national arbitration forum

 

DECISION

 

DailyCandy, LLC v. c/o wwwdailycandy.com

Claim Number: FA1210001469261

 

PARTIES

Complainant is DailyCandy, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is c/o wwwdailycandy.com (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwdailycandy.com>, registered with Domain.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2012; the National Arbitration Forum received payment on October 26, 2012.

 

On October 26, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwdailycandy.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name.  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 October 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@wwwdailycandy.com.  Also on October 26, 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 November 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant makes the following assertions:

1.     Respondent’s <wwwdailycandy.com> domain name is confusingly similar to Complainant’s DAILYCANDY mark.

2.    Respondent does not have any rights or legitimate interests in the <wwwdailycandy.com> domain name.

3.    Respondent registered or used the <wwwdailycandy.com> domain name in bad faith.

           

B.   Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in the DAILYCANDY mark. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the DAILYCANDY mark (Reg. No. 2,543,900 registered March 5, 2002).

  1. The <wwwdailycandy.com> domain name is confusingly similar to the DAILYCANDY mark.
  2. Respondent is not commonly known by the <wwwdailycandy.com> domain name. Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Respondent is not licensed, authorized, or otherwise permitted to use the DAILYCANDY mark.
  3. The <wwwdailycandy.com> domain name resolves to a website featuring links to third-party websites, some of which compete with Complainant’s offerings. Respondent receives pay-per-click fees from these linked websites.
  4. Respondent’s bad faith is demonstrated by Respondent using the <wwwdailycandy.com> domain name in connection with generating revenue as a click-through website. Respondent uses the DAILYCANDY mark and provides competing and non-competing links to achieve a wrongful competitive advantage and to capitalize on Complainant’s mark.
  5. Respondent engaged in typosquatting of the DAILYCANDY mark in the domain name. Respondent takes advantage of the inevitability of Internet users mistakenly forgetting the period between “www” and “daily candy” when typing in the domain name, thus reaching the <wwwdailycandy.com> domain name instead of Complainant.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the DAILYCANDY mark. Complainant operates a business in connection with the DAILY CANDY mark. Complainant argues that its business has an e-mail program where Internet users are sent the best information and deals on style, beauty, food, fashion, and entertainment. Complainant provides the Panel with evidence that it is the owner of the USPTO registration for the DAILYCANDY mark (Reg. No. 2,543,900 registered March 5, 2002). See Complainant’s Exhibit E. Panels have held that the registration of a mark with a federal trademark authority is evidence of having rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the DAILYCANDY mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that the <wwwdailycandy.com> domain name is confusingly similar to the DAILYCANDY mark.  Panels have found that the addition of the prefix “www” to a mark as a calculating means of diverting Internet users who forget to put the period between the “www” and the mark fails to remove a domain name from the realm of confusing similarity. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). Therefore, the Panel finds that Respondent’s <wwwdailycandy.com> domain name is confusingly similar to Complainant’s DAILYCANDY mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 has neither rights nor legitimate interests in the <wwwdailycandy.com> domain name. Complainant contends that Respondent is not commonly known by the <wwwdailycandy.com> domain name. According to Complainant, Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Respondent is not licensed, authorized, or otherwise permitted to use the DAILYCANDY mark. The Panel further notes that the WHOIS record for the <wwwdailycandy.com> domain name lists “c/o WWWDAILYCANDY.COM” as the domain name registrant. Panels have found that even where a WHOIS records suggests that a respondent may be known by a disputed domain name, where all other information on record disputes this and the respondent fails to submit a response to the complainant, the Panel finds that the respondent is not commonly known by the disputed domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the <wwwdailycandy.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant further contends that Respondent’s use of the <wwwdailycandy.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant asserts that the <wwwdailycandy.com> domain name resolves to a website featuring links to third-party websites, some of which compete with Complainant’s offerings, and that Respondent receives pay-per-click fees from these linked websites. The Panel notes that the screenshot Complainant provides of the <wwwdailycandy.com> domain name demonstrates that these links include some to Complainant and are listed under headings such as “Cable Internet,” “Daily Candy,” and “Seattle Attraction.” See Complainant’s Exhibit H. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel held that competing and noncompeting links displayed via a disputed domain name is not a use of a domain name that provides the respondent with rights or legitimate interests in the domain name. Therefore, the Panel finds that Respondent’s use of the <wwwdailycandy.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the <wwwdailycandy.com> domain name in bad faith. Complainant asserts that Respondent’s bad faith is demonstrated by Respondent using the <wwwdailycandy.com> domain name in connection with generating revenue as a click-through website. Complainant alleges that Respondent uses the DAILYCANDY mark in providing competing and non-competing links to achieve a wrongful competitive advantage and to capitalize on Complainant’s mark. The Panel finds that Respondent registered and is using the disputed domain name in order to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source of the disputed domain name. Therefore, the Panel finds that Respondent registered and is using the <wwwdailycandy.com> domain name in bad faith pursuant to 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).

 

Complainant contends that Respondent’s bad faith is further evident because Respondent engaged in typosquatting of the DAILYCANDY mark in the domain name. Complainant argues that Respondent takes advantage of the inevitability of Internet users mistakenly forgetting the period between “www” and “daily candy” when typing in the domain name, thus reaching the <wwwdailycandy.com> domain name instead of Complainant. Panels have found that the addition of “www” as a prefix to a mark is a prime example of typosquatting and is a clear indicator of bad faith. See  Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith). Therefore, the Panel finds that Respondent registered and is using the <wwwdailycandy.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwdailycandy.com> domain name be TRANSFERRED from Respondent to Complaint.

 

 

John J. Upchurch, Panelist

Dated:  December 12, 2012

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page