J.C. Penney Corporation, Inc. v. Strata STrata
Claim Number: FA1203001432746
Complainant is J.C. Penney Corporation, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Strata STrata (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com>, registered with Enom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 5, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@jcpennney.com, postmaster@jcpeeney.com, and postmaster@jcpenys.com. Also on March 9, 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 April 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names, the domain names at issue, are confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant was founded in Kemmerer, Wyoming in 1902 by James Cash Penney. J.C. Penney Corporation, Inc. owns and operates over 1100 Department Stores in the U.S. and Puerto Rico. Complainant registered the JCPENNY mark (Reg. No. 949,595 registered January 2, 1973) with the United States Patent and Trademark Office (“USPTO”) and has additional trademark registrations for the JCPENNY mark throughout the world. Complainant has not licensed or otherwise authorized Respondent to use any form of the JCPENNY mark and Respondent is not commonly known by the domain names at issue.
Respondent is using (some or all of) the domain names at issue to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per- click fees from these linked websites.
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.
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.”).
Complainant has long standing rights in the JCPENNY mark. Complainant has registered the JCPENNY mark (Reg. No. 949,595 registered January 2, 1973) with the USPTO and additionally owns other registrations for the JCPENNY mark (e.g., Reg. No. 1982B2053 registered August 25, 1982) with the Hong Kong Trade Marks Registry (“HKTMR”). Accordingly, Complainant has rights in its JCPENNY mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names are confusingly similar to the JCPENNY mark. Respondent adds a generic top-level domain (“gTLD”) to in each of the domain names and misspells Complainant’s mark in each of the domain names by changing, adding, and/or deleting a letter. The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Additionally, the Panel finds that the misspelling of a mark in a disputed domain name fails to differentiate a disputed domain name from the mark it infringes upon. See 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”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent’s <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names are confusingly similar to Complainant’s JCPENNY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).
Respondent is not commonly known by the disputed domain names. Complainant has not licensed, authorized, or permitted Respondent to use its JCPENNY mark in the <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names and Respondent is in no way affiliated with Complainant. The WHOIS records for the disputed domain names, which list “Strata Strata” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 use of the <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names is not a use which provides Respondent with rights or legitimate interests in the disputed domain names. The <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names resolve to websites which display links to competing and non-competing goods and services. The panels in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), held that the use of a disputed domain name to display a variety of links, competing or otherwise, is not a use protected by Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and is using the <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names in bad faith. The <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names resolve to websites which display links unrelated to and in competition with Complainant’s offerings under the JCPENNY mark. Respondent is compensated for the display of these links. The Panel infers that Respondent profits from its registration and the display of the links and the operation of the disputed domain names and finds bad faith under Policy ¶ 4(b)(iv) because it is clear that Respondent registered and is using the disputed domain names in order to cause confusion as to whether Complainant is affiliated with the disputed domain names and then to profit from Internet users’ mistakes. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Respondent has engaged in typosquatting and that also demonstrates bad faith. The disputed domain names differ from Complainant’s mark by only minute changes, and thus Respondent typosquatted the <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names. Respondent’s actions indicate typosquatting which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also 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.).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jcpennney.com>, <jcpeeney.com>, and <jcpenys.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 11, 2012
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