Fragrancenet.com, Inc. v. Xiaoming Liu
Claim Number: FA1209001464480
Complainant is Fragrancenet.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Xiaoming Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fragrrancenet.com>, <fragrancennet.com>, and <fraggrancenet.com>, registered with GoDaddy.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 26, 2012; the National Arbitration Forum received payment on September 26, 2012.
On September 27, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fragrrancenet.com>, <fragrancennet.com>, and <fraggrancenet.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 October 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@fragrrancenet.com, postmaster@fragrancennet.com, postmaster@fraggrancenet.com. Also on October 3, 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 30, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Complainant provides on-line retail store services in the fields of perfumery, aromatherapy, candles and hair care preparations under the FRAGRANCENET.COM mark.
2. Complainant owns trademark registrations for the FRAGRANCENET.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,559,768 registered January 13, 2009).
3. The <fragrrancenet.com>, <fragrancennet.com>, and<fraggrancenet.com> domain names are confusingly similar to Complainant’s FRAGRANCENET.COM mark.
4. Respondent is not commonly known by any of the disputed domain names.
5. The disputed domain names redirect users to Complainant’s own website, in violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant.
6. Respondent’s registration of the disputed domain names evidences typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the 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.”).
Complainant claims rights in the FRAGRANCENET.COM mark under Policy ¶ 4(a)(i). The Panel finds that Complainant has provided evidence of its registration of the mark with the USPTO (Reg. No. 3,559,768 registered January 13, 2009). The Panel notes that previous panels have agreed that registration of a mark with the USPTO is sufficient to confer rights in a mark. See 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). The Panel finds that Complainant has established rights in the FRAGRANCENET.COM mark pursuant to Policy ¶ 4(a)(i), notwithstanding the fact that Respondent operates in a country other than that in which Complainant holds its registration. See 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).
Complainant argues that Respondent’s <fragrrancenet.com>, <fragrancennet.com>, and <fraggrancenet.com> domain names are confusingly similar to Complainant’s FRAGRANCENET.COM mark for the purposes of Policy ¶ 4(a)(i). The Panel notes that each disputed domain name adds a single letter to Complainant’s mark as follows: the <fragrrancenet.com> domain name adds an extra letter “r,” the <fragrancennet.com> domain name adds an extra letter “n,” and the <fraggrancenet.com> domain name adds an extra letter “g.” The Panel finds that the addition of an extra letter to a complainant’s mark has not been found to sufficiently distinguish disputed domain names. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”). Further, the Panel finds that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant under Policy ¶ 4(a)(i). See 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). Accordingly, the Panel determines that each of Respondent’s <fragrrancenet.com>, <fragrancennet.com>, and <fraggrancenet.com> domain names are confusingly similar to Complainant’s FRAGRANCENET.COM mark for the purposes of 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 alleges that Respondent is not commonly known by any of the <fragrrancenet.com>, <fragrancennet.com>, or <fraggrancenet.com> domain names for the purposes of Policy ¶ 4(c)(ii). Complainant further alleges that “Respondent is not sponsored by or legitimately affiliated with Complainant in any way,” and that “Complainant has not given Respondent permission to use Complainant's Mark in a domain name.” The Panel notes that the WHOIS information identifies the domain name registrant as “Xiaoming Liu,” which the Panel finds to bear no resemblance to any of the disputed domain names. Absent the filing of a Response, the Panel determines that there is no evidence in the record to support the assertion that Respondent is commonly known by any of the disputed domain names. Without such evidence in the instant case, the Panel finds that Respondent is not commonly known by the any of the <fragrrancenet.com>, <fragrancennet.com>, or <fraggrancenet.com> domain names for the purposes of Policy ¶ 4(c)(ii). See 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).
The Panel finds that Respondent’s <fragrrancenet.com>, <fragrancennet.com>, and <fraggrancenet.com> domain names redirect users to Complainant’s own website, in violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant. The Panel finds this to demonstrate Respondent’s lack of rights or legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum 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)).
Complainant has proven this element.
Complainant urges that Respondent’s use of the <fragrrancenet.com>, <fragrancennet.com>, and <fraggrancenet.com> domain names to redirect users to Complainant’s own website, in violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant, constitutes bad faith under Policy ¶ 4(a)(iii). The Panel finds that by registering the confusingly similar domain names as a member of Complainant’s affiliate program, Respondent has attempted to opportunistically benefit from its registration and use of the disputed domain names at Complainant’s expense. The Panel finds that previous panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent redirects users to the complainant’s domain name, thus receiving a commission from the complainant through its affiliate program. See 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). In light of these findings, the Panel finds that Respondent’s registration and use of the <fragrrancenet.com>, <fragrancennet.com>, and <fraggrancenet.com> domain names constitutes attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent has engaged in typosquatting, and that this activity is evidence of bad faith under Policy ¶ 4(a)(iii) in and of itself. The Panel finds that each disputed domain name differs from Complainant’s FRAGRANCENET.COM mark by a single letter. The Panel construes Respondent’s registration of such domain names as typosquatting activity. The Panel finds bad faith registration and use of each of the disputed domain names on this basis as well. 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’”).
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 <fragrrancenet.com>, <fragrancennet.com>, and <fraggrancenet.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 2, 2012
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