Lands' End, Inc. v. e on Craze
Claim Number: FA1202001431191
Complainant is Lands' End, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is e on Craze (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lamndsend.com>, <landsensd.com>, <landasend.com>, <landsenmd.com>, <landsenfd.com>, <labndsend.com>, <landsendf.com>, <lanbdsend.com>, <landsebnd.com>, <landsemnd.com>, <lsandsend.com>, <lasndsend.com>, <landsenbd.com>, <lanfdsend.com>, <lanmdsend.com>, <lantsend.com>, and <labdsend.com>, registered with Dotregistrar, and <landzend.com>, <lanadsend.com>, and <landnsend.com> registered with Namesdirect.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2012; the National Arbitration Forum received payment on February 23, 2012.
On February 24, 2012, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <lamndsend.com>, <landsensd.com>, <landasend.com>, <landsenmd.com>, <landsenfd.com>, <labndsend.com>, <landsendf.com>, <lanbdsend.com>, <landsebnd.com>, <landsemnd.com>, <lsandsend.com>, <lasndsend.com>, <landsenbd.com>, <lanfdsend.com>, <lanmdsend.com>, <lantsend.com>, and <labdsend.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 February 24, 2012, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <landzend.com>, <lanadsend.com>, and <landnsend.com> domain names are registered with Namesdirect and that Respondent is the current registrant of the names. Namesdirect has verified that Respondent is bound by the Namesdirect 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 February 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2012 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@landnsend.com, postmaster@lamndsend.com, postmaster@landsensd.com, postmaster@landasend.com, postmaster@landsenmd.com, postmaster@landsenfd.com, postmaster@labndsend.com, postmaster@landsendf.com, postmaster@lanbdsend.com, postmaster@lanadsend.com, postmaster@landsebnd.com, postmaster@landsemnd.com, postmaster@lsandsend.com, postmaster@lasndsend.com, postmaster@landsenbd.com, postmaster@lanfdsend.com, postmaster@lanmdsend.com, postmaster@lantsend.com, postmaster@labdsend.com, and postmaster@landzend.com. Also on February 28, 2012, 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 March 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <lamndsend.com>, <landsensd.com>, <landasend.com>, <landsenmd.com>, <landsenfd.com>, <labndsend.com>, <landsendf.com>, <lanbdsend.com>, <landsebnd.com>, <landsemnd.com>, <lsandsend.com>, <lasndsend.com>, <landsenbd.com>, <lanfdsend.com>, <lanmdsend.com>, <lantsend.com>, and <labdsend.com>, registered with Dotregistrar, and <landzend.com>, <lanadsend.com>, and <landnsend.com> domain names are confusingly similar to Complainant’s LANDS’ END mark.
2. Respondent does not have any rights or legitimate interests in the <lamndsend.com>, <landsensd.com>, <landasend.com>, <landsenmd.com>, <landsenfd.com>, <labndsend.com>, <landsendf.com>, <lanbdsend.com>, <landsebnd.com>, <landsemnd.com>, <lsandsend.com>, <lasndsend.com>, <landsenbd.com>, <lanfdsend.com>, <lanmdsend.com>, <lantsend.com>, and <labdsend.com>, registered with Dotregistrar, and <landzend.com>, <lanadsend.com>, and <landnsend.com> domain names.
3. Respondent registered and used the <lamndsend.com>, <landsensd.com>, <landasend.com>, <landsenmd.com>, <landsenfd.com>, <labndsend.com>, <landsendf.com>, <lanbdsend.com>, <landsebnd.com>, <landsemnd.com>, <lsandsend.com>, <lasndsend.com>, <landsenbd.com>, <lanfdsend.com>, <lanmdsend.com>, <lantsend.com>, and <labdsend.com>, registered with Dotregistrar, and <landzend.com>, <lanadsend.com>, and <landnsend.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the LANDS’ END mark and has registered it with both the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,263,612 registered January 10, 1984) and the Canadian Intellectual Property Organization (“CIPO”) (Reg. No. TMA315127 registered June 13, 1986). Complainant uses the mark in connection with its well-established catalogue business and conducts business at <landsend.com.
Respondent registered the disputed domain names starting on December 24, 2002. Some or all of the disputed domain names resolve to websites that display links to Complainant and its competitors.
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."
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.
(4) 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.”).
The Panel finds that Complainant has protectable rights in the LANDS’ END mark under Policy ¶ 4(a)(i) through its trademark registrations. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Respondent’s <lamndsend.com>, <landsensd.com>, <landasend.com>, <landsenmd.com>, <landsenfd.com>, <labndsend.com>, <landsendf.com>, <lanbdsend.com>, <landsebnd.com>, <landsemnd.com>, <lsandsend.com>, <lasndsend.com>, <landsenbd.com>, <lanfdsend.com>, <lanmdsend.com>, <lantsend.com>, <labdsend.com>, <landzend.com>, <lanadsend.com> and <landnsend.com> domain names are all confusingly similar to the LANDS’ END mark since the domain names merely remove the space between the terms and the apostrophe, add the generic top-level domain (“gTLD”) “.com,” and feature basic misspellings of the mark. The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant presents a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)
Complainant argues that Respondent is not and has not been commonly known by the disputed domain names. The WHOIS information identifies the registrant as “e on Craze,” which bears no resemblance to the LANDS’ END mark. Complainant also states that it has never authorized Respondent’s use of its marks or any version of its marks. The Panel therefore finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant argues that Respondent is using the <lanadsend.com> and <landzend.com> domain names to redirect Internet users to a website featuring links to various websites, including links to Complainant and its competitors. Thus, the Panel finds that Respondent 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 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).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Further, the Complainant submits evidence to show that the other eighteen domain names resolve to an inactive webpage. The Panel finds that the failure to make an active use of the disputed domain names also does not amount to 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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has also registered other domain names containing the trademarks of third parties. Complainant argues that such registrations are evidence of Respondent’s bad faith pattern of domain name registration in the present matter under Policy ¶ 4(b)(ii). Those other domain name registrations are not before this Panel and have not been examined under the UDRP, and thus do not apply in this case to support a finding of bad faith registration.
Respondent’s <lanadsend.com> and <landzend.com> domain names resolve to pay-per-click websites, which contain links to both Complainant’s website and the websites of Complainant’s competitors. Respondent no doubt receives click-through or other compensation from its use of these domain names, and therefore has registered and is using the domain names in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The remaining eighteen domain names do not resolve to active websites. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Respondent’s disputed domain names contain misspellings of Complainant’s mark, and this typosquatting is further evidence of Respondent’s bad faith registration and use of the domain names under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
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 <lamndsend.com>, <landsensd.com>, <landasend.com>, <landsenmd.com>, <landsenfd.com>, <labndsend.com>, <landsendf.com>, <lanbdsend.com>, <landsebnd.com>, <landsemnd.com>, <lsandsend.com>, <lasndsend.com>, <landsenbd.com>, <lanfdsend.com>, <lanmdsend.com>, <lantsend.com>, <labdsend.com>, <landzend.com>, <lanadsend.com> and <landnsend.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 4, 2012
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