Provide Commerce, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1212001473936
Complainant is Provide Commerce, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <profliowers.com>, <profloiwers.com>, <proflowera.com>, and <sherrysberrys.com>, registered with Internet.Bs Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2012; the National Arbitration Forum received payment on December 3, 2012.
On December 10, 2012, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <profliowers.com>, <profloiwers.com>, <proflowera.com>, and <sherrysberrys.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 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@profliowers.com, postmaster@profloiwers.com, postmaster@proflowera.com, and postmaster@sherrysberrys.com. Also on December 20, 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 January 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Founded in 1998, Complainant is a leading online provider of high quality gifts from flowers and chocolates to jewelry and unique gifts.
Complainant owns a trademark for the PROFLOWERS mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,476,976 registered August 14, 2001).
Complainant owns a trademark for the SHARI’S BERRIES mark, registered with the USPTO (Reg. No. 3,783,282 filed Sept. 16, 2008; registered May 4, 2010).
Complainant had common law rights in the SHARI’S BERRIES mark prior to Respondent’s registration of the <sherrysberrys.com> domain name.
Respondent has not been commonly known by the at-issue domains.
Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's mark.
Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
Respondent is using the <proflowera.com> and <sherrysberrys.com> domain names to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant's business.
Respondent receives pay-per-click fees from its linked websites.
Respondent’s advertised pay-per-click links displayed on the <proflowera.com> and <sherrysberrys.com> websites promote products that compete with Complainant.
Respondent is using the <profliowers.com> and <profloiwers.com> domain names to operate inactive websites.
Respondent’s registration of the disputed domain names constitutes typosquatting.
Respondent is a recalcitrant, serial cybersquatter/typosquatter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its PROFLOWERS, and SHARI’S BERRIES marks
Complainant’s trademark rights in its marks predate Respondent’s registration of each of the relevant at-issue domain names.
Respondent is not authorized to use Complainant’s trademarks.
Respondent is using the <profliowers.com> and <profloiwers.com> domain names to do nothing.
Respondent is using the <proflowera.com> and <sherrysberrys.com> 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.
Respondent receives pay-per-click fees from the links on its <proflowera.com> and <sherrysberrys.com> websites which promote products that compete with Complainant.
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.”).
Each at-issue domain names is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the PROFLOWERS and SHARI’S BERRIES trademarks by virtue of registering such marks with the USPTO. Complainant’s registration of these marks confers rights in such marks pursuant to Policy ¶ 4(a)(i), despite the fact that Respondent may operate outside of the United States. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The Panel notes that notwithstanding that Respondent’s registration of the <sherrysberrys.com> domain name predates Complainant’s registration of the SHARI’S BERRIES mark with the USPTO, Complainant’s extensive prior use of SHARI’S BERRIES afforded Complainant trademark rights in SHARI’S BERRIES prior to Respondent’s registration of the <sherrysberrys.com> domain name. Although this finding is not significant concerning Policy ¶4(a)(i) analysis, it is essential to the Panel’s findings under Paragraphs 4(a)(ii) and 4(a)(iii).
The <profliowers.com>, <profloiwers.com>, and <proflowera.com> domain names are confusingly similar to Complainant’s PROFLOWERS mark pursuant to Policy ¶ 4(a)(i). Each of these disputed domain names includes a misspelling of Complainant’s PROFLOWERS mark and a generic top-level domain. The <profliowers.com> and <profloiwers.com> domain names add an “i” to Complainant’s mark, while the <proflowera.com> domain name switches the letter “s” in Complainant’s mark for an “a.” Neither the misspelling of Complainant’s mark nor the affixation of a top level domain name, here “.com,” is sufficient to distinguish Complainant’s mark from Respondent’s domain names under Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Likewise, the <sherrysberrys.com> domain name is confusingly similar to Complainant’s SHARI’S BERRIES mark for the purposes of Policy ¶ 4(a)(i). To form the <sherrysberrys.com> domain name Respondent removes the space separating the two terms in Complainant’s mark and adds the top level domain name, “.com.” Respondent further exchanges the letters “ry” for the letter “i”, and “y” for the “ie” in Complainant’s mark, replaces the “a” with the letter “e,” and includes two “r’s” instead of the single “r” used by Complainant in the term “SHARI’S.” The result is nevertheless a domain name that is similarly sounding and similar in appearance to Complainant’s mark. The typographical differences between the <sherrysberrys.com> domain name and Complainant’s mark are trivial and negated by their phonetic similarity for the purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”). Additionally and as mentioned above, the elimination of the space and the addition of a top level domain name are insignificant under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent lacks both rights and legitimate interests in respect of each of the at‑issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any the at‑issue domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showings act conclusively.
