Euromarket Designs, Inc. d/b/a Crate & Barrel v. PPA Media Services / Ryan G Foo
Claim Number: FA1204001440326
Complainant is Euromarket Designs, Inc. d/b/a Crate & Barrel (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> registered with INTERNET.BS CORP.
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 April 20, 2012; the National Arbitration Forum received payment on April 20, 2012.
On April 25, 2012, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> domain names are registered with INTERNET.BS CORP. and that Respondent is the current registrant of the names. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 May 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@createandbarrel.com, postmaster@creatandbarrel.com, postmaster@crateandbareel.com, and postmaster@craateandbarrel.com. Also on May 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 24, 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:
Respondent’s <createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> domain names, the domain name at issue, is confusingly similar to Complainant’s CRATE AND BARRELL (the “Mark”).
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has used the CRATE AND BARREL mark in commerce since 1962 and has acquired trademark registrations with the United States Patent and Trademark Office ("USPTO") for the mark (e.g., Reg. No. 1,469,515 registered March 16, 1987). Complainant uses the CRATE AND BARREL mark in connection with the operation of a chain of housewares and furniture stores in the United States. Respondent’s <createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> domain names are confusingly to the CRATE AND BARREL mark. Respondent has used the domain name to display a parked website filled with pay-per-click links to Complainant’s competitors. Respondent has been a party to multiple UDRP domain name disputes cases in which it has been determined to have registered a domain name in bad faith. The disputed domain names were registered no earlier than August 21, 2000.
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 rights in the CRATE AND BARREL mark and has provided the Panel with proof of its registration of the mark with the USPTO (e.g., Reg. No. 1,469,515 registered March 16, 1987). Registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Complainant has established rights in the CRATE AND BARREL mark for the purposes of Policy ¶ 4(a)(i), notwithstanding the fact that Respondent resides or operates in a country other than that in which Complainant holds its trademark registration. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> domain names are confusingly similar to Complainant’s CRATE AND BARREL Mark pursuant to Policy ¶ 4(a)(i). Each disputed domain name represents a misspelling of Complainant’s mark, with a generic top-level domain (“gTLD”) attached. The <createandbarrel.com> domain name adds an “e,” the <craateandbarrel.com> domain name adds an “a,” the <creatandbarrel.com> domain name transposes the “a” and “e,” and the <crateandbareel.com> domain name replaces the final “r” with an “e.” Each disputed domain name contains Complainant’s Mark with a single letter added, replaced, or transposed. This supports the finding that each disputed domain is confusingly similar to Complainant’s Mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). The addition of a gTLD has not been found to distinguish a disputed domain name under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, Respondent’s disputed domain names are confusingly similar to Complainant’s 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 <createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> domain names within the meaning of Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name identifies the domain name registrant as “PPA Media Services / Ryan G Foo.” The Panel finds that there is no similarity between this name and any of the domain names at issue. This is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under 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). Complainant also has never licensed, authorized, or permitted Respondent’s use of the CRATE AND BARREL Mark in Respondent’s disputed domain names. Respondent in this case has failed to satisfy its burden of providing a Response. Without such a submission and based on the evidence in the record, there is nothing which indicates that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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).
Additionally, Respondent is not using the disputed domain names in accordance 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). Each of the disputed domain names resolves to a website featuring generic links to third-party sites, some of which directly compete with Complainant’s business. Respondent’s use of the disputed domain names cannot be considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent uses the <createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> domain names to resolve to websites featuring generic links to third-party sites, some of which directly compete with Complainant’s business. Past panels have refused to find a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to operate a website containing competing commercial links. 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that 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)). Respondent’s use of the disputed domain names constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent’s registration of the disputed domain names constitutes typosquatting for each disputed domain name and this provides further evidence that Respondent lacks rights or legitimate interests in the domain names at issue. Each disputed domain name represents a small typographical error of Complainant’s CRATE AND BARREL mark. The Panel finds that <createandbarrel.com> domain name adds an “e,” the <craateandbarrel.com> domain name adds an “a,” the <creatandbarrel.com> domain name transposes the “a” and “e,” and the <crateandbareel.com> domain name replaces the final “r” with an “e.” Respondent’s registration of such domain names is typosquatting activity and Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant provides three previous UDRP decisions in which Respondent has been held to have registered a disputed domain name in bad faith. See AOL Inc. v. PPA Media Services a/k/a Ryan G Foo, FA 1432688 (Nat. Arb. Forum April 24, 2012); see also Homer TLC, Inc. v. PPA Media Services a/k/a Ryan G Foo, FA 1416637 (Nat. Arb. Forum January 13, 2012); see also American Sports Licensing v. PPA Media Services a/k/a Ryan G Foo, FA 1432688 (Nat. Arb. Forum March 6, 2012). This demonstrates a pattern of bad faith registration, which supports a finding of bad faith registration and use in the instant case under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent’s use of the <createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> domain names to redirect users to click-through sites which feature competing third-party links constitutes bad faith under Policy ¶ 4(b)(iv). Respondent’s registration of domain names that are confusingly similar to Complainant’s CRATE AND BARREL mark is evidence of Respondent’s attempt to create confusion as to Complainant’s affiliation with the websites housed at the disputed domain names.
Finally, Respondent’s typosquatting activity is also evidence of bad faith. See 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)); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT 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<createandbarrel.com>, <creatandbarrel.com>, <crateandbareel.com>, and <craateandbarrel.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 28, 2012
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