craigslist, Inc. v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1205001445358
Complainant is craigslist, Inc. (“Complainant”), represented by Brian P. Hennessy of Perkins Coie LLP, California, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <craislist.com>, registered with Moniker.
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 May 22, 2012; the National Arbitration Forum received payment on June 4, 2012.
On May 24, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <craislist.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 June 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@craislist.com. Also on June 7, 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 July 2, 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 has rights in the CRAIGSLIST mark which it uses in connection with online, interactive advertising and distribution services via classified listings;
Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the CRAIGSLIST mark (e.g., Reg. No. 2,395,628 registered October 17, 2000) and European Community Trademark Registry No. 003504032.
The <craislist.com> domain name is confusingly similar to the CRAIGSLIST mark.
Respondent is not commonly known by the <craislist.com> domain name.
The <craislist.com> domain name is used to offer services in competition with Complainant.
The <craislist.com> domain name is disruptive to Complainant’s business;
The <craislist.com> domain name was meant to attract Internet users by creating a likelihood of confusion as to the source of the disputed domain name.
Respondent has engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns recognized trademark registrations with the USPTO for the CRAIGSLIST mark.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in CRAIGSLIST.
Respondent is not authorized to use Complainant’s trademark.
The <craislist.com> domain name is used to offer services in competition with Complainant.
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 owns trademark registrations for the CRAIGSLIST mark in the United States and Europe. Regardless of the location of the parties, Complainant’s registration of a mark with either trademark authority sufficiently establishes that Complainant has rights in a mark for the purposes of 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 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).
To create the at‑issue domain name, Respondent merely removed the letter “g” from Complainant’s mark and appended the generic top-level domain, “.com”. In the instant case, the deletion of a single letter does not create a meaningful distinction between the disputed domain name and the allegedly infringed-upon trademark. Furthermore, the addition of a top level domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that the <craislist.com> domain name is confusingly similar to Complainant’s CRAIGSLIST mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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).
Respondent lacks rights and legitimate interests in respect of the craislist.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Complainant has not authorized Respondent to use its mark and Respondent is not commonly known by the <craislist.com> domain name. WHOIS information for the <craislist.com> domain name lists “Domain Admin / Taranga Services Pty Ltd” as the domain name registrant. WHOIS information previously listed the domain name registrant as “Moniker Privacy Services” and there is also no evidence on record which tends to show that Respondent has ever been known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <craislist.com> domain name 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).
Additionally, Respondent’s <craislist.com> domain name resolves to a website which appears to compete with Complainant’s classified advertising services, such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), and TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), (finding that the display of competing links on a disputed domain name did not qualify as being within the scope of Policy ¶¶ 4(c)(i) and 4(c)(iii)).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
In using its confusingly similar domain name to market classified advertising services like those offered by Complainant, Respondent disrupts Complainant’s business. Respondent thereby demonstrates its bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)(iii) 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).
Furthermore, Respondent’s use of the confusingly similar domain name, one which differs from the CRAIGSLIST mark only by the deletion of a single letter, creates initial confusion as to the source of Respondent’s inadvertently arrived-at website. As mentioned above, Respondent there markets services that compete directly with Complainant’s offerings. These circumstances show that Respondent registered and is using the <craislist.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, as mentioned above, Respondent removed the letter “g” from Complainant’s trademark to form the <craislist.com> domain name. Respondent’s motive was apparently to use the domain name to direct those Internet users who, when attempting to access Complainant’s website, mistype <craigslist.com>. By Respondent’s design, the error results in the mistyping Internet user being misdirected to Respondent’s website. Respondent’s prototypical typosquatting behavior is further conclusive evidence of bad faith registration and use. 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.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <craislist.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 5, 2012
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