Redcats Usa, L.P., Jessica London, Inc., The Sportsman's Guide, Inc. v. c/o brlanehome.com, c/o brylaehome.com, c/o brylanehme.com, c/o brylanehoe.com, c/o brylaneome.com, c/o brylnehome.com, c/o jessicalodon.com, c/o jessicalondo.com, c/o jessicalonon.com, c/o jessicaondon.com, c/o jssicalondon.com, c/o kigsizedirect.com, c/o kimgsizedirect.com, c/o kingizedirect.com, c/o kingsiedirect.com, c/o kingsisedirect.com, c/o kingsixedirect.com, c/o kingsizadirect.com, c/o kingsizdirect.com, c/o kingsizederect.com, c/o kingsizediect.com, c/o kingsizedierct.com, c/o kingsizedircet.com, c/o kingsizedirct.com, c/o kingsizedirecy.com, c/o kingsizediret.com, c/o sportsmansgide.com, c/o sportsmansgude.com, c/o sportsmnsguide.com, c/o sprtsmansguide.com
Claim Number: FA1209001462889
Complainant is Redcats Usa, L.P., Jessica London, Inc., The Sportsman's Guide, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is c/o brlanehome.com, c/o brylaehome.com, c/o brylanehme.com, c/o brylanehoe.com, c/o brylaneome.com, c/o brylnehome.com, c/o jessicalodon.com, c/o jessicalondo.com, c/o jessicalonon.com, c/o jessicaondon.com, c/o jssicalondon.com, c/o kigsizedirect.com, c/o kimgsizedirect.com, c/o kingizedirect.com, c/o kingsiedirect.com, c/o kingsisedirect.com, c/o kingsixedirect.com, c/o kingsizadirect.com, c/o kingsizdirect.com, c/o kingsizederect.com, c/o kingsizediect.com, and c/o kingsizedierct.com, (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brlanehome.com>, <brylaehome.com>, <brylanehme.com>, <brylanehoe.com>, <brylaneome.com>, <brylaneshome.com>, <brylnehome.com>, <jessicalodon.com>, <jessicalondo.com>, <jessicalonon.com>, <jessicaondon.com>, <jssicalondon.com>, <kigsizedirect.com>, <kimgsizedirect.com>, <kingizedirect.com>, <kingsiedirect.com>, <kingsisedirect.com>, <kingsixedirect.com>, <kingsizadirect.com>, <kingsizdirect.com>, <kingsizederect.com>, <kingsizediect.com>, <kingsizedierct.com>, <kingsizedircet.com>, <kingsizedirct.com>, <kingsizedirecy.com>, <kingsizediret.com>, <sportsmansgide.com>, <sportsmansgude.com>, <sportsmnsguide.com>, and <sprtsmansguide.com>, registered with Domain.Com, Llc.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2012; the National Arbitration Forum received payment on September 17, 2012.
On September 17, 2012, Domain.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <brlanehome.com>, <brylaehome.com>, <brylanehme.com>, <brylanehoe.com>, <brylaneome.com>, <brylaneshome.com>, <brylnehome.com>, <jessicalodon.com>, <jessicalondo.com>, <jessicalonon.com>, <jessicaondon.com>, <jssicalondon.com>, <kigsizedirect.com>, <kimgsizedirect.com>, <kingizedirect.com>, <kingsiedirect.com>, <kingsisedirect.com>, <kingsixedirect.com>, <kingsizadirect.com>, <kingsizdirect.com>, <kingsizederect.com>, <kingsizediect.com>, <kingsizedierct.com>, <kingsizedircet.com>, <kingsizedirct.com>, <kingsizedirecy.com>, <kingsizediret.com>, <sportsmansgide.com>, <sportsmansgude.com>, <sportsmnsguide.com>, and <sprtsmansguide.com> domain names are registered with Domain.Com, Llc and that Respondent is the current registrant of the names. Domain.Com, Llc has verified that Respondent is bound by the Domain.Com, Llc 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 September 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@brlanehome.com, postmaster@brylaehome.com, postmaster@brylanehme.com, postmaster@brylanehoe.com, postmaster@brylaneome.com, postmaster@brylaneshome.com, postmaster@brylnehome.com, postmaster@jessicalodon.com, postmaster@jessicalondo.com, postmaster@jessicalonon.com, postmaster@jessicaondon.com, postmaster@jssicalondon.com, postmaster@kigsizedirect.com, postmaster@kimgsizedirect.com, postmaster@kingizedirect.com, postmaster@kingsiedirect.com, postmaster@kingsisedirect.com, postmaster@kingsixedirect.com, postmaster@kingsizadirect.com, postmaster@kingsizdirect.com, postmaster@kingsizederect.com, postmaster@kingsizediect.com, postmaster@kingsizedierct.com, postmaster@kingsizedircet.com, postmaster@kingsizedirct.com, postmaster@kingsizedirecy.com, postmaster@kingsizediret.com, postmaster@sportsmansgide.com, and postmaster@sportsmansgude.com, postmaster@sportsmnsguide.com, postmaster@sprtsmansguide.com. Also on September 20, 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 October 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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.
