NSTBC, Inc. v. DNS Manager / Cenal.com
Claim Number: FA1104001385407
Complainant is NSTBC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is DNS Manager / Cenal.com (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <diamoniqe.com>, registered with Moniker.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2011; the National Arbitration Forum received payment on April 25, 2011.
On April 26, 2011, Moniker confirmed by e-mail to the National Arbitration Forum that the <diamoniqe.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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@diamoniqe.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 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of the DIAMONIQUE mark, which it uses in connection with the marketing of jewelry, precious stones and home shopping services.
Complainant has granted QVC, Inc. a license to use the DIAMONIQUE mark in association with its at-home shopping services.
Complainant holds trademark registrations for its DIAMONIQUE mark with trademark authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,538,103, issued May 9, 1989).
Complainant owns the <diamonique.com> domain name, which resolves to a website through the third-party website, <qvc.com>, from which Internet users can purchase jewelry bearing the DIAMONIQUE mark.
Respondent registered the disputed domain name on January 20, 2011.
The disputed domain name redirects Internet users to a parked web page at <parkingspa.com>.
The parked website features links to the <qvc.com> website at which Complainant’s jewelry is sold, as well as to other sites that sell jewelry, including <amazon.com/Jewelry> and <DiamondNexusLabs.com>.
Respondent’s <diamoniqe.com> domain name is confusingly similar to Complainant’s DIAMONIQUE mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not a licensee of Complainant, and Respondent has never been authorized to register or use the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <diamoniqe.com>.
Respondent registered and uses the disputed <diamoniqe.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Under Policy ¶ 4(a)(i), Complainant has rights in its DIAMONIQUE mark by virtue of its registrations of the mark with trademark authorities around the world, including the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, a panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding a complainant’s registrations for its HONEYWELL mark throughout the world sufficient to establish that complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <diamoniqe.com> domain name is confusingly similar to Complainant’s DIAMONIQUE mark because the domain name features only a common misspelling of the mark. The omission of the letter “u” in forming the domain name does not distinguish it from Complainant’s mark under the standards of the Policy. See Vanguard Trademark Holdings USA LLC v. Whois Privacy Protections Servs. / Ravi Singh, FA 1340858 (Nat. Arb. Forum Oct. 12, 2010) (finding the domain name <nationalcrrental.com> confusingly similar to a complainant’s NATIONAL CAR RENTAL mark because the omission of a single letter in a domain name is insufficient to distinguish the domain name from a mark); See also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i” in forming its contested domain name).
Similarly, the addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in creating the disputed domain name does not have any significance for purposes of our analysis because a domain name is required to have a top-level domain. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Accordingly, Respondent’s <diamoniqe.com> domain name is confusingly similar to Complainant’s DIAMONIQUE mark under Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights to and legitimate interests in the disputed domain name. The burden thereupon shifts to Respondent to submit evidence of its rights or legitimate interests in the domain. See, for example, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
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.
Complainant has successfully established its prima facie case under this head of the Policy, while Respondent has not submitted a response to the Complaint filed in this proceeding. Respondent’s default allows us to accept Complainant’s allegations as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the <diamoniqe.com> domain name which are cognizable under the Policy.
We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, that Respondent is not a licensee of Complainant, and that Respondent has never been authorized to register or use the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “DNS Manager / Cenal.com, which does not resemble the contested domain. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the <diamoniqe.com> domain name under Policy ¶ 4(c). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Esurance Insurance Servs., Inc. v. Moniker Privacy Servs., FA 1308692 (Nat. Arb. Forum Apr. 9, 2010):
The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. There is no additional evidence in the record providing any indication Respondent is commonly known by the disputed domain name and thus the Panel must conclude Respondent does not fall within Policy ¶ 4(c)(ii) as commonly known by the disputed domain name.
We also note that Complainant alleges, without objection from Respondent, that Respondent uses the disputed domain name to resolve to a website featuring links to third-party websites, including <qvc.com>, that offer jewelry products in competition with the business of Complainant. In the circumstances, we may comfortably presume that Respondent profits from this use through the receipt of click-through fees. This use does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Esurance Insurance Servs., Inc. v. Moniker Privacy Servs., FA 1308692 (Nat. Arb. Forum Apr. 9, 2010) (using a domain name to operate a web site featuring links relating to websites offering car insurance services, including links to the websites of a complainant’s competitors, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name; see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a 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 business of a 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)).
We must also take note of the fact that Respondent has engaged in typo-squatting through its registration and use of the disputed domain name. We reach this conclusion because of the employment of a common typographical error in the creation of the disputed domain name. This is evidence of Respondent’s lack of rights to or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in 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 that:
‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.
The Panel thus finds that Complainant has established the required elements of Policy ¶ 4(a)(ii).
The record establishes that Respondent registered and uses the disputed domain name, which is confusingly similar to Complainant’s DIAMONIQUE mark, in bad faith to disrupt Complainant’s business by featuring on the resolving website links to third-party websites that offer jewelry in competition with Complainant’s jewelry business conducted under the DIAMONIQUE mark. See Retail Royalty Company, and AEO Management Co. v. Domain Admin/Taranga Services Pty Ltd., FA 1359777 (Nat. Arb. Forum Dec. 30, 2010) (use of a contested domain name to attract Internet users to a directory website containing links to the websites of complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
In addition, Respondent is engaged in typo-squatting as above described, and that it is well settled that typo-squatting is evidence of bad faith registration and use of o domain name under 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent had engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)).
For these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <diamoniqe.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 9, 2011
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