent is commonly known by a disputed domain name, previous panels have inferred that the respondent has not established any rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also 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). Complainant asserts that Respondent is not authorized to use the THINGS REMEMBERED mark. The WHOIS information identifies the domain name registrant as “Bunie.com c/o Shelly Heradia.” The Panel finds that Respondent is not commonly known by the <thingsrememberd.com> or <thingremembered.com> domain names. Therefore, Respondent has not established any rights or legitimate interests in either of the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Respondent uses the <thingsrememberd.com> and <thingremembered.com> domain names to redirect Internet users to Complainant’s website. Complainant contends Respondent receives a fee each time this redirection occurs through Respondent’s association with Complainant’s affiliate program. The Panel finds that this intentional redirection does 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). See Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program).
Respondent registered both the <thingsrememberd.com> and <thingremembered.com> domain names with common misspellings of Complainant’s THINGS REMEMBERED mark. The Panel finds this to constitute typosquatting and further evidence that Respondent’s lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); 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 <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant alleges Respondent’s use of the <thingsrememberd.com> and <thingremembered.com> domain names is a part of a pattern of bad faith use and registration. Respondent has been involved in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases. See DaimlerChrysler AG v. Bunie.com, FA 519308 (Nat. Arb. Forum Sept. 7, 2005); see also Freightliner LLC v. Bunie.com, FA 528542 (Nat. Arb. Forum Sept. 20, 2005); see also Mary Kay Inc. v. Bunie.com., FA 1285042 (Nat. Arb. Forum Oct. 24, 2009). Therefore, the Panel finds that Respondent’s pattern of registration and misuse of disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Respondent is a member of Complainant’s affiliate program in which Respondent receives a fee each time an Internet user is redirected from Respondent’s domain to Complainant’s website. Respondent registered domain names which are confusingly similar to Complainant’s mark in an attempt to take advantage of this program and to unfairly receive a commercial benefit from Complainant through the confusion between the sites. The Panel finds this registration and use to be in bad faith pursuant to Policy ¶ 4(b)(iv). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).
Internet users likely reach Respondent’s website by mistake when they enter a common misspelling of Complainant’s mark. Respondent likely knew this to be the result when they registered the disputed domain names. The Panel finds that this use constitutes typosquatting and is in bad faith pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); 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 Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thingsrememberd.com> and <thingremembered.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 8, 2010
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