Karmaloop, Inc. v. Above.com Domain Privacy
Claim Number: FA1108001402955
Complainant is Karmaloop, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <karmaloup.com>, <karmamloop.com>, and <marmaloop.com>, registered with ABOVE.COM PTY LTD.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2011; the National Arbitration Forum received payment on August 16, 2011.
On August 15, 2011, Aug 25, 2011, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <karmaloup.com>, <karmamloop.com>, and <marmaloop.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. 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 August 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@karmaloup.com, postmaster@karmamloop.com, postmaster@marmaloop.com. Also on August 29, 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 September 26, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <karmaloup.com>, <karmamloop.com>, and <marmaloop.com> domain names are confusingly similar to Complainant’s KARMALOOP mark.
2. Respondent does not have any rights or legitimate interests in the <karmaloup.com>, <karmamloop.com>, and <marmaloop.com> domain names.
3. Respondent registered and used the <karmaloup.com>, <karmamloop.com>, and <marmaloop.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Karmaloop, Inc., is a cross-platform web retailer specializing in global streetwear, and has been in operation since 2000. Complainant claims rights in the KARMALOOP based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,408,653 registered April 8, 2008).
Respondent, Above.com Domain Privacy, registered the <karmamloop.com> domain name on December 20, 2008, the <karmaloup.com> domain name on November 22, 2009, and the <marmaloop.com> domain name on July 17, 2009. Each of the three disputed domain names resolve to websites featuring links to third-party websites, some of which compete with Complainant.
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 also urges that the disputed domain names are confusingly similar to Complainant’s KARMALOOP mark under Policy ¶ 4(a)(i). Each disputed domain name is a common misspelling of Complainant’s mark. The <karmaloup.com> and <marmaloop.com> domain names replace one letter for another, while the <karmamloop.com> domain name adds an additional “m”. Previous panels have found that these types of minor changes are insufficient to distinguish a disputed domain name. See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Moreover, the addition of the generic top-level domain (“gTLD”) “.com” cannot distinguish the disputed domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Past panels have established the principle that Complainant shoulders the initial burden of presenting a prima facie case. Once this burden has been met, as with the case at hand, the burden then shifts to Respondent to refute Complainant’s claims. 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)). Some Panels have even found that a Respondent’s failure to submit a Response is per se evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). In the interest of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests do exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the domain name registrant as “Above.com Domain Privacy,” which the Panel finds to bear no resemblance to any of the disputed domain names. This provides evidence that Respondent is not commonly known by the disputed domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant also states that it did not authorize Respondent to register the confusingly similar domain names, or affiliate with Complainant in any other way. Without the benefit of a Response, and absent any contrary evidence in the record, the Panel must hold that Complainant is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See 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 further alleges that Respondent’s use of the disputed domain name does not coincide with 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). Each of the three disputed domain names resolve to websites featuring links to third-party websites, some of which compete with Complainant. Past panels have agreed that this type of use violates both Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). The Panel concludes that Respondent’s use of the disputed domain name does not coincide with 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s inclusion of links to Complainant’s competitors on its websites constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent’s operation of confusingly similar domain names will likely lead some users to visit Respondent’s websites, when in fact they had intended to visit Complainant’s. Inevitably, a portion of these misdirected users will access the competing links displayed on Respondent’s website. The Panel holds that this type of misdirection constitutes 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 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).
Finally, Complainant alleges that Respondent’s registration and use of the disputed domain names constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Through the use of a confusingly similar domain name, Respondent creates a likelihood of confusion with Complainant and its products in an attempt to deceive consumers into mistakenly believing that Respondent is in some way affiliated with Complainant’s business. The Panel assumes that Respondent collects click-through fees each time one of its links is accessed, thus rendering the operation of the sites at the disputed domain names commercially viable. In this way, Respondent seeks to realize a commercial gain through the confusion it creates. The Panel holds that this type of business model constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Asbury Auto. Group, Inc. v. Tex. 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)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <karmaloup.com>, <karmamloop.com>, and <marmaloop.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 27, 2011
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