national arbitration forum

 

DECISION

 

Cabela’s, Inc. v. Wanzhongmedia / Zhong Wan

Claim Number: FA1111001414315

 

PARTIES

Complainant is Cabela’s, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Wanzhongmedia / Zhong Wan (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cabelasnews.com>, registered with EuroDNS S.A.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2011; the National Arbitration Forum received payment on November 4, 2011.

 

On November 11, 2011, EuroDNS S.A. confirmed by e-mail to the National Arbitration Forum that the <cabelasnews.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name.  EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 November 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@cabelasnews.com.  Also on November 16, 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 December 12, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <cabelasnews.com> domain name is confusingly similar to Complainant’s CABELAS.COM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <cabelasnews.com> domain name.

 

3.    Respondent registered and used the <cabelasnews.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Cabela’s, Inc., is a mail-order, retail, and Internet outdoor outfitter that offers its products online under its CABELAS.COM mark.  Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CABELAS.COM mark (Reg. No. 2,247,977 registered May 25, 1999).

 

Respondent, Wanzhongmedia / Zhong Wan, registered the <cabelasnews.com> domain name on March 15, 2012.  The disputed domain name resolves to a website that contains a list of hyperlinks that resolve to Complainant’s competitors and unrelated third-parties. 

 

Respondent has been a respondent in previous UDRP proceedings in which the panels chose to transfer the disputed domain names to the respective complainants.  See J.P. SA COUTO, S.A. v. Wanzhongmedia, c/o Wan Zhong, D2011-1045 (WIPO July 28, 2011); see also Org. Vanguard Trademark Holdings USA LLC v. WanZhongMedia c/o Wan Zhong, Case No. 100221 (CAC Mar. 29, 2011).

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel determines that Complainant’s trademark registration with the USPTO for its CABELAS.COM mark (e.g., Reg. No. 2,247,977 registered May 25, 1999) establishes Policy ¶ 4(a)(i) rights in its CABELAS.COM mark, even though Respondent does not reside or operate in the United States.  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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

As Respondent’s <cabelasnews.com> domain name contains Complainant’s entire mark and simply attaches the generic term “news,” the Panel concludes that Respondent’s <cabelasnews.com> domain name is confusingly similar to Complainant’s CABELAS.COM mark 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 the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <cabelasnews.com> domain name domain name.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <cabelasnews.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

The Panel holds that Respondent is not commonly known by the <cabelasnews.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information for the disputed domain name lists “Wanzhongmedia / Zhong Wan” as the registrant and Respondent has failed to present any other evidence that it is commonly known by the disputed domain name.  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 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).

 

Respondent’s <cabelasnews.com> domain name resolves to a website that hosts a list of third-party hyperlinks, some of which resolve to competing outdoor products websites.  The Panel presumes that Respondent commercially benefits from these links by receiving click-through fees.  Thus, the Panel deems Respondent makes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <cabelasnews.com> domain name under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 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 finds Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent has been a respondent in previous UDRP proceedings in which the panels chose to transfer the disputed domain names to the respective complainants.  See J.P. SA COUTO, S.A. v. Wanzhongmedia, c/o Wan Zhong, D2011-1045 (WIPO July 28, 2011); see also Org. Vanguard Trademark Holdings USA LLC v. WanZhongMedia c/o Wan Zhong, Case No. 100221 (CAC Mar. 29, 2011).  The Panel determines that such evidence supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) as Respondent has a pattern of registering domain names misappropriating others’ marks.  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

Respondent registered and uses the <cabelasnews.com> domain name for the purpose of hosting third-party hyperlinks.  As some of these hyperlinks resolve to websites that compete with Complainant, the Panel infers that Complainant’s business is disrupted by Respondent’s registration and use of the disputed domain name.  Therefore, the Panel concludes that Respondent registered and uses the <cabelasnews.com> domain name 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Respondent registered and uses a disputed domain name that is confusingly similar to Complainant’s CABELAS.COM mark.  The Panel determines that the confusingly similar nature of the disputed domain name evidences Respondent’s attempt to create confusion as to Complainant’s affiliation with the disputed domain name.  Moreover, Respondent attempts to profit from this confusion by receiving click-through fees each time an Internet user clicks on one of the aforementioned hyperlinks.  Consequently, the Panel holds that Respondent registered and uses the <cabelasnews.com> domain name in bad faith pursuant to 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 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).

 

The Panel finds Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cabelasnews.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  December 12, 2011

 

 

 

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