Lifetime Brands, Inc. v. Dong Wang
Claim Number: FA1357374
Complainant is Lifetime Brands, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Dong Wang (“Respondent”),China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pfaltgraff.com>, <pfalzgraff.com>, <pfalzgraph.com> and <pfatlzgraff.com>, registered with DotRegistar.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2010; the National Arbitration Forum received payment on November 9, 2010.
On November 10, 2010, DotRegistar.com confirmed by e-mail to the National Arbitration Forum that the <pfaltgraff.com>, <pfalzgraff.com>, <pfalzgraph.com> and <pfatlzgraff.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@pfaltgraff.com, postmaster@pfalzgraff.com, postmaster@pfalzgraph.com, and postmaster@pfatlzgraff.com. Also on November 15, 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 December 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pfaltgraff.com>, <pfalzgraff.com>, <pfalzgraph.com> and <pfatlzgraff.com> domain names are confusingly similar to Complainant’s PFALTZGRAFF mark.
2. Respondent does not have any rights or legitimate interests in the <pfaltgraff.com>, <pfalzgraff.com>, <pfalzgraph.com> and <pfatlzgraff.com> domain names.
3. Respondent registered and used the <pfaltgraff.com>, <pfalzgraff.com>, <pfalzgraph.com> and <pfatlzgraff.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lifetime Brands, Inc., owns the PFALTZGRAFF mark and holds trademark registrations of its PFALTZGRAFF mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,334,344 issued May 7, 1985). The PFALTZGRAFF mark is used in connection with pottery as well as a full range of kitchen products, including cookware and dinnerware.
Respondent, Dong Wang, registered the <pfatlzgraff.com> and <pfalzgraph.com> domain names on November 24, 2002, the <pfalzgraff.com> domain name on June 15, 2000, and the <pfaltgraff.com> domain name on June 21, 2000. Respondent uses the disputed domain names to resolve to websites featuring third-party links, some of which directly compete with Complainant’s kitchenware 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 has established rights in its PFALTZGRAFF mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See 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)). The Panel finds that Complainant is not required to register its mark within the country of Respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant holds trademark registration of its PFALTZGRAFF mark with the USPTO (e.g. Reg. No. 1,334,344 issued May 7, 1985).
Respondent’s disputed domain names are confusingly similar to Complainant’s PFALTZGRAFF mark. The disputed domain names differ from Complainant’s mark only by the misspelling of the mark, the deletion of a single letter, the transposition of letters, and the addition of the generic top level domain (“gTLD”) “.com.” The Panel finds that the misspelling does not significantly distinguish the <pfalzgraph.com> domain name from Complainant’s mark. See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). The Panel also finds that the transposition of two letters fails to properly differentiate the <pfatlzgraff.com> domain name from Complainant’s mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel similarly finds that the deletion of a single letter fails to properly distinguish the <pfalzgraff.com> and <pfaltgraff.com> domain names from Complainant’s mark. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Finally, the Panel finds that the addition of the gTLD in all of the disputed domain names is irrelevant for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s PFALTZGRAFF mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel decided 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.” Here, Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests. Respondent has failed to respond to the Complaint. Therefore the Panel may assume Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will examine the record to verify whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Dong Wang,” which is not similar to the disputed domain names. Complainant asserts it has not given Respondent permission to register or use its PFALTZGRAFF mark. The record does not provide the Panel with any additional evidence indicating that Respondent is commonly known by the disputed domain names. The Panel concludes that Respondent is not commonly known by the disputed names pursuant to 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 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).
Respondent’s disputed domain names resolve to websites hosting a directory of third-party links, some of which compete with Complainant’s kitchenware business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of confusingly similar disputed domain names to operate a website featuring competing and non-competing links is not 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). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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 also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Respondent’s disputed domain names include Complainant’s mark and simply delete a single letter, misspell the mark, or transpose some of the letters to make a typographical error. Complainant alleges that the typographical errors in the disputed domain names take advantage of Internet users making common typing mistakes by redirecting users to Respondent’s websites. The Panel concludes that Respondent’s use of the disputed domain names is evidence that Respondent does not have rights or legitimate interests under 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 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 that Policy ¶ 4(a)(ii) has been met.
Respondent’s use of the disputed domain names disrupts its business in the kitchenware industry. Internet users intending to purchase goods from Complainant may be redirected to Respondent’s website and purchase similar products from Complainant’s competitors as a result. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business, evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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)).
Respondent uses the disputed domain names to operate directory websites with third-party links to commercial websites, some of which directly compete with Complainant. Internet users searching for Complainant may find Respondent’s websites instead and become confused as to Complainant’s association with, or sponsorship of, the resolving sites and third-party products. Respondent attempts to capitalize from this confusion through the receipt of click-through fees from the previously mentioned links. The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith use and registration under 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Respondent’s use of common typographical errors of Complainant’s mark in the disputed domain names constitutes evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pfaltgraff.com>, <pfalzgraff.com>, <pfalzgraph.com>, <pfatlzgraff.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 20, 2010
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