On October 18, 2012, the Panel entered an Order requesting Complainants to submit additional information on the issue of whether Complainants have sufficient nexus to be able to each claim to have rights in all the domain names and on the issue of whether the domain names are sufficiently linked to the same domain name holder.
On, October 29, 2012 Respondent’s supplemental submission was received by the National Arbitration Forum.
Complainant requests that the domain names be transferred from Respondent to Complainant.
i. BRYLANE HOME (Reg. No. 2,588,396 filed Oct. 1, 2001; registered July 2, 2002);
ii. JESSICA LONDON (e.g., Reg. No. 2,210,503 filed July 17, 1997; registered Dec. 15, 1998);
iii. KING SIZE DIRECT (Reg. No. 2,751,981 filed Dec. 26, 2001; registered Aug. 19, 2003);
iv. KINGSIZEDIRECT.COM (Reg. No. 3,718,563 filed May 13, 2009; registered Dec. 1, 2009); and
v. THE SPORTSMAN’S GUIDE (e.g., Reg. No. 1,430,664 registered Feb. 24, 1987).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, Panel finds Complainant is entitled to the relief requested.
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.”).
Preliminary Issue: Request to Add and Remove Domain Names
In its additional submission Complainant asked to remove three domain names and add five domain names to the proceeding. The request to remove brylaneshome.com, kingsizediret.com, and sportsmansgide.com is granted and all three names are removed from this proceeding. The request to add names is denied without prejudice to Complainant filing a new complaint containing those names.
Preliminary Issue: Multiple Complainants
There are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The three Complainants in this matter are Redcats Usa, L.P., Jessica London, Inc., The Sportsman's Guide, Inc. Under the “Factual and Legal Grounds” section of the Complaint, Complainant states that Redcats USA acquired The Sportsman’s Guide in 2006, and that Jessica London, Inc. is within the Redcats USA portfolio.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding. In this decision, Complainants collectively are reflected as Complainant.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds there is sufficient evidence that the disputed domain names are controlled by the same entity and will treat Respondent as a single entity. In this decision, Respondents are collectively referred to as Respondent.
Complainant contends that it is a dynamic, multi-channel, web-driven home-shopping leader with numerous brands in its portfolio, including Jessica London, KingSize, BrylanHome, and The Sportsman’s Guide. Complainant asserts that it owns the following trademark registrations with the USPTO:
BRYLANE HOME (Reg. No. 2,588,396 filed Oct. 1, 2001; registered July 2, 2002);
JESSICA LONDON (e.g., Reg. No. 2,210,503 filed July 17, 1997; registered Dec. 15, 1998);
KING SIZE DIRECT (Reg. No. 2,751,981 filed Dec. 26, 2001; registered Aug. 19, 2003);
KINGSIZEDIRECT.COM (Reg. No. 3,718,563 filed May 13, 2009; registered Dec. 1, 2009); and
THE SPORTSMAN’S GUIDE (e.g., Reg. No. 1,430,664 registered Feb. 24, 1987).
The Panel finds that Complainant’s trademark registrations are sufficient for it to establish rights in the marks above, and that such rights start from the filing dates of the marks. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Further, Complainant argues that Respondent’s disputed domain names are all confusingly similar to Complainant’s marks as the domain names are mere misspellings of Complainant’s mark with the added gTLD “.com.” The Panel notes the following:
Respondent’s <brlanehome.com>, <brylaehome.com>, <brylanehme.com>, <brylanehoe.com>, <brylaneome.com>, and <brylnehome.com> domain names all contain misspellings of Complainant’s BRYLANE HOME mark through the removal of a letter, the addition of a letter, the removal of the space between the terms of the mark, and the addition of the gTLD “.com.” The Panel finds that such changes to Complainant’s mark are not sufficient to render the disputed domain names distinct from Complainant’s mark. 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 Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark). Therefore, the Panel finds that the disputed domain names above are confusingly similar to Complainant’s BRYLANE HOME mark under Policy ¶ 4(a)(i).
