Personalizationmall.com, Inc. v. Argosweb Corp / Crystal Image Pty Ltd / David Ghou / Denholm Borg / Elarson & Associates Pty Ltd / Lidnick Webcorp / Loshedina Inc / Luchichang Pty Ltd / Netmilo Pty Ltd / Orel Hlasek LLC / Vlad Obchikov / Volchar Pty Ltd / Web Pescados LLC / WuWeb Pty Ltd
Claim Number: FA1209001464872
Complainant is Personalizationmall.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Argosweb Corp / Crystal Image Pty Ltd / David Ghou / Denholm Borg / Elarson & Associates Pty Ltd / Lidnick Webcorp / Loshedina Inc / Luchichang Pty Ltd / Netmilo Pty Ltd / Orel Hlasek LLC / Vlad Obchikov / Volchar Pty Ltd / Web Pescados LLC / WuWeb Pty Ltd (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <eprsonalizationmall.com>, <ersonalizationmall.com>, <persnalizationmall.com>, <persnoalizationmall.com>, <personaliaztionmall.com>, <personalizatinomall.com>, <personalizatiomnall.com>, <personalizationamll.com>, <personalizationmalll.com>, <personalizationmlal.com>, <personalizationmll.com>, <personaliztaionmall.com>, <pesronalizationmall.com>, and <presonalizationmall.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2012; the National Arbitration Forum received payment on September 27, 2012.
On September 28, 2012, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <eprsonalizationmall.com>, <ersonalizationmall.com>, <persnalizationmall.com>, <persnoalizationmall.com>, <personaliaztionmall.com>, <personalizatinomall.com>, <personalizatiomnall.com>, <personalizationamll.com>, <personalizationmalll.com>, <personalizationmlal.com>, <personalizationmll.com>, <personaliztaionmall.com>, <pesronalizationmall.com>, and <presonalizationmall.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@eprsonalizationmall.com, postmaster@ersonalizationmall.com, postmaster@persnalizationmall.com, postmaster@persnoalizationmall.com, postmaster@personaliaztionmall.com, postmaster@personalizatinomall.com, postmaster@personalizatiomnall.com, postmaster@personalizationamll.com, postmaster@personalizationmalll.com, postmaster@personalizationmlal.com, postmaster@personalizationmll.com, postmaster@personaliztaionmall.com, postmaster@pesronalizationmall.com, and postmaster@presonalizationmall.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 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 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
1) All 14 domain names, and 14 Respondents, are in fact controlled by one entity. All of the 14 Respondents have appeared in another UDRP case, which held that they are the same Respondent. Complainant has compiled other evidence indicating that all 14 Respondents are the same entity.
2) Complainant is the owner of several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the PERSONALIZATION MALL (Reg. No. 2,561,853 registered Apr. 16, 2002) and PERSONALIZATIONMALL.COM marks (e.g., Reg. No. 3,491,562 registered Aug. 26, 2008).
3) Respondent’s <eprsonalizationmall.com>, <ersonalizationmall.com>, <persnalizationmall.com>, <persnoalizationmall.com>, <personaliaztionmall.com>, <personalizatinomall.com>, <personalizatiomnall.com>, <personalizationamll.com>, <personalizationmalll.com>, <personalizationmlal.com>, <personalizationmll.com>, <personaliztaionmall.com>, <pesronalizationmall.com>, and <presonalizationmall.com> domain names are all confusingly similar, misspelled versions of Complainant’s marks.
4) Respondent is not commonly known by the disputed domain names as the WHOIS information does not offer support of such a proposition, and Respondent has not been given permission to use Complainant’s marks in any way.
5) Respondent is using the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites and as such 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 under Policy ¶ 4(c)(iii).
6) Respondent is a recalcitrant, serial cybersquatter / typosquatter. Respondent also holds other domain name registrations that “appear to be straightforward examples of typosquatting,” which also serve as evidence of the bad faith intent on the part of Respondent.
7) Respondent’s use of the disputed domain names as pay-per-click websites providing links to Complainant’s competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
8) Respondent is likely receiving revenue from those Internet users who click on the displayed links, thereby evidencing Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv).
9) Respondent’s typosquatting behavior is further evidence of Respondent’s bad faith in registering and using the disputed domain names under Policy ¶ 4(a)(iii).
Respondent failed to file a Response.
Complainant, Personalizationmall.com, Inc., is the owner of several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the PERSONALIZATION MALL (Reg. No. 2,561,853 registered Apr. 16, 2002) and PERSONALIZATIONMALL.COM marks (e.g., Reg. No. 3,491,562 registered Aug. 26, 2008). Complainant uses its marks in connection with its offerings of personalized gifts to consumers for all occasions.
