Shoedazzle.com, Inc. v. Above.com Domain Privacy
Claim Number: FA1210001465989
Complainant is Shoedazzle.com, 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 <shodazzle.com>, <shoedazzale.com>, <shoedazzzle.com> and <shoedazlle.com>, registered with Above.Com Pty Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2012; the National Arbitration Forum received payment on October 5, 2012.
On October 9, 2012, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <shodazzle.com>, <shoedazzale.com>, <shoedazzzle.com> and <shoedazlle.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. advised the Forum, however, that the <shodazzle.com> domain name was in expired status at that time and the <shoedazzzle.com> domain name was set to expire on October 11, 2012. After being notified by the Forum, Complainant renewed the domain names (under the same commercial terms as the registrant) for the purpose of continuing with the instant proceeding. Subsequently, on October 31, 2012, Above.Com Pty Ltd. confirmed by e-mail a to the National Arbitration Forum for a second time that the <shodazzle.com>, <shoedazzale.com>, <shoedazzzle.com> and <shoedazlle.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. 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 November 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@shodazzle.com, postmaster@shoedazzale.com, and postmaster@shoedazzzle.com, and postmaster@shoedazlle.com. Also on November 5, 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 December 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant shoedazzle Mark [i.]
SHOEDAZZLE for on-line shoe club ordering services featuring designer shoes;
computerized on-line ordering services in the field of designer shoes;
Personal fashion consulting services; providing news and information in
the field of fashion (U.S. Reg. No. 3,736,740). |
1. Shoedazzle.com, Inc. (“ShoeDazzle” or “Complainant”), co-founded by Brian Lee, Robert Shapiro, M.J. Eng, and Kim Kardashian, launched in 2008 under the basis of providing a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences.
Consumers or shoppers can join the service for free at ShoeDazzle’s <shoedazzle.com> website. Upon filling out an online form that describes their shopping choices and styles, ShoeDazzle stylists send an automated communications to the member, highlighting shoes and accessories that match those preferences, each at a price of $39.95. If a member makes an initial purchase, ShoeDazzle keeps on file that billing information, and customers who decline to make a monthly purchase are given credits for future monthly purchases.
ShoeDazzle has raised over $60 million in venture capital financing since inception and routinely attracts more than 2.8 million monthly unique visitors to its website at <shoedazzle.com>, per the web traffic monitoring service Compete.com. ShoeDazzle initially launched services in the United States but recently expanded operations to include the United Kingdom as well.
ShoeDazzle’s stylists and notable Hollywood celebrities, including Kim Kardashian, have been involved in designing items for the company and are heavily leveraged in promoting the company’s products and services. ShoeDazzle has more than three million members who have signed up for free membership and over a million “fans” on Facebook.
In short, ShoeDazzle enjoys wide consumer recognition and acceptance of its brand.
Since its start in 2008 ShoeDazzle has continuously used the Mark SHOEDAZZLE for on-line shoe club ordering services featuring designer shoes, personal fashion consulting services, and providing news and information in the field of fashion (U.S. Reg. No. 3,736,740).
ShoeDazzle.com, Inc. owns the SHOEDAZZLE marks cited in Section 4(c) above for which it has obtained a federal trademark registration. The federal mark registration has not been abandoned, cancelled or revoked.
ShoeDazzle has
spent hundreds of thousands of dollars in advertisement and promotion of the SHOEDAZZLE
Mark on television, print media and the Internet through its website located at
<shoedazzle.com>. Based on its federal trademark registrations and
extensive use, ShoeDazzle owns the exclusive right to use the SHOEDAZZLE Mark
in connection with for on-line shoe club ordering services featuring designer
shoes, personal fashion consulting services, and providing news and information
in the field of fashion.
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[a.] |
The
Disputed Domain Name(s) are nearly identical and confusingly similar to
Complainant's Marks.
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[b.] |
Respondent
has no rights or legitimate interests in respect of the Disputed Domain
Name(s) for the following reasons:
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[c.] |
The
Domain Name(s) should be considered as having been registered and being used
in bad faith for the following reasons:
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B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove the following three elements to obtain an order cancelling or transferring order a domain name:
(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, Shoedazzle.com, Inc., contends it is a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences. Complainant routinely attracts more than 2.8 monthly unique visitors to its website at <shoedazzle.com>, per the web traffic monitoring service Compete.com. Complainant initially launched services in the United States but recently expanded operations to include the United Kingdom. Complainant owns, and shows evidence of, a trademark registration with the United States Patent & Trademark Office (“USPTO”) for the SHOEDAZZLE mark (Reg. No. 3,736,740, filed June 11, 2009 and registered January 12, 2010). Complainant claims it established rights in the SHOEDAZZLE mark dating back to the filing date of the trademark registration, June 11, 2009. While Respondent appears to reside in Australia, Policy ¶4(a)(i) only requires Complainant register in some jurisdiction to establish rights in the mark. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds Complainant’s registration of the SHOEDAZZLE mark with the USPTO is sufficient to prove rights in the mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant’s rights in the SHOEDAZZLE mark date back to the filing date of June 11, 2009. See 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”).