Respondent’s <jessicalodon.com>, <jessicalondo.com>, <jessicalonon.com>, <jessicaondon.com>, and <jssicalondon.com> domain names all contain misspellings of Complainant’s JESSICA LONDON mark. The Panel notes, as noted above, that the domain names remove the space from the mark and add the gTLD “.com,” while also removing a letter from the mark within the domain names. Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to the JESSICA LONDON 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 Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant).
Respondent’s <kigsizedirect.com>, <kimgsizedirect.com>, <kingizedirect.com>, <kingsiedirect.com>, <kingsisedirect.com>, <kingsixedirect.com>, <kingsizadirect.com>, <kingsizdirect.com>, <kingsizederect.com>, <kingsizediect.com>, <kingsizedierct.com>, <kingsizedircet.com>, <kingsizedirct.com>, and <kingsizedirecy.com> domain names all contain misspellings of Complainant’s KINGSIZEDIRECT.COM mark by removing a letter or replacing a letter with a different letter. The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s KINGSIZEDIRECT.COM mark under Policy ¶ 4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”).
Respondent’s <sportsmansgude.com>, <sportsmnsguide.com>, and <sprtsmansguide.com> domain names all contain modified versions of Complainant’s THE SPORTSMAN’S GUIDE mark. The Panel notes that the term “THE” and the spaces between the terms of Complainant’s mark are removed in each domain name. Further, the Panel notes that the disputed domain names misspell the SPORTSMAN’S GUIDE portion of the mark by removing the apostrophe and deleting a letter. The Panel finds that such changes to the mark are not sufficient to remove the disputed domain names from the realm of confusing similarity. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also 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 Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s THE SPORTSMAN’S GUIDE mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant contends that Respondent is not commonly known by the disputed domain names and has not been authorized to register domain names containing Complainant’s marks. The Panel notes that although each domain name’s WHOIS information identifies the registrant as “c/o <domainname>” that this alone does not render Respondent commonly known by the domain names. Further, Respondent has not come forward with any type of information relating to its rights in the domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant also argues that Respondent’s disputed domain names do not resolve to active websites, further evidence that Respondent is not using the domain names at issue for 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). The Panel notes that one of the Complainant’s exhibits depicts the blank websites that resolve from the disputed domain names. The Panel finds that Respondent’s failure to make an active use of the disputed domain names does not amount to 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
The Panel notes that in making its determinations under Policy ¶ 4(a)(iii), that it is not bound by the bad faith factors identified under Policy ¶ 4(b), but that the Panel makes its determinations based upon the totality of the circumstances. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant argues that Respondent’s bad faith is shown through its non-use of all of the disputed domain names. Complainant has supplied screenshots of the disputed domain names, which the Panel notes are blank pages. The Panel finds that Respondent’s non-use of the disputed domain names is evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent’s typosquatting behavior is further evidence of bad faith. Complainant argues that Respondent’s use of intentionally misspelled versions of Complainant’s marks are evidence of typosquatting, and typosquatting is evidence of bad faith. The Panel agrees with Complainant and find that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii), through its use of typosquatting in its registration of the domain names. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brlanehome.com>, <brylaehome.com>, <brylanehme.com>, <brylanehoe.com>, <brylaneome.com>, <brylnehome.com>, <jessicalodon.com>, <jessicalondo.com>, <jessicalonon.com>, <jessicaondon.com>, <jssicalondon.com>, <kigsizedirect.com>, <kimgsizedirect.com>, <kingizedirect.com>, <kingsiedirect.com>, <kingsisedirect.com>, <kingsixedirect.com>, <kingsizadirect.com>, <kingsizdirect.com>, <kingsizederect.com>, <kingsizediect.com>, <kingsizedierct.com>, <kingsizedircet.com>, <kingsizedirct.com>, <kingsizedirecy.com>, <sportsmansgude.com>, <sportsmnsguide.com>, and <sprtsmansguide.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 30, 2012
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