Steve Madden, Ltd v. Above.com Domain Privacy
Claim Number: FA1210001465158
Complainant is Steve Madden, Ltd (“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 <stevemaddon.com>, <stevemaidden.com>, <stevemdden.com>, and <steviemadden.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2012; the National Arbitration Forum received payment on October 1, 2012.
On October 2, 2012, Above.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <stevemaddon.com>, <stevemaidden.com>, <stevemdden.com>, and <steviemadden.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@stevemaddon.com, postmaster@stevemaidden.com, postmaster@stevemdden.com, postmaster@steviemadden.com. Also on October 2, 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 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its STEVE MADDEN mark.
2. Respondent’s <stevemaddon.com>, <stevemaiden.com>, stevemdden.com> and <steviemadden.com> domain names are confusingly similar to Complainant’ mark.
3. Respondent has no rights to or legitimate interests in the domain names.
4. Respondent registered and used the domain names in bad faith.
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 Panel notes that Complainant has provided the Panel with evidence of its registration of the STEVE MADDEN mark with the USPTO (e.g. Reg. No. 2,012,115 registered January 1, 1996) in support of its claim to rights in the mark. The Panel finds that registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the STEVE MADDEN mark for the purposes of Policy ¶ 4(a)(i), notwithstanding the fact that Respondent operates in a country other than that in which Complainant holds its trademark 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 also argues that the <stevemaddon.com>, <stevemaidden.com>, <stevemdden.com>, and <steviemadden.com> domain names are confusingly similar to its STEVE MADDEN mark within the meaning of Policy ¶ 4(a)(i). The Panel notes that each disputed domain name represents a common misspelling of Complainant’s mark. The Panel finds that the <stevemaddon.com> domain name replaces the final “e” in Complainant’s mark with the letter “o,” the <stevemaidden.com> domain name adds an “i” to Complainant’s mark, the <stevemdden.com> domain name removes the letter “a” from Complainant’s mark, and the <steviemadden.com> domain name adds an “i” to Complainant’s mark. Additionally, the Panel notes that each disputed domain name removes the space between words in Complainant’s mark while adding the generic top-level domain (“gTLD”) “.com.” The Panel finds precedential support for the notion that none of these changes are sufficient to distinguish the disputed domain names from Complainant’s mark. 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)”); 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)). Based on the foregoing, the Panel concludes that the each of the disputed domain names is confusingly similar to Complainant’s STEVE MADDEN mark within the meaning of 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); 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.”).
In contending that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii), Complainant also asserts that it has not given Respondent permission to use Complainant's mark in a domain name, nor is Respondent sponsored by or legitimately affiliated with Complainant in any way. The Panel observes that the WHOIS information lists the domain name registrant as “Above.com Domain Privacy” for each of the disputed domain names. The Panel also notes that Respondent has failed to submit a Response in this case, meaning that there is no evidence in the record to suggest that Respondent is in fact commonly known by any of the names. In light of these findings, the Panel concludes that Respondent is not commonly known by the <stevemaddon.com>, <stevemaidden.com>, <stevemdden.com>, or <steviemadden.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues Respondent’s use of the disputed domain names to resolve to pages featuring third-party links, some of which directly compete with Complainant’s business, suggests that Respondent’s use of the disputed domain names can be considered neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel finds that past panels have agreed that the use of a confusingly similar domain name to redirect Internet users to a site displaying competing links illustrates a respondent’s lack of rights or legitimate interests in a disputed domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)). Accordingly, the Panel holds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant contends that “Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant,” and that “these links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business.” The Panel finds that Respondent’s use of confusingly similar domain names substantially increases the likelihood that consumers will mistakenly visit Respondent’s sites when they had intended to visit Complainant’s. The Panel further finds that when these misdirected users are then presented with links to services that compete with Complainant’s services, this substitution of information about Complainant for information involving its competitors disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant alleges that Respondent’s registration and use of the <stevemaddon.com>, <stevemaidden.com>, <stevemdden.com>, and <steviemadden.com> domain names also exhibits attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). The Panel finds that Respondent’s use of confusingly similar domain names demonstrates an intent to create confusion as to Complainant’s endorsement of, or affiliation with, Respondent’s sites, and that Respondent seeks to use this confusion to draw traffic to its site. The Panel assumes that Respondent receives click-through fees when its links are accessed, thereby allowing Respondent to achieve a commercial gain through the operation of its websites. The Panel holds that Respondent is attempting to generate commercial gain from the confusion it creates, which constitutes attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Finally, Complainant argues that Respondent’s typosquatting activity is evidence of bad faith under Policy ¶ 4(a)(iii) in and of itself. The Panel finds bad faith registration and use of each of the disputed domain names on this basis as well 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’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stevemaddon.com>, <stevemaidden.com>, <stevemdden.com>, and <steviemadden.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 14, 2012
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