national arbitration forum

 

DECISION

 

Fandango, Inc. v. Maria Varela

Claim Number: FA 1358959

 

PARTIES

Complainant is Fandango, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Maria Varela (“Respondent”), Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fandongo.com>, registered with Backslap Domains, 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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2010; the National Arbitration Forum received payment on November 17, 2010.

 

On November 18, 2010, Backslap Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <fandongo.com> domain name is registered with Backslap Domains, Inc. and that Respondent is the current registrant of the name.  Backslap Domains, Inc. has verified that Respondent is bound by the Backslap Domains, Inc. 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@fandongo.com.  Also on November 24, 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 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr.,  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 any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <fandongo.com> domain name is confusingly similar to Complainant’s FANDANGO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <fandongo.com> domain name.

 

3.      Respondent registered and used the <fandongo.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Fandango, Inc., owns multiple trademark registrations for its FANDANGO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,769,579 filed June 13, 2000; issued September 30, 2003) in connection with movie schedule and location information services, movie ticketing and reservation services, and providing information about recreational destinations. 

 

Respondent, Maria Varela, registered the disputed domain name May 23, 2002.  The disputed domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.  Respondent presumably receives pay-per-click fees from these linked websites. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the FANDANGO mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,769,579 filed June 13, 2000; issued September 30, 2003).  Previous panels have held that a trademark registration with the USPTO is sufficient evidence of a complainant’s rights in the mark.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).  Previous panels have also held that the relevant date of a complainant’s rights in the mark is the date that the trademark application was filed.  See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).  The Panel in this case finds similarly and concludes that Complainant has rights in its FANDANGO mark under Policy ¶ 4(a)(i) dating back to June 13, 2000. 

 

Complainant argues that Respondent’s <fandongo.com> domain name is confusingly similar to Complainant’s FANDANGO mark.  The disputed domain name merely misspells Complainant’s mark by replacing the letter “a” with the letter “o” and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the mere replacement of a single letter and the addition of a gTLD do not amount to changes significant enough to remove the disputed domain name from the realm of confusing similarity.  See 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Therefore, the Panel concludes that, pursuant to Policy ¶ 4(a)(i), Respondent’s <fandongo.com> domain name is confusingly similar to Complainant’s FANDANGO mark.

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations before the burden then shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).  Prior panels have found that where a respondent fails to respond to a proceeding, a presumption arises that the respondent lacks rights and legitimate interests in a disputed domain name.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  The Panel elects to consider the evidence on record in this proceeding in order to make an accurate determination regarding Respondent’s rights or legitimate interests in the disputed domain name. 

 

Complainant contends that Respondent has not been commonly known by the disputed domain name.  Complainant also contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name.  Prior panels have concluded that evidence such as this supports a finding that Respondent is not commonly known by the disputed domain name.  The WHOIS information indicates that the registrant of the disputed domain name is “Maria Varela,” which the Panel determines is not similar to the disputed domain name.  Prior panels have utilized such evidence to determine that a respondent is not commonly known by a disputed domain name.  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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).  The Panel here finds that the evidence in the record supports a similar finding and concludes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 

 

Respondent’s disputed domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.  Respondent presumably receives pay-per-click fees from these linked websites.  The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).

 

Complainant alleges that Respondent is capitalizing on a common typographical error in its <fandongo.com> domain name.  Respondent replaces the letter “a” with the letter “o” which is similar in both sound and appearance.  The Panel finds that this is evidence of typosquatting which further supports the Panel’s finding that Respondent lacks rights and legitimate interests 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 that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a website featuring links to Complainant’s competitors in the movie ticketing industry.  The Panel finds that this use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also 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).”).

 

The Panel finds that Respondent registered the confusingly similar disputed domain name primarily for the purpose of collecting pay-per-click fees from Internet users who, searching for Complainant’s website, instead are redirected to Respondent’s website where they may become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and resolving website.  The Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See 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)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

As established previously, Respondent has engaged in the practice of typosquatting.  The Panel finds that typosquatting is itself evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). 

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <fandongo.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  January 4, 2011

 

 

 

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