national arbitration forum

 

DECISION

 

Charming Shoppes, Inc. and its subsidiary, Lane Bryant Purchasing Corp. v. Ali Aziz / Dong Wang

Claim Number: FA1210001469450

 

PARTIES

Complainant is Charming Shoppes, Inc. and its subsidiary, Lane Bryant Purchasing Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Ali Aziz (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <lanbryant.com> and <lanebrynt.com>, registered with Domain.com.

 

PANEL

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 Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2012; the National Arbitration Forum received payment on October 30, 2012.

 

On October 31, 2012, Domain.com confirmed by e-mail to the National Arbitration Forum that the <lanbryant.com> and <lanebrynt.com> domain names are registered with Domain.com and that Respondent is the current registrant of the names.  Domain.com has verified that Respondent is bound by the Domain.com 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@lanbryant.com, postmaster@lanebrynt.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

The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

(a)Complainant has rights in the LANE BYRANT mark. The mark is used in connection with the retail sale of plus-size women’s clothing. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the Lane Bryant mark (e.g., Reg. No. 1,293,460 registered Sept. 4, 1984). See Complainant’s Exhibit E;

(b)The <lanbryant.com> and <lanebrynt.com> domain names are confusingly similar to the LANE BRYANT mark. Each of the disputed domain names merely incorporates the LANE BRYANT mark, minus the space between words, misspelled by the deletion of one letter. Respondent also adds, insignificantly, the generic top-level domain (“gTLD”) “.com.”;

(c)Respondent has no rights or legitimate interests in respect of the domain names;

(d)Respondent is not commonly known by the <lanbryant.com> and <lanebrynt.com> domain names. Respondent has not been given permission by Complainant to use the LANE BRYANT mark, and Respondent is not sponsored by or legitimately affiliated with Complainant;

(e)The domain names have been registered and are being used in bad faith;

(f)The disputed domain names resolve to a parked website at the <usseek.com> domain name which contains a list of hyperlinks that includes links to Complainant’s and Complainant’s competitors’ websites. See Complainant’s Exhibit H. Respondent received pay-per-click fees for these links.

(g)Respondent has developed a pattern of bad faith registration and use of domain names. Respondent has been the respondent in a variety of other UDRP domain disputes. See Complainant’s Exhibit N.

(h)The <lanbryant.com> and <lanebrynt.com> domain names are disruptive to Complainant’s business. Respondent uses confusingly similar domain names to provide links to competitors of Complainant and to Complainant’s website. Respondent diversion of Internet users is intentional.

(i)Respondent is attempting to achieve a wrongful competitive advantage and commercially gain from the use of the LANE BRYANT mark and the <lanbryant.com> and <lanebrynt.com> domain names. Respondent receives revenue for each misdirected Internet user and is improperly capitalizing off of Complainant’s mark.

(j)Respondent has engaged in typosquatting. The marks are altered in the disputed domain name substantively only by the deletion of a single letter. This is an attempt to take advantage of common typographical errors.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.Complainant is a well established and prominent United States company in the clothing and related industries.

2.Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the LANE BRYANT mark (e.g., Reg. No. 1,293,460 registered Sept. 4, 1984).

3. Respondent registered the <lanbryant.com> domain name on March 1, 2002 and the <lanebrynt.com> domain name on November 10, 2002. Respondent uses the Disputed Domain Names to redirect Internet users variously to a website featuring links to Complainant’s website and to third-party websites, some of which directly compete with Complainant's business.

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.”).

 

Preliminary Issue: Multiple Complainants

 

In the instant proceedings, there are two Complainants. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

The two Complainants in this matterare Charming Shoppes, Inc. and its subsidiary, Lane Bryant Purchasing Corp. Complainant argues that Charming Shoppes, Inc. asserts that Lane Bryant Purchasing Corp. is its subsidiary with rights in the LANE BRYANT mark and provides evidence of this. See Complainant Exhibit G.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will therefore treat both as a single entity in this proceeding.  Accordingly, the Complainants will be collectively referred to as “Complainant” in this decision.

 

Preliminary Issue:  Multipe Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain name 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 Respondent merely uses two different sets of contact information for the disputed domain names, thus demonstrating that they are controlled by a single entity. Complainant notes that a UDRP decision has already established that Ali Aziz and Dong Wang are simply aliases for a single person. See Microsoft Corp. v. Tan King Fong a/k/a Dong Wang a/k/a Ali Aziz a/k/a Nadeem Qadir a/k/a Bladimir Boyiko a/k/a NA Dotsan a/k/a Leonard Bogucki a/k/a Venta a/k/a The data in Bulkregister.com’s WHOIS database is p a/k/a Registrate Co. a/k/a Cosmosl, FA 1265720 (Nat. Arb. Forum July 14, 2009). Additionally, Complainant notes that the disputed domain names use the same subnet IP address, carry the same servers, and use the same registrar. Furthermore, the domain names redirect Internet users to the same parked website through an identical redirect process.

                                          

The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark.

