1-800 Contacts, Inc. v. Above.com Domain Privacy
Claim Number: FA1104001384469
Complainant is 1-800 Contacts, Inc. (“Complainant”), represented by Tyler Davis of Holland & Hart LLP, Colorado, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1800contacts-coupon.com>, registered with Above.com Pty Ltd.
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 April 18, 2011; the National Arbitration Forum received payment on April 18, 2011.
On April 26, 2011, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <1800contacts-coupon.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 May 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2011 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@1800contacts-coupon.com. Also on May 2, 2011, 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 May 25, 2011, 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <1800contacts-coupon.com> domain name is confusingly similar to Complainant’s 1800CONTACTS mark.
2. Respondent does not have any rights or legitimate interests in the <1800contacts-coupon.com> domain name.
3. Respondent registered and used the <1800contacts-coupon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 1-800 Contacts Inc., in an online retailer of vision and optical products. Complainant owns multiple trademark registrations for the 1800CONTACTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,675,866 issued January 21, 2003).
Respondent, Above.com Domain Privacy, registered the disputed domain name on February 19, 2011. The disputed domain name resolves to a site offering links to third-parties, some of which are Complainant’s competitors in the retail vision products field. Respondent presumably collects fees from the linked sites for redirecting Internet users.
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.
Under Policy ¶ 4(a)(i), it is necessary for a complainant establish its rights in the mark associated with the disputed domain name. In this case, Complainant contends that it has established its rights in the 1800CONTACTS mark by registering that mark with the USPTO. Previous panels have determined that registering a trademark with the USPTO gives the registrant affirmative rights in the 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 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.”). Therefore, the Panel finds that Complainant has established its rights under Policy ¶ 4(a)(i) in the 1800CONTACTS mark by registering that mark with the USPTO (e.g., Reg. No. 2,675,866 issued January 21, 2003).
Complainant also contends that Respondent’s <1800contacts-coupon.com> domain name is confusingly similar to its own 1800CONTACTS mark. The disputed domain name includes the entire mark while adding a hyphen and the generic term “coupon.” The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the changes made to Complainant’s mark to form Respondent’s disputed domain name are not sufficient to differentiate the two; therefore, they are confusingly similar under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has met its intitial burden of proof by making a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent now has the burden of proving that it does in fact have rights or legitimate interests in the disputed domain name because of the Complainant’s showing. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has failed to file a response in this action which allows this Panel to assume that it does not have any rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the entire record to make determination on Respondent’s rights or legitimate interests in the mark according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence to show that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant as “Above.com Domain Privacy.” Based upon the record, the Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services. Furthermore, Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <1800contacts-coupon.com> domain name resolves a pay-per-click site offering links to third-party sites. Many of the linked sites lead to the websites of Complainant’s competitors. Respondent presumably receives click-through fees from the linked sites for each diverted Internet user. The Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s <1800contacts-coupon.com> domain name disrupts its business constituting bad faith registration and use. The disputed domain name resolves to a site offering links to third-party websites. Most of those links resolve to the websites controlled by Complainant’s competitors. Internet users may be diverted to these sites and then purchase goods from one of Complainant’s competitors rather than Complainant. The Panel finds that this use does in fact disrupt Complainant’s business constituting bad faith registration and use 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).
Complainant also alleges that Respondent is gaining commercially from the confusingly similar domain name consituting bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to third-party websites, many of which are Complainant’s competitors. Respondent presumably receives a click-through fee for each Internet user diverted to the linked sites. The Panel finds that Respondent is attempting to gain commercially from the operation of the confusingly similar domain name constituting bad faith registration and use under 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1800contacts-coupon.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 1, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page