national arbitration forum

 

DECISION

 

Dr. Leonard's Healthcare Corp. v. Zhoumurong / zhou murong

Claim Number: FA1211001473823

 

PARTIES

Complainant is Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Zhoumurong / zhou murong (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <carolwrightgofts.com> and <crolwrightgifts.com>, registered with ENAME TECHNOLOGY CO., LTD.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on November 30, 2012.  The Complaint was submitted in both Chinese and English.

 

On December 3, 2012, ENAME TECHNOLOGY CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <carolwrightgofts.com> and <crolwrightgifts.com> domain names are registered with ENAME TECHNOLOGY CO., LTD. and that Respondent is the current registrant of the names.  ENAME TECHNOLOGY CO., LTD. has verified that Respondent is bound by the ENAME TECHNOLOGY CO., 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 December 13, 2012, the Forum served the Chinese Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 2, 2013 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@carolwrightgofts.com, postmaster@crolwrightgifts.com.  Also on December 13, 2012, the Chinese language 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 January 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings will be conducted in English.

 

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 <carolwrightgofts.com> and <crolwrightgifts.com> domain names are confusingly similar to Complainant’s CAROL WRIGHT GIFTS mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <carolwrightgofts.com> and <crolwrightgifts.com> domain names.

 

3.    Respondent registered and used the <carolwrightgofts.com> and <crolwrightgifts.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant owns trademark registrations for its CAROL WRIGHT GIFTS mark (Reg. No. 2,290,178 registered November 2, 1999) with the United States Patent and Trademark Office (“USPTO”).

 

Respondent registered the <carolwrightgofts.com> and <crolwrightgifts.com> domain names on December 12, 2010, and uses them to host a website that features generic links to third-party websites, some of which 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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has rights in its CAROL WRIGHT GIFTS mark under Policy ¶ 4(a)(i), as established by its USPTO registration of the mark.  In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panel similarly held that the complainant was successful in demonstrating its rights in the mark through USPTO registration.  The Panel notes that Complainant is not required under Policy ¶ 4(a)(i) to register its mark in the Respondent’s country of residence in order to claim rights in the mark.  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).

 

Respondent’s <carolwrightgofts.com> and <crolwrightgifts.com> domain names eliminate the spaces between the words of the mark, and change one letter of the mark.  The Panel finds that the spelling differences, the removal of spaces, and the addition of the gTLD, do not distinguish the disputed domain names from Complainant’s CAROL WRIGHT GIFTS mark under Policy ¶ 4(a)(i).  See 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.”); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 is not commonly known by either the <carolwrightgofts.com> or <crolwrightgifts.com> domain names, pointing out that the WHOIS information associated with the <carolwrightgofts.com> and <crolwrightgifts.com> domain names identifies “Zhoumurong / zhou murong” as the registrant.  The Panel agrees and finds that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(a)(i).  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 that Respondent’s use of the domain name to offer hyperlinks to websites offering products that compete with Complainant does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use.  The panel in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), held that the respondent’s use of the domain name to operate a website with links to various competing website was not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  The Panel finds that Respondent fails to use the <carolwrightgofts.com> and <crolwrightgifts.com> 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).

 

Complainant alleges that Respondent registered and uses the disputed domain names to take advantage of typical spelling errors in order to create a confusingly similar domain name to Complainant’s mark.  The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), as demonstrated by its attempt to confuse Internet users by registering purposely misspelled or typosquatted domain names.  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent has shown a history of bad faith registration and use, and points to UDRP decisions removing domain names from Respondent’s possession and transferring them to the holder of the mark upon which the domain name is based.  For example, see Google Inc. v. Murong, FA 1403692 (Nat. Arb. Forum Sept. 30, 2011).  In Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), the panel stated that prior UDRP proceedings against the respondent were evidence of a pattern of bad faith registrations.  The Panel finds that, in the absence of any argument to the contrary, the adverse UDRP decisions against Respondent establish Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii).

 

Respondent’s advertised click-through links at the website resolving from the disputed domain names lead to other websites that promote products that compete with Complainant, thereby diverting potential customers away from Complainant.  The Panel finds that this is a disruption to Complainant’s business and constitutes bad faith registration and use of the <carolwrightgofts.com> and <crolwrightgifts.com> domain names under Policy ¶ 4(b)(iii).  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).”).

 

Respondent uses the <carolwrightgofts.com> and <crolwrightgifts.com> domain names to offer hyperlinks to websites in competition with Complainant by causing confusion as to Complainant’s affiliation with the disputed domain names, no doubt generating click-through revenue.  The Panel finds that this demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  The panel in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), held that the respondent was engaged in bad faith registration and use by using a domain name confusingly similar to the complainant’s mark to offer hyperlinks to third-party websites whose offered services were similar to those offered by the complainant.

 

The Panel also finds that Respondent’s registration of the disputed domain names constitutes typosquatting, which demonstrates that Respondent registered the <carolwrightgofts.com> and <crolwrightgifts.com> domain names in bad faith pursuant to 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)).

 

The Panel finds that Complainant has satisfied 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 <carolwrightgofts.com> and <crolwrightgifts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: January 15, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page