Respondents are Argosweb Corp / Crystal Image Pty Ltd / David Ghou / Denholm Borg / Elarson & Associates Pty Ltd / Lidnick Webcorp / Loshedina Inc / Luchichang Pty Ltd / Netmilo Pty Ltd / Orel Hlasek LLC / Vlad Obchikov / Volchar Pty Ltd / Web Pescados LLC / WuWeb Pty Ltd. Collectively, Respondents shall be referred to as “Respondent.”
All 14 domain names, and 14 Respondents, are controlled by one entity.
Respondent’s <eprsonalizationmall.com>, <ersonalizationmall.com>, <persnalizationmall.com>, <persnoalizationmall.com>, <personaliaztionmall.com>, <personalizatinomall.com>, <personalizatiomnall.com>, <personalizationamll.com>, <personalizationmalll.com>, <personalizationmlal.com>, <personalizationmll.com>, <personaliztaionmall.com>, <pesronalizationmall.com>, and <presonalizationmall.com> domain names are all confusingly similar, misspelled versions of Complainant’s marks.
Respondent is using the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites.
Respondent is a serial cybersquatter / typosquatter.
The earliest date that the disputed domain names were registered is December 8, 2008.
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: 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.”
Complainant contends that a single entity has registered each of the 14 disputed domain names using falsified contact information in an effort to frustrate the UDRP process.
All of the 14 Respondents in this case share the same name as respondents in several other UDRP cases. See FA 1337662, FA 1337660, and D2010-1237.
All of the disputed domain names were registered with GoDaddy.com, Inc. 13 of the disputed domain names were registered on December 8, 2008, while one domain name was registered on December 10, 2008. The DNS for all of the disputed domain names is NS1.DSREDIRECTION.COM. All of the disputed domain names are misspelled versions of Complainant’s mark. Respondent’s disputed domain names all redirect to a parked website containing hyperlinks to Complainant’s website and links to Complainant’s competitors. All of the disputed domain names redirect through the same IP Address of 204,13,162,123. All of the disputed domain names use the “parking engine” of DSPARKING.COM provided by <oversee.net.>.
The Panel finds that all of the disputed domain names were registered and are being used by the same entity. Therefore, the Panel will proceed with the instant proceedings.
Complainant owns several trademark registrations with the USPTO for its PERSONALIZATION MALL (Reg. No. 2,561,853 registered Apr. 16, 2002) and PERSONALIZATIONMALL.COM marks (e.g., Reg. No. 3,491,562 registered Aug. 26, 2008), establishing its rights under Policy ¶ 4(a)(i). 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 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 Respondent’s <eprsonalizationmall.com>, <ersonalizationmall.com>, <persnalizationmall.com>, <persnoalizationmall.com>, <personaliaztionmall.com>, <personalizatinomall.com>, <personalizatiomnall.com>, <personalizationamll.com>, <personalizationmalll.com>, <personalizationmlal.com>, <personalizationmll.com>, <personaliztaionmall.com>, <pesronalizationmall.com>, and <presonalizationmall.com> domain names are all confusingly similar, misspelled versions of Complainant’s marks. The disputed domain names all contain a misspelled version of Complainant’s PERSONALIZATIONMALL.COM mark by removing a letter, adding a letter, or transposing letters in the domain names. Such typographical errors in the disputed domain names do not distinguish the disputed domain names from Complainant’s mark. 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 Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s PERSONALIZATIONMALL.COM mark under Policy ¶ 4(a)(i).
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).
Based upon the WHOIS information for the disputed domain names, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Further, Respondent presumably receives pay-per-click fees from the linked websites and, as such, 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 under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent is a serial cybersquatter / typosquatter. Respondent also holds other domain name registrations that “appear to be straightforward examples of typosquatting,” which also serve as evidence of the bad faith intent on the part of Respondent. The registrants of the disputed domain names in the prior UDRP cases are the same as the registrant(s) in the present proceedings, therefore, bad faith exists under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Respondent’s use of the disputed domain names as pay-per-click websites providing links to Complainant’s competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii), by disrupting Complainant’s business. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is likely receiving revenue from those Internet users who click on the displayed links, thereby evidencing Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). The disputed domain names contain misspellings of Complainant’s mark. Respondent has intentionally created confusion with Complainant’s marks. Further, the Panel infers that Respondent is receiving commercial compensation from the companies and websites linked-to on the resolving websites. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). 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)(iv) 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).
Further, Respondent’s typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
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 <eprsonalizationmall.com>, <ersonalizationmall.com>, <persnalizationmall.com>, <persnoalizationmall.com>, <personaliaztionmall.com>, <personalizatinomall.com>, <personalizatiomnall.com>, <personalizationamll.com>, <personalizationmalll.com>, <personalizationmlal.com>, <personalizationmll.com>, <personaliztaionmall.com>, <pesronalizationmall.com>, and <presonalizationmall.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 12, 2012
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