CafePress Inc. v. Tein Brouwer
Claim Number: FA1111001417561
Complainant is CafePress Inc. (“Complainant”), represented by Andrea Moore, California, USA. Respondent is Tein Brouwer (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cafepresscoupons.com>, registered with Fastdomain, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2011; the National Arbitration Forum received payment on November 30, 2011.
On December 1, 2011, Fastdomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <cafepresscoupons.com> domain name is registered with Fastdomain, Inc. and that Respondent is the current registrant of the name. Fastdomain, Inc. has verified that Respondent is bound by the Fastdomain, Inc. 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 December 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@cafepresscoupons.com. Also on December 5, 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 January 5, 2012, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cafepresscoupons.com> domain name is confusingly similar to Complainant’s CAFEPRESS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <cafepresscoupons.com> domain name.
3. Respondent registered and used the <cafepresscoupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CafePress Inc., is an online merchant providing individuals and businesses the capability to create, buy, and sell customized merchandise online using print-on-demand and e-commerce services. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO"), including one for the CAFEPRESS.COM mark (Reg. No. 2,571,049 registered May 21, 2002).
Respondent, Tein Brouwer, registered the <cafepresscoupons.com> domain name on January 20, 2010. Respondent’s disputed domain name resolves to a website that features images taken from Complainant’s website and two hyperlinks that are linked to Complainant’s website through an affiliate website in violation of Complainant’s affiliate program.
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 has submitted evidence to show that its owns several trademarks with the USPTO, including one for the CAFEPRESS.COM mark (Reg. No. 2,571,049 registered May 21, 2002). The Panel finds this evidence to be sufficient for Complainant to establish rights in its mark under Policy ¶ 4(a)(i), despite the fact that Respondent resides in a different country. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark 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).
Complainant notes that the only difference between the <cafepresscoupons.com> domain name and its mark is the addition of the generic term “coupons” to the mark. Complainant contends that this addition is not sufficient to render the domain name unique from its mark under Policy ¶ 4(a)(i). The Panel agrees and finds that Respondent’s <cafepresscoupons.com> domain name is confusingly similar to Complainant’s CAFEPRESS.COM mark under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <cafepresscoupons.com> domain name. Complainant is required to produce a prima facie case in support of its allegations under Policy ¶ 4(a)(ii) 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, and that 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 TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <cafepresscoupons.com> domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <cafepresscoupons.com> domain name. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s CAFEPRESS.COM mark. The WHOIS information identifies the domain name registrant as “Tein Brouwer,” which Complainant contends is not similar to Respondent’s <cafepresscoupons.com> domain name. Respondent has failed to present evidence that would suggest that Respondent is commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the <cafepresscoupons.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent is not using the domain name in question to provide any actual coupons or other services. Complainant contends that the resolving website features pictures and logos lifted from its official website in an effort to appear as though the website is coming from Complainant. Further, Complainant asserts that the domain name contains hyperlinks that are “linked to CafePress URL’s associated with Commission Junction Affiliate ID of 3792889.” Complainant asserts that Respondent is profiting from this use through a “click through fraud” by routing Internet users through this affiliate program and then onto Complainant’s website. The Panel agrees and finds that Respondent’s use of the disputed domain name in order to route Internet users through an affiliate program in order to profit through Complainant’s affiliate program, and in violation of such an agreement, 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 Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is using the disputed domain name to intentionally attract Internet users to its resolving website for commercial gain, by creating a likelihood of confusion with as to Complainant’s affiliation or sponsorship of the website. Complainant argues that the disputed domain name’s resolving website features pictures and logos lifted from Complainant’s official website but that Respondent does not offer actual services or coupons on the website. Complainant alleges that there are a few hyperlinks which redirect Internet users to Complainant’s website via a third-party affiliate program. Complainant has argued that it is a violation of its affiliate program to use its marks in a domain name. The Panel agrees with Complainant and finds that Respondent registered and is using the disputed domain name in bad faith for commercial profit as laid out in Policy ¶ 4(b)(iv). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).
The Panel finds that Complainant has satisfied 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 <cafepresscoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 5, 2012
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