FragranceX.com, Inc. v. stanley lee
Claim Number: FA1204001437541
Complainant is FragranceX.com, Inc. (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is stanley lee (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fragrancexcoupon.org>, registered with GoDaddy.com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2012; the National Arbitration Forum received payment on April 2, 2012.
On April 2, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fragrancexcoupon.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 April 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@fragrancexcoupon.org. Also on April 5, 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 May 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, FragranceX.com, Inc. ("FragranceX") is a global online retailer of perfumes, colognes, fragrances, skincare products, aftershave products, makeup and cosmetic products. Complainant has a significant presence in the United States, with its headquarters located in Long Island City, New York. Furthermore, the FRAGRANCEX trademark and brand is extremely well known worldwide, as Complainant ships products to customers in over 240 countries.
Complainant’s attorney sent Respondent a cease and desist notice, requesting transfer of the <fragrancexcoupon.org> domain name. Respondent did not acknowledge the notice, nor did Respondent attempt to transfer the disputed domain name to Complainant.
Complainant owns United States Trademark Reg. No. 3,365,121 for FRAGRANCEX.COM, registered on January 8, 2008. Complainant’s trademark was registered more than three years before Respondent registered the disputed domain name on January 24, 2011.
Complainant uses the FRAGRANCEX mark in connection with online sales of perfumes, colognes, fragrances, skincare products, aftershave products, makeup and cosmetic products.
Respondent uses the disputed domain name to host pay-per-click links directing Internet users to Complainant’s competitors.
Respondent’s disputed domain name is confusingly similar to Complainant’s FRAGRANCEX mark.
Respondent is using the disputed domain name for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent is not commonly known by the disputed domain name.
Respondent is attracting Internet users for commercial gain by creating a likelihood of confusion.
Respondent had actual and constructive knowledge of Complainant’s rights in the FRAGRANCEX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in its FRAGRANCEX mark at all times relevant to this proceeding. Complainant’s trademark is confusingly similar to Respondent’s disputed domain names.
Respondent registered the at-issue domain name after Complainant acquired rights in its FRAGRANCEX mark.
Respondent has no authority to use the FRAGRANCEX trademark in any manner whatsoever.
Respondent is not, and has not been, commonly known by the at-issue domain name.
The website reference by the at-issue domain name references a parked webpage.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has registered FRAGRANCEX with the USPTO (Reg. No. 3,365,121 registered January 8, 2008). It is well established that trademark registration demonstrates that complainant has rights in such mark under Policy ¶ 4(a)(i) regardless of Respondent’s location being outside the jurisdiction of the registration (here China ). See 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).
Respondent’s <fragrancexcoupon.org> domain name is confusingly similar to Complainant’s FRAGRANCEX mark. The domain name contains the most prominent portion of the mark, “fragrancex”, while adding only the generic term “coupon” and the generic top-level domain (“gTLD”) “.org.” Such alterations of the mark in forming the domain name are insufficient to render the domain name distinct from the 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 contained the identical mark of a complainant, combined with a generic word or term); see also 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).
Furthermore, Complainant points out that the word “coupon” is a common feature of the online shopping industry. Coupons are routinely issued to be redeemed for discounts and free shipping. Internet users will mistakenly assume that <fragrancexcoupon.org> relates to coupons for Complainant’s business. See Noodle Time, Inc. v. Brian Mieras, FA 1430006 (Nat. Arb. Forum March 29, 2012) (concluding that the respondent failed to differentiate its domain name from complainant’s mark because respondent takes the whole of the BENIHANA mark and incorporates it in a domain name and adds the word “coupon”, which is a common feature of the restaurant industry where coupons are issued to be redeemed for meals, internet users will naturally assume that the domain name relates to the offering of coupons at BENIHANA restaurants whose trademark or name is incorporated in the domain name).
Therefore, the Panel finds that the <fragrancexcoupon.org> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Respondent lacks rights or interests in respect of its <fragrancexcoupon.org> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since there was no response to the Complaint, Complainant’s prima facie case will be conclusive.
Respondent is not commonly known by the FRAGRANCEX mark and has not been authorized to use the FRAGRANCEX mark. WHOIS information shows “stanley lee” as the registrant of the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), ( respondent fails to establish rights and legitimate interests in the disputed domain name because the respondent was not authorized to use the mark and failed to submit evidence that it was commonly known by the disputed domain name). Therefore, the Panel concludes that Respondent is not commonly known by the <fragrancexcoupon.org> domain name under Policy ¶ 4(c)(ii).
Respondent is not using the <fragrancexcoupon.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The at-issue domain name resolves to a website containing pay-per-click links purportedly for coupons for Complainant’s business. It is reasonable to assume that when Internet users click the coupon links, they are redirected to a third-party site that sells goods from sellers that compete directly with Complainant. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), (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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (where a respondent has failed to offer any goods or services on its website other than links to third-party websites, it was not using a domain name in connection with 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)). Given the forgoing, the Panel finds that Respondent is not using the <fragrancexcoupon.org> domain name in connection with 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).
In light of Complainant’s uncontroverted evidence, Complainant well satisfies its initial burden thereby conclusively demonstrating Respondent’s lack of rights and interests in the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent uses the disputed domain name to disrupt Complainant’s business by diverting potential customers searching for Complainant’s FRAGRANCEX website to websites of third-parties that compete directly with Complainant. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users seeking information on Complainant’s educational institution to competing websites); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (where respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, respondent’s use of the disputed domain name constituted disruption under Policy ¶ 4(b)(iii)). Since it appears that Respondent redirects Internet users to third-party websites that compete directly with Complainant thereby disrupting Complainant’s business, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant shows that Respondent registered and uses the disputed domain name to attract Internet users for commercial gain. The use of a confusingly similar domain name, such as the at-issue domain name, confuses Internet users as to Complainant’s affiliation with such domain name. It is reasonable to conclude from the evidence presented that Respondent is generating income by hosting pay-per-click links that purportedly link to Complainant’s site but in actuality direct Internet uses to Complainant’s competitors. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), (when a respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites for which the respondent presumably receives referral fees, respondent is using the website for its own commercial gain and this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Since Respondent is commercially benefitting from Internet users’ confusion, this evidences bad faith registration pursuant to policy ¶ 4(b)(iv).
Finally, Respondent had actual knowledge of Complainant's rights in the FRAGRANCEX mark. Respondent knew of Complainant’s mark when it registered the disputed domain name since Respondent references Complainant’s website throughout its own website. Knowingly registering a domain name that is confusingly similar to a trademark in which Respondent has no rights is further evidence of bad faith. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007), (respondent registered a domain name in bad faith after concluding that the respondent had actual knowledge of Complainant’s mark when registering the disputed domain name).
Given the above, the Panel concludes on multiple independent grounds that Respondent has registered and used the at-issue domain name in bad faith pursuant to 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 <fragrancexcoupon.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 6, 2012
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