Complainant claims Respondent’s <shodazzle.com>, <shoedazzale.com>, <shoedazzzle.com> and <shoedazlle.com> domain names are confusingly similar to the SHOEDAZZLE mark as they either remove one character, add one character, or use a character which is incorrect from Complainant’s mark. Respondent’s <shodazzle.com> removes the “e” from Complainant’s mark. The removal of this single letter does not adequately distinguish Respondent’s <shodazzle.com> domain name from Complainant’s SHOEDAZZLE mark under Policy ¶4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent’s <shoedazzale.com> domain name merely adds the letter “a” to Complainant’s mark and Respondent’s <shoedazzzle.com> domain name adds a “z” to Complainant’s SHOEDAZZLE mark. The addition of these letters to Complainant’s mark does not adequately differentiate Respondent’s <shoedazzale.com> or <shoedazzzle.com> domain names from Complainant’s mark under Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). Lastly, Respondent misspells Complainant’s SHOEDAZZLE mark in Respondent’s<shoedazlle.com> domain name by using the letter “l” instead of “z”. The misspelling of Complainant’s mark in this way does not eliminate confusing similarity under Policy ¶4(a)(i). 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). Respondent includes the generic top-level domain (“gTLD”) “.com” at the end of each disputed domain name. The addition of a gTLD does not eliminate confusing similarity under Policy ¶4(a)(i) because this syntax is required by the domain name system (and to hold otherwise would eviscerate the UDRP). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel accordingly concludes that Respondent’s <shodazzle.com>, <shoedazzale.com>, <shoedazzzle.com> and <shoedazlle.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has not been commonly known by the disputed domain names. The WHOIS information identifies “Above.com Domain Privacy” as the registrant. Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and has not been given permission by Complainant to use Complainant’s mark. Respondent does not dispute this. The Panel finds 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).
Complainant argues Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes Respondent’s <shoedazzle.com> and <shoedazzzle.com> disputed domain names resolve to pay-per-click links websites featuring links for “Womens Shoes,” “Shoes,” “Dazzling Shoes?” and “Designer Shoes,” among others. Complainant claims Respondent is receiving “pay-per-click” fees from the linked third-party websites displayed on its webpage. Respondent does not dispute this. The Panel finds Respondent is not using the <shoedazzle.com> and <shoedazzzle.com> 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
It should be noted Respondent registered the domain names using a privacy service, meaning the domain names are legally held by a legal entity for the benefit of an undisclosed owner. This means Respondent is not the beneficial owner of the domain names so Respondent cannot acquire any rights to the mark because Respondent does not conduct any business. Likewise, the beneficial owner can acquire any rights to the mark because the identity of the beneficial owner is not disclosed.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s use of the disputed domain names features “pay-per-click” links promoting competing products and disrupts Complainant’s business. Only the <shoedazzle.com> and <shoedazzzle.com> domain names resolve to websites displaying these pay-per-click links. According to the screenshots, Respondent’s disputed domain names feature links such as “Womens Shoes,” “Shoes,” and “Designer Shoes.” Complainant contends the links featured on Respondent’s websites diverts potential customers away from Complainant to third-party websites. The Panel finds Respondent’s use of the <shoedazzle.com> and <shoedazzzle.com> disputed domain names disrupts Complainant’s business under Policy ¶4(b)(iii), evidencing bad faith registration and use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent is using the disputed domain names to generate revenue as a “click through” website, showing Respondent is attempting to attract and mislead Internet users for its own profit. Again, only the <shoedazzle.com> and <shoedazzzle.com> domain name feature pay-per-click links. The Panel finds Respondent’s use of the disputed domain names to feature links to Complainant’s competitors, presumably in order to collect “click-through” fees, which indicates Respondent intends to attract and mislead consumers for commercial gain, demonstrating bad faith registration and use under Policy ¶4(b)(iv) for these two domain names. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant also claims Respondent is using some or all of the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which shows Respondent was aware of Complainant’s rights in the SHOEDAZZLE mark. According to Complainant’s provided screenshots, the <shoedazzale.com> and <shoedazlle.com> domain names appear to resolve to Complainant’s own website at the <shoedazzle.com> domain name. Respondent’s use of the disputed domain name to redirect consumers to Complainant’s own website in violation of Complainant’s affiliate program constitutes bad faith registration and use according to Policy ¶4(b)(iv) because Respondent is attempting to benefit from the fame of Complainant’s mark and the receipt of affiliate fees. 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).
Furthermore, Respondent’s bad faith is demonstrated by Respondent’s registration of all four of these domain names using a privacy service. In the commercial context, there is no bona fide reason to conduct business anonymously. Since Respondent has not done nothing to rebut this rebuttable presumption, the Panel finds it adequately demonstrates Respondent’s bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <shodazzle.com>, <shoedazzale.com>, <shoedazzzle.com> and <shoedazlle.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 26, 2012
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