WGV Wholesale Glass Vases International v. Sai Sung
Claim Number: FA1107001400893
Complainant is WGV Wholesale Glass Vases International (“Complainant”), represented by Charles Pok, California, USA. Respondent is Sai Sung (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glassvasewholesales.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2011; the National Arbitration Forum received payment on July 29, 2011.
On July 31, 2011, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <glassvasewholesales.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 August 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@glassvasewholesales.com. Also on August 1, 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 August 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
On September 8, 2011, pursuant to Rule 12, Complainant was given up to and including September 23, 2011, in which to supplement the record with evidence pertaining to the existence of common law rights with respect to its claimed mark. Complainant provided additional evidence on September 21, 2011.
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 <glassvasewholesales.com> domain name is confusingly similar to Complainant’s GLASSVASEWHOLESALE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <glassvasewholesales.com> domain name.
3. Respondent registered and used the <glassvasewholesales.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WGV Wholesale Glass Vases International, markets glass and vase products. On January 23, 2008, Complainant registered the <glassvasewholesale.com> domain name. Complainant claims that customers recognize Complainant’s goods under the GLASSVASEWHOLESALE.COM mark.
Respondent, Sai Sung, registered the <glassvasewholesales.com> domain name on May 21, 2010. The disputed domain name resolves to Respondent’s website which copies the look and feel of Complainant’s official website and sells products in competition with Complainant’s glass and vase goods.
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 argues that it has established rights in the GLASSVASEWHOLESALE.COM name. Registration with a trademark authority is unnecessary to establish rights in a mark so long as the complainant can establish common law rights. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant presumably asserts that it has common law rights in the GLASSVASEWHOLESALE.COM mark. Common law rights can be demonstrated through evidence that the mark was used in a continuous and ongoing manner and has acquired sufficient secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
Complainant contends that it registered its <glassvasewholesale.com> domain name in January 2008 and that since then its customers have associated its glass and vase goods with the GLASSVASEWHOLESALE.COM mark. Complainant also claims that its <glassvasewholesale.com> domain name has generated a high Internet traffic volume due to Complainant’s marketing and that the website has been quite profitable for Complainant. However, Complainant’s initial submission does not provide any evidence of the high Internet traffic and sales associated with its official website and does not include any proof that its GLASSVASEWHOLESALE.COM mark has acquired distinctive secondary meaning in connection with its glass and vase products.
Pursuant to Rule 12 the Complainant was given an opportunity to supplement the record which it did. Based upon that additional evidence the Panel finds that Complainant does hold common law rights in the GLASSVASEWHOLESALE.COM mark within the meaning of Policy ¶ 4(a)(i).
Complainant argues Respondent’s <glassvasewholesales.com> domain name is confusingly similar to Complainant’s GLASSVASEWHOLESALE.COM mark. The Panel finds that altering the spelling of Complainant’s mark with a letter substitution fails to create a distinct domain name that is not confusingly similar to Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also America 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 finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires Complainant to present a prima facie case against Respondent before the burden to demonstrate rights and legitimate interest shifts to Respondent. In this proceeding, Complainant’s allegations and supporting evidence are sufficient to constitute a prima facie case. As a result, it is now Respondent’s responsibility to establish its rights and interests. Due to Respondent’s failure to respond, however, the Panel infers that Respondent lacks all rights and legitimate interests in the disputed domain name and does not contest Complainant’s allegations. 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.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). The Panel will not rely exclusively on this inference, however, and will continue to analyze the evidence according to the Policy ¶ 4(c) factors in order to make a complete Policy ¶ 4(a)(ii) determination.
Complainant asserts it has not licensed or otherwise permitted Respondent to use the GLASSVASEWHOLESALE.COM mark in any way. The WHOIS information for the <glassvasewholesales.com> domain name lists the registrant as “Sai Sung” which does not indicate any relationship between Respondent and the disputed domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that rights in a mark were linked to whether a respondent was commonly known by the mark. Similarly, in Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the panel concluded that the WHOIS information could support an inference of no rights in a mark. Based on the WHOIS information, the lack of other evidence in the record, and these prior holdings, the Panel determines that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who commit those typographical errors. The <glassvasewholesales.com> domain name takes advantage of Internet users who mistype Complainant’s GLASSVASEWHOLESALE.COM mark by inadvertently adding an “s” to the mark. The Panel finds that Respondent engaged in typosquatting by misspelling Complainant’s mark in the disputed domain name. This is further evidence that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (“‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also 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’”).
Thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain name resolves to a website containing links and advertisements to competing sellers of goods similar to those provided by Complainant. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Internet users intending to find Complainant’s business may purchase the same or similar goods from Complainant’s competitors. The Panel finds, pursuant to Policy ¶ 4(b)(iii), that Respondent’s use of the <glassvasewholesales.com> domain names does disrupt Complainant’s business, which constitutes bad faith registration and use. 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 America Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel surmises that Respondent receives click-through fees from the hyperlinks posted on its resolving website. Internet users searching for Complainant’s business may find Respondent’s website because of Respondent’s use of a confusingly similar domain name. Complainant contends that these Internet users may then become confused as to Complainant’s affiliation with, and sponsorship of, Respondent’s hyperlinks featured on its resolving website. Respondent presumably benefits from the click-through fees that result from the confusion caused by Respondent’s registration of the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name constitutes 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); see also Asbury Auto. Group, Inc. v. Texas Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Finally, Respondent is typosquatting by using the <glassvasewholesales.com> domain name. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel stated that “[t]yposquatting itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Therefore, the Panel finds that Respondent is commercially benefiting by using a disputed domain name that differs from Complainant’s mark by only letter, and such use evidences registration and use in bad faith under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Accordingly, the Panel finds that Complainant has complied with Policy 4 ¶ (a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <glassvasewholesales.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 3, 2011
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