Skullcandy, Inc. v. Above.com Domain Privacy
Claim Number: FA1110001412788
Complainant is Skullcandy, Inc. (“Complainant”), represented by R. Parrish Freeman of Workman Nydegger, Utah, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skullcandyboutique.com>, registered with Above, Pty Ltd.
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 October 24, 2011; the National Arbitration Forum received payment on October 24, 2011.
On October 25, 2011, Above, Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <skullcandyboutique.com> domain name is registered with Above, Pty Ltd and that Respondent is the current registrant of the name. Above, Pty Ltd has verified that Respondent is bound by the Above, 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 October 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@skullcandyboutique.com. Also on October 26, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 22, 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 both produces and markets headphones, ear buds and related accessories.
Complainant owns trademark registrations for the SKULLCANDY trademark, on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 3,168,695, registered November 7, 2006.
Respondent registered the <skullcandyboutique.com> domain name on August 20, 2011.
The disputed domain name resolves to a website featuring pay-per-click links to third-party websites which are not sponsored by, or affiliated with, Complainant.
Respondent’s <skullcandyboutique.com> domain name is confusingly similar to Complainant’s SKULLCANDY mark.
Complainant has not licensed or otherwise authorized Respondent to use the SKULLCANDY trademark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <skullcandyboutique.com>.
Respondent both registered and uses the <skullcandyboutique.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 UDRP 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.
Complainant has rights in the SKULLCANDY trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in a mark pursuant to Policy ¶ 4(a)(i)). This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction other than that in which Respondent resides or does business. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in the mark in some jurisdiction).
Respondent’s <skullcandyboutique.com> domain name is confusingly similar to Complainant’s SKULLCANDY trademark because the domain name consists of the entire mark combined with the generic term “boutique” and the generic top-level domain name (“gTLD”) “.com.” These additions to mark in forming the domain name are insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where a domain name contained the mark of a complainant combined with a generic word or term); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding the domain name <bodyshopdigital.com> confusingly similar to a complainant’s THE BODY SHOP trademark). Further see Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
a generic top-level domain, such as ‘.com,’ … is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
The Panel therefore finds that Respondent’s <skullcandyboutique.com> domain name is confusingly similar to Complainant’s SKULLCANDY trademark under Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the disputed <skullcandyboutique.com> domain name. Under Policy ¶ 4(a)(ii), Complainant is required to present a prima facie showing supporting this contention, whereupon, the burden shifts to Respondent to demonstrate that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that, under Policy ¶ 4(a)(ii), a complainant must make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name, whereupon the burden shifts to that respondent to show that it does have such rights or interests).
Complainant has presented a prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to carry its resulting burden, we may presume that Respondent lacks rights to and legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to the allegations of a UDRP complaint); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.
Nonetheless, we will review the evidence of record, in light of the several 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 disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Complainant has not licensed or otherwise authorized Respondent to use the SKULLCANDY trademark, and that Respondent is not commonly known by the disputed domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Above.com Domain Privacy,” which does not resemble the disputed domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name and accordingly has no rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s website at the <skullcandyboutique.com> domain name features pay-per-click links to third-party websites unrelated to Complainant. This use of the disputed domain name is not 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 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)); see also 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 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), where a respondent presumably earned “click-through” fees for each consumer it redirected to those third-party websites).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <skullcandyboutique.com> domain name, which is confusingly similar to Complainant’s SKULLCANDY trademark, resolves to a web page featuring links to websites unrelated to Complainant. Diverting Internet users to these unrelated websites disrupts Complainant’s business. This use of the disputed domain name evidences bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(ii) by using them to operate a commercial search engine with links to websites offering the products of a complainant and that complainant’s commercial competitors, as well as by diverting Internet users to websites resolving from several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to the mark of another 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 under Policy ¶ 4(b)(iii)).
Respondent’s <skullcandyboutique.com> domain name incorporates Complainant’s entire SKULLCANDY mark in order to attract Internet users seeking the website of Complainant. This presumably generates profit to Respondent in the form of “pay-per-click fees” when Internet users click on the displayed links. This demonstrates bad faith registration and use of the domain by Respondent under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002):
By use of … [the disputed domain name] … to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).
See also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding of bad faith under Policy ¶ 4(b)(iv) where a respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website which offered competing computer products and services).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under 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 <skullcandyboutique.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 1, 2011
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