 

Complainant contends that it has rights in the LANE BRYANT mark. Complainant states that the mark is used in connection with the retail sale of plus-size women’s clothing. Complainant provides the Panel with evidence that Complainant is the owner of the USPTO registrations for the LANE BRYANT mark (e.g., Reg. No. 1,293,460 registered Sept. 4, 1984). See Complainant’s Exhibit E. Panels have found that, regardless of the location of the parties, the registration of a mark is clear evidence of having rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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). Therefore, the Panel finds that Complainant has rights in the LANE BRYANT mark pursuant to Policy ¶ 4(a)(i).

 

The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s registered LANE BRYANT mark. Complainant contends that the <lanbryant.com> and <lanebrynt.com> domain names are confusingly similar to the LANE BRYANT mark. Complainant notes that each of the disputed domain names merely incorporates the LANE BRYANT mark, minus the space between words, misspelled by the deletion of one letter; Respondent also adds, insignificantly “.com.” The Panel finds that the deletion of spaces and a single letter in a mark and the addition of a gTLD are not changes that negate a finding of confusing similarity. 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).”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s <lanbryant.com> and <lanebrynt.com> domain names are confusingly similar to the LANE BRYANT mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take Complainant’s registered LANE BRYANT mark and to use it in its domain names, making various minor spelling changes to the trademarks before embodying them in the respective domain names;

(b) Respondent has then used the domain names to resolve to the Complainant’s website and to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business;

 (c) Respondent has engaged in these activities without the consent or       approval of Complainant;

(d)Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain names as Respondent is not commonly known by the <lanbryant.com> and <lanebrynt.com> domain names. Respondent has not been given permission by Complainant to use the LANE BRYANT mark, and Respondent is not sponsored by or legitimately affiliated with Complainant, argues Complainant. The Panel notes also that the WHOIS record for the disputed domain name lists “Ali Aziz / Dong Wang” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);

(e)Complainant next argues that Respondent’s use of the disputed domain names is clear evidence that Respondent does not have rights or legitimate interests in the <lanbryant.com> and <lanebrynt.com> domain name. Complainant notes that the disputed domain names resolve to a parked website at the <usseek.com> domain name which contains a list of hyperlinks that includes links to Complainant’s and Complainant’s competitors’ websites. See Complainant’s Exhibit H. Complainant argues that Respondent receives pay-per-click fees for these links. Therefore, the Panel finds that Respondent’s use of the <lanbryant.com> and <lanebrynt.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute 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).”).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent registered and is using the <lanbryant.com> and <lanebrynt.com> domain names in bad faith. Complainant asserts that Respondent has developed a pattern of bad faith registration and use of domain names. Respondent has been the respondent in a variety of other UDRP domain disputes. See Microsoft Corp. v. Tan King Fong a/k/a Dong Wang a/k/a Ali Aziz a/k/a Nadeem Qadir a/k/a Bladimir Boyiko a/k/a NA Dotsan a/k/a Leonard Bogucki a/k/a Venta a/k/a The data in Bulkregister.com’s WHOIS database is p a/k/a Registrate Co. a/k/a Cosmosl, FA 1265720 (Nat. Arb. Forum July 14, 2009); see also Steve Madden, LTD v. Dong Wang, FA 1415123 (Nat. Arb. Forum Dec. 15, 2011); see also Am. Airlines, Inc. v. Ali Aziz, FA 1247063 (Nat. Arb. Forum Mar. 30, 2009). Therefore, the Panel finds that Respondent has developed a pattern of bad faith and thus infers bad faith registration and use of the <lanbryant.com> and <lanebrynt.com> domain names pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).

 

Secondly, Complainant contends that the <lanbryant.com> and <lanebrynt.com> domain names are disruptive to Complainant’s business. Complainant argues that Respondent uses confusingly similar domain names to provide links to Complainant’s website and to competitors of Complainant. Respondent’s diversion of Internet users is intentional, Complainant claims. The panel in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), held that the display of competing links and links to the complainant’s website is disruptive. Therefore, the Panel finds that Respondent’s registration and use of the <lanbryant.com> and <lanebrynt.com> domain names is a product of bad faith pursuant to Policy ¶ 4(b)(iii).

 

Thirdly, Complainant argues also that Respondent is attempting to achieve a wrongful competitive advantage and commercially gain from the use of the LANE BRYANT mark and the <lanbryant.com> and <lanebrynt.com> domain names. Complainant asserts that Respondent receives revenue for each misdirected Internet user and is improperly capitalizing off Complainant’s mark. Complainant notes that the disputed domain names resolve to a parked website at the <usseek.com> domain name which contains a list of hyperlinks that includes links to Complainant’s and Complainant’s competitors’ websites. See Complainant’s Exhibit H. Therefore, the Panel finds that Respondent is making a bad faith attempt to take commercial advantage of Internet users’ mistakes 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).

 

Fourthly, Complainant argues that Respondent’s bad faith is clear because Respondent has engaged in typosquatting. Complainant notes that the mark is altered in the disputed domain names substantively only by the deletion of a single letter and that this is an attempt to take advantage of common typographical errors. Panels have found that typosquatting a mark in a domain name is clear evidence of bad faith. 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)). Therefore, the Panel finds that Respondent registered and is using the <lanbryant.com> and <lanebrynt.com> domain names in bad faith under Policy ¶ 4(a)(iii).

 

Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s registered LANE BRYANT marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <lanbryant.com> and <lanebrynt.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  December 11, 2012

 

 

 

 

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