Cole Haan Corporation v. Huong Quynh Nguyen / van phong dai dien ubgm ltd
Claim Number: FA1111001416674
Complainant is Cole Haan Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Huong Quynh Nguyen / van phong dai dien ubgm ltd (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <colehann.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2011; the National Arbitration Forum received payment on November 29, 2011.
On November 22, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <colehann.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@colehann.com. Also on November 30, 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 December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
The Complainant has rights to the COLE HAAN Trademarks and makes extensive use of them such that they have become famous.
(a) Complainant Owns The Marks Complainant is a famous, global provider of premium footwear, accessories, and outerwear under the COLE HAAN trademark and logo (the “Marks”). Currently, Complainant ships its products worldwide. Complainant is a widely known subsidiary of Nike, Inc., whose revenues in Fiscal Year 2011 totaled $20.9 billion. Complainant owns numerous Federal Registrations and Common Law rights in and to the Cole Haan Trademark in the United States. Complainant also holds trademarks worldwide.
(b) The Marks Are Extensively Used, Promoted and Protected. Since as early as 1928, the Cole Haan Marks have been used to identify the Complainant’s goods, most notably as a trademark for its leather goods and premium footwear. The Cole Haan Marks were first used in 1928 when the Cole Haan fashion label was formed in Chicago, Illinois. Named after its founders, Trafton Cole and Eddie Haan, Complainant was originally a men’s footwear producer. The offerings have since grown to also include women’s footwear, handbags, outerwear, belts, gloves, scarves, hats, sunglasses, and other accessories.
Complainant has extensively relied on the Internet as a forum to promote and disseminate information regarding products in connection with its COLE HAAN Marks. Complainant owns and operates the website currently available at www.colehaan.com. At this site Internet users can browse and order the products offered by Complainant in connection with Cole Haan Marks. Complainant also promotes its brands through print advertisements, as well as through fashion shows, sponsorships and celebrity endorsements. World-renowned tennis player Maria Sharapova is a spokesperson and designer for Complainant’s product lines.
As a result of this extensive use and promotion, Complainant’s Cole Haan Marks have become very distinctive and world famous and have enjoyed such distinctiveness and notoriety since long prior to the date on which Respondent acquired the <colehann.com> domain.
As noted above, Complainant’s COLE HAAN marks are protected through registration and enforcement. Amongst others, Complainant owns Trademark Registrations in the United States and many other countries including the following:
COLE-HAAN
IC 025. US 039. G & S: Shoes.
FIRST USE: 19580000. FIRST USE IN COMMERCE: 19580000 0832977 (US) August 1, 1967
COLE-HAAN
IC 003. US 004 052. G & S: Shoe Creams, Shoe Polishes, Shoe Pastes, Shoe Stains, Shoe Cleaners, Shoe Protective Sprays, And Shoe Oils. FIRST USE: 19900724. FIRST USE IN COMMERCE: 19900822
IC 021. US 029 050. G & S: Shoe trees and shoe brushes. FIRST USE: 19900727. FIRST USE IN COMMERCE: 19900723
IC 022. US 002. G & S: Shoe Bags. FIRST USE: 19900723. FIRST USE IN COMMERCE: 19900723 1698236 (US) June 30, 1992
COLE-HAAN
IC 042. US 101. G & S: Retail Store Services In The Field Of Footwear And Apparel And Related Accessories. FIRST USE: 19820527. FIRST USE IN COMMERCE: 19830901 1607846 (US) July 24, 1990
COLE-HAAN (Logo)
IC 018. US 001 002 003 022 041. G & S: Hand bags, purses, shoulder bags, tote bags, wallets, leather key chains, wine bags with handles for carrying and handling wine, cosmetic cases sold empty, toiletry cases sold empty, luggage, name card cases, credit card cases, briefcases, briefcase type portfolios, messenger bags, duffle bags. FIRST USE: 20060100. FIRST USE IN COMMERCE: 20060100
IC 025. US 022 039. G & S: Hosiery, footwear, coats, socks, belts, jackets, scarves, wraps being clothing, headwear, ponchos. FIRST USE: 20060100. FIRST USE IN COMMERCE: 20060100 3618399 (US) May 12, 2009
2. Respondent’s Past Infringing Activity. At the outset, it must be pointed out that Respondent is a known cybersquatter and is engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. Prior UDRP decisions involving a well-known trademark has been successfully brought against Respondent, including the following:
AG v. Nguyen Huong Quynh, DCH2008-0003 (WIPO June 19, 2008) (regarding <coparis.ch>, and transferred to complainant).
Raiffeisen Schweiz Genossenschaft v. Nguyen Huong Quynh, DCH2007-0023 (WIPO, February 5, 2008) (regarding <raiffeise.ch> and transferred to complainant).
These prior decisions are highly relevant to the present case. In Target Brands, Inc. v. Guowei Hai Gui, NAF Claim No. FA1102001371811 (2011) it was held that “Respondent has been a party to [and lost] previous UDRP decisions … [and] [t]his is evidence that Respondent is a serial cyber-squatter, which in turn demonstrates that Respondent registered and uses the <mydirectv.com> domain name in bad faith and thus violated the Policy.
3. Respondent’s registration of the <colehann.com> domain violates the Policy.
The Disputed Domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s Disputed Domain is confusingly similar, on its face, to Complainant’s registered and distinctive COLE HAAN Marks and rights to such Marks existed long prior to the creation date of the <colehann.com> domain. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the domain name.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. In DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id.
Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using a minor misspelling of Complainant’s Marks making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. By merely changing the letter “a” to an “n” the domain attempts to ensnare visitors who may have mis-typed the COLE HAAN Mark into their browser’s address bar. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers discover they are not at Complainant’s site, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <colehann.com> website. As in Athanasios, Respondent here uses the Marks in its site’s domain name and another variation of the COLE HAAN Marks in the title and body of its website. It only makes sense that if searchers see the COLE HAAN Marks listed in the body of the <colehann.com> web page and the goods offered on that page are also similar to or reference those offered by Complainant, searchers will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the domain name <colehann.com> Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <colehann.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s website under the <colehann.com> domain is a classic pay-per-click site displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites which are not associated with Complainant and, in some cases, may be associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
With respect to Policy ¶4(c)(ii), upon information and belief, Respondent is not commonly known by the name <colehann.com> or “COLE HAAN” nor does Respondent operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the COLE HAAN name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <colehann.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s COLE HAAN products, who used the domain name <colehann.com>, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing goods. Such use cannot be considered fair.
Lastly, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality goods offered under the Marks by Complainant by using the Marks in association with unrelated sites which provide goods or services not associated with or related to Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
(c) Respondent Registered The Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the Marks without consent from Complainant. Respondent was on both actual and constructive notice of Complainant’s rights in the Marks through Complainant’s Trademark Registrations and its extensive, global use of the COLE HAAN Marks, all of which predate the date on which Respondent acquired the <colehann.com> domain. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name … provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in the Marks.
Respondent is obtaining commercial gain from its use of the <colehann.com> website. When a visitor to the <colehann.com> website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the <colehann.com> domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the Disputed Domain. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of forwarding fees from its <colehann.com> domain results from pay-per-click links. This alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by forwarding visitors to potential competitors of Complainant. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the <colehann.com> domain. There is no other rational explanation for Respondent having registered and maintained the <colehann.com> domain and resolving it to a pay-per-click site. Respondent’s use of the domain name is commercial because the various companies forwarded from the <colehann.com> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <colehann.com> domain, Respondent is entirely and solely responsible for the content of its website. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <colehann.com> domain in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Cole Haan Corporation is a global provider of footwear, accessories, and outerwear under the COLE-HAAN mark. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its COLE-HAAN mark (e.g., Reg. No. 832,977 registered August 1, 1967).
Respondent Huong Quynh Nguyen / van phong dai dien ubgm ltd registered the <colehann.com> domain name on June 23, 2000. Respondent’s domain name resolves to a pay-per-click website that features third-party links to Complainant’s competitors in the footwear, clothing, and handbag industries.
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 Complainant to 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.
The first prong under Policy ¶4(a)(i) that must be satisfied by Complainant is a showing Complainant owns rights in a mark. In this instance, Complainant has provided the Panel with several trademark registrations it owns with the USPTO for the COLE-HAAN mark (e.g., Reg. No. 832,977 registered August 1, 1967). The Panel finds such evidence is sufficient for Complainant to establish rights in its mark under Policy ¶4(a)(i), even though Respondent resides in Vietnam. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The second prong under Policy ¶4(a)(i) involves an analysis of the disputed domain name and the asserted trademark, and whether the domain name is confusingly similar or identical to the mark. Complainant claims the <colehann.com> domain name is confusingly similar to Complainant’s COLE-HAAN mark. Complainant notes that the domain name simply replaces the letter “a” in the mark with the letter “n.” Complainant argues minor misspellings increase the confusingly similar nature of the domain name. The Panel notes the domain name also removes the hyphen from the mark while adding the generic top-level domain (“gTLD”) “.com.” However, the Panel finds these changes are not significant and do not render the domain name distinct from Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Therefore, the Panel finds the disputed domain name is confusingly similar to the mark in which Complainant has rights under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent does not have rights or legitimate interests in the <colehann.com> domain name. Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”); see also Am. Express Co. v. Fan Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Out of an abundance of cautions, the Panel will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c).
Complaint argues Respondent is neither commonly known by the <colehann.com> domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information identifies “Huong Quynh Nguyen / van phong dai dien ubgm ltd” as the registrant of the <colehann.com> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. Faced with a lack of evidence Respondent is commonly known by the domain name, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends Respondent is using the domain name to resolve to a website featuring various third-party links to Complainant’s competitors in the footwear, clothing, and handbag industries. From Complainant’s evidence it appears such links resolve to companies such as “Bluefly.com Official Site,” “DSW Clearance,” and “LOFT Shoes,” among several others. The Panel finds this use 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). 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the 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 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)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s domain name resolves to a website featuring third-party links to competing websites. The Panel finds such use inherently disrupts Complainant’s business because some Internet users are likely to purchase these competing goods by being diverted to Respondent’s website. Therefore, the Panel finds Respondent registered and is using the domain name in bad faith under Policy ¶4(b)(iii). See 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).”); 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).
Complainant claims Respondent receives click-through or forwarding fees from the companies advertised on the resolving website. Complainant claims such use of its mark for Respondent’s commercial gain is evidence of bad faith registration and use of the domain name. This Panel agrees and finds Respondent registered and is using the <colehann.com> domain name in bad faith under Policy ¶4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <colehann.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 3, 2012
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