Tiny Prints, Inc. v. Above.com Domain Privacy
Claim Number: FA1205001446563
Complainant is Tiny Prints, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tinyprins.com> and <tineyprints.com>, registered with Above.com Pty Ltd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2012.
On May 31, 2012, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <tinyprins.com> and <tineyprints.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
June 1, 2012, the Forum served the Complaint and all Annexes, including a
Written Notice of the Complaint, setting a deadline of June 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@tinyprins.com and
postmaster@tineyprints.com by e-mail. Also on June 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 June 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 a Written Notice, as defined in Rule 1. 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 <tinyprins.com> and <tineyprints.com> domain names are confusingly similar to Complainant’s TINY PRINTS mark.
2. Respondent does not have any rights or legitimate interests in the <tinyprins.com> and <tineyprints.com> domain names.
3. Respondent registered and used the <tinyprins.com> and <tineyprints.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tiny Prints, Inc., is a web-based company that offers premium and personalized stationery. Complainant owns the TINY PRINTS trademark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,629,373 filed September 19, 2007; registered June 2, 2009).
Respondent, Above.com Domain Privacy, registered the <tinyprins.com> and <tineyprints.com> domain names on February 13, 2008 and October 30, 2007, respectively. Respondent’s <tinyprins.com> domain name redirects Internet users to a direct competitor of Complainant at <istockphoto.com>. Respondent’s <tineyprints.com> domain name resolves to Complainant’s official website in violation of its affiliate agreement.
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.”).
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.
Complainant has presented the Panel with evidence that it owns a trademark registration with the USPTO for its TINY PRINTS mark (Reg. No. 3,629,373 filed September 19, 2007; registered June 2, 2009). The Panel finds that Complainant’s trademark registration is sufficient for it to establish rights in the TINY PRINTS 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)). The Panel further finds that Complainant’s rights in the mark date back to the original filing date with the USPTO of September 19, 2007. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Lastly, the Panel finds that it is irrelevant, under Policy ¶ 4(a)(i), that Respondent’s purported location is outside of the jurisdiction that Complainant holds trademark rights. 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).
Complainant argues that the <tinyprins.com> and <tineyprints.com> domain names are confusingly similar to Complainant’s TINY PRINTS mark. Complainant notes that the disputed domain names merely misspell the TINY PRINTS mark my removing the letter “t” or adding the letter “y” to the mark and removing the space between the terms of the mark. Complainant correctly points out that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant under Policy ¶ 4(a)(i). The Panel agrees with Complainant and holds that the <tinyprins.com> and <tineyprints.com> domain names are confusingly similar to Complainant’s TINY PRINTS mark under Policy ¶ 4(a)(i). See 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)); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not any rights and legitimate interests in the <tinyprins.com> and <tineyprints.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <tinyprins.com> and <tineyprints.com> domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its TINY PRINTS mark and that Respondent is not commonly known by the <tinyprins.com> and <tineyprints.com> domain names. The WHOIS information for the disputed domain names does not indicate that Respondent is commonly known as the disputed domain names. Respondent has not produced any evidence to show that it is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names 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); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant argues that Respondent’s <tinyprins.com> domain name redirects Internet users to a direct competitor of Complainant at <istockphoto.com>. Complainant submits evidence to show this use and contends that Respondent is paid for such a redirection by the companies that it sends visitors to. Absent evidence or argument to the contrary, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <tinyprins.com> domain name under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Further, Complainant argues that Respondent’s <tineyprints.com> domain name resolves to Complainant’s official website in violation of its affiliate agreement. The Panel finds that Respondent’s use of the disputed domain name to resolve the disputed domain name to Complainant’s own website via an affiliate agreement 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 Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent registered the disputed domain names for the purpose of disrupting Complainant’s business. The Panel notes that the <tinyprins.com> domain name redirects Internet users to a direct competitor of Complainant at <istockphoto.com>. Based upon this evidence, the Panel finds that Respondent registered and uses the <tinyprins.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant asserts that Respondent is commercially benefiting from its use of both of the disputed domain names. Complainant asserts that Respondent is paid for redirecting Internet users to the competing website through the <tinyprins.com> domain name. Complainant further asserts that Respondent’s redirection of Internet users to Complainant’s own website via the <tineyprints.com> domain name also commercially benefits Respondent because the redirection is done through an affiliate network. The Panel agrees and finds that Respondent registered and is using the <tinyprins.com> and <tineyprints.com> domain names in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
Lastly, Complainant argues that Respondent’s registration and use of the <tinyprins.com> and <tineyprints.com> domain names constitutes typosquatting and subsequently bad faith registration and use under Policy ¶ 4(a)(iii). As a preliminary manner, the Panel finds that Respondent’s registration of misspelled versions of Complainant’s TINY PRINTS mark is typosquatting. Therefore, the Panel finds that Respondent’s registration and use of the typosquatted domain names are evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tinyprins.com> and <tineyprints.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 28, 2012
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