national arbitration forum

 

DECISION

 

Fandango, Inc. and Daily Candy, Inc. v. Texas International Property Associates -

Claim Number: FA 1358961

 

PARTIES

Complainant is Fandango, Inc. and Daily Candy, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Texas International Property Associates - (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue are <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, <dailycandynyc.com>, <fanngo.com>, <jandango.com>, and <jobfandango.com>, registered with COMPANA, LLC.

 

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.

 

Sandra J. Franklin 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 19, 2010, COMPANA, LLC confirmed by e-mail to the National Arbitration Forum that the <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, <dailycandynyc.com>, <fanngo.com>, <jandango.com>, and <jobfandango.com> domain names are registered with COMPANA, LLC and that Respondent is the current registrant of the names.  COMPANA, LLC has verified that Respondent is bound by the COMPANA, LLC 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 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@dailycand.com, postmaster@dailycandi.com, postmaster@dailycandychicago.com, postmaster@dailycandynyc.com, postmaster@fanngo.com, postmaster@jandango.com, and postmaster@jobfandango.com.  Also on November 23, 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 17, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, and <dailycandynyc.com> domain names are confusingly similar to Complainant’s DAILYCANDY mark.

 

Respondent’s <fanngo.com>, <jandango.com>, and <jobfandango.com> domain names are confusingly similar to Complainant’s FANDANGO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, <dailycandynyc.com>, <fanngo.com>, <jandango.com>, and <jobfandango.com> domain names.

 

3.      Respondent registered and used the <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, <dailycandynyc.com>, <fanngo.com>, <jandango.com>, and <jobfandango.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Daily Candy, Inc., uses the DAILYCANDY mark for online entertainment services, including gossip news, merchandise events and services available in metropolitan areas.  Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DAILYCANDY mark (e.g., Reg. No. 2,543,900 issued March 5, 2002).  Complainant, Fandango, Inc., uses the FANDANGO mark for movie schedule, location and ticketing services.  Complainant holds trademark registrations with the USPTO for the FANDANGO mark (e.g., Reg. No. 2,769,579 issued September 30, 2003).

 

Respondent registered the disputed domain names on the following dates: <dailycand.com> on February 19, 2005; <dailycandi.com> on November 15, 2005; <dailycandychicago.com> on February 28, 2005; <dailycandynyc.com> on December 27, 2005; <fanngo.com> on July 11, 2005; <jandango.com> on February 19, 2005; and <jobfandango.com> on February 19, 2005.  The disputed domain names resolve to directory websites that provide hyperlinks to third-party websites, some of which compete with Complainant’s business.

 

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.

 

Preliminary Issue: Multiple Complainants

 

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” 

 

There are two Complainants in this matter.  Complainant Fandango, Inc. and Complainant Daily Candy, Inc. are both subsidiaries of Comcast Interactive Media, a division of Comcast Corporation.  The Panel finds that there is a sufficient nexus or link between Complainants and will treat Complainants as a single entity in this proceeding.  Hereinafter, the Panel will collectively refer to Complainants as “Complainant.”

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s trademark registrations sufficiently prove Complainant’s rights in the DAILYCANDY and FANDANGO marks pursuant to Policy ¶ 4(a)(i).  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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Respondent’s <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, and <dailycandynyc.com> domain names are confusingly similar to its DAILYCANDY mark.  Respondent omits the second letter “y” from Complainant’s mark in the <dailycand.com> domain name replaces it with the letter “i” in the <dailycandi.com> domain name.  Respondent adds the letters “nyc,” a common abbreviation for “New York City,” and the geographic term “Chicago” to Complainant’s mark in the <dailycandychicago.com> and <dailycandynyc.com> domain names.  Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in all of the disputed domain names.  The Panel finds that these slight alterations do not negate a finding of confusingly similar.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “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 Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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 that Respondent’s <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, and <dailycandynyc.com> domain names are confusingly similar to Complainant’s DAILYCANDY mark under Policy ¶ 4(a)(i).

 

Respondent’s <fanngo.com>, <jandango.com>, and <jobfandango.com> domain names are confusingly similar to its FANDANGO mark.  Respondent omits the letters “d” and “a” from Complainant’s mark in the  <fanngo.com> mark, and replaces the letter “f” in Complainant’s mark with the letter “j” in the <jandango.com> domain name.  Respondent adds the generic term “job” to Complainant’s mark in the <jobfandango.com> domain name.  Finally, Respondent attaches the gTLD “.com” to Complainant’s mark in each of the disputed domain names.  The Panel finds that these changes do not negate a finding of confusingly similar.  See Pfizer Inc. v. BargainName.com, supra; see also Belkin Components v. Gallant, supra; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Reese v. Morgan, supra.  Therefore, the Panel finds that Respondent’s <fanngo.com>, <jandango.com>, and <jobfandango.com> domain names are confusingly similar to Complainant’s FANDANGO mark under Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the disputed 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 licensed, authorized, or otherwise permitted Respondent to use its FANDANGO or DAILYCANDY marks.  Furthermore, the WHOIS information lists “Texas International Property Associates ” as the registrant of the disputed domain names, which the Panel finds is not similar to any of the disputed domain names.  With no evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant alleges the disputed domain names resolve to directory websites that provide hyperlinks to third-party websites, some of which directly compete with Complainant’s business.  Complainant further alleges that Respondent profits from its use of the disputed domain names through the receipt of pay-per-click fees. 

Based on the evidence in the record, the Panel finds that the disputed domain names resolve to pay-per-click websites that provide hyperlinks to third-party websites that are unrelated to Complainant as well as third-party websites that compete with Complainant.  Therefore, the Panel finds that Respondent does not use the <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, <dailycandynyc.com>, <fanngo.com>, <jandango.com>, and <jobfandango.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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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 argues that Respondent has engaged in typosquatting.  The Panel finds that Respondent incorporates common typographical errors in the <dailycand.com>, <dailycandi.com>, fanngo.com>, and <jandango.com> domain names.  Therefore, the Panel finds that this is additional evidence that Respondent lacks rights and legitimate interests in these disputed domain names pursuant to Policy ¶ 4(a)(iii).  See 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).”); see also 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).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel finds that the disputed domain names resolve to websites that provide hyperlinks to Complainant’s competitors, disrupting Complainant’s business, which amounts to registration and use in bad faith under Policy ¶ 4(b)(iii).  See 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)); 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).

 

Additionally, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  Respondent likely profits from its use of the domain names through the receipt of pay-per-click fees.  Therefore, the Panel finds Respondent has engaged in registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).  See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use 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)).

 

The Panel also finds that Respondent has engaged in typosquatting, further evidence of bad faith registration and use 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 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 Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <dailycand.com>, <dailycandi.com>, <dailycandychicago.com>, <dailycandynyc.com>, <fanngo.com>, <jandango.com>, and <jobfandango.com> domain names be TRANSFERRED from Respondent to Complainant.

                                                                                                                                                           

Sandra J. Franklin, Panelist

Dated:  December 23, 2010

 

 

 

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