Respondent is not commonly known by any of the at-issue domain names within the meaning of Policy ¶ 4(c)(ii). WHOIS information identifies the domain names’ registrant as “Fundacion Private Whois / Domain Administrator.” and there is no evidence before the Panel which suggests that Respondent is known by any of the at-issue domain names notwithstanding the contrary indication in the WHOIS record. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue 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).
Respondent’s use of the <proflowera.com> and <sherrysberrys.com> 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, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Skyhawke Techns., 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).”).
Respondent is also not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <profliowers.com> and <profloiwers.com> domain names. Each of these domains resolves to an inactive website. Respondent’s non-use of the <profliowers.com> and <profloiwers.com> domain names does not demonstrate rights or legitimate interests in respect of either domain name as contemplated by Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The at‑issue domain names were each registered and used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy with regard to each of the at-issue domain names.
Respondent is a serial cybersquatter. See Alticor, Inc. v. Fundacion Private Whois / Domain Admin., FA 1454787 (Nat. Arb. Forum Sep. 3, 2012); see also Vera Bradley Inc. v. Fundacion Private Whois / Domain Admin., FA 1453710 (Nat. Arb. Forum Aug. 31, 2012); see also Johnson & Johnson v. Fundacion Private Whois / Domain Admin., FA 1453515 (Nat. Arb. Forum Aug. 21, 2012). Respondent’s past cybersquatting activity establishes a pattern of bad faith registration and suggests bad faith in the instant case 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).
Additionally, Respondent’s use of the <proflowera.com> and <sherrysberrys.com> domain names disrupt Complainant’s business because the links displayed on the corresponding websites offer products that compete with those offered by Complainant. Respondent’s effort to divert consumers and thereby disrupt Complainant’s business demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent has also registered and used the <proflowera.com> and <sherrysberrys.com> domain names in bad faith pursuant to Policy ¶4(b)(iv) by using these domains to attract and mislead consumers for Respondent’s own profit. Respondent’s <proflowera.com> and <sherrysberrys.com> websites feature pay-per-click links. As mentioned above, such links promote products that compete with Complainant. It is also highly likely that Respondent receives, or intends to receive, pay-per-click fees from the operation of these websites. Using the domain names in this manner shows Respondent’s intent to create confusion regarding Complainant’s endorsement of or affiliation with Respondent’s websites. Respondent uses this confusion to draw greater traffic to its websites, which will in turn generate a higher click-through rate and higher click-through revenue. These circumstances demonstrate Respondent’s bad faith registration and use of the <proflowera.com> and <sherrysberrys.com> domain names under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent’s inactive holding of the <profliowers.com> and <profloiwers.com> domain names also constitutes bad faith under Policy ¶ 4(a)(iii). Without the benefit of a submission by Respondent, the Panel finds bad faith registration and use of these domains pursuant to Policy ¶ 4(a)(iii), based on the Respondent’s failure to actively use the confusingly similar domain names. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Finally, Respondent’s registration of the at-issue domain names exhibits typosquatting behavior which, in and of itself, is evidence of Respondent’s bad faith. There is more than sufficient similarity between the at-issue domain names and Complainant’s marks to determine that Respondent has engaged in typosquatting. Each at-issue domain name clearly represents a misspelled but similarly sounding version of either Complainant’s PROFLOWERS mark or its SHARI’S BERRIES mark. Such behavior constitutes bad faith registration and use of each of the relevant at-issue domain names pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <profliowers.com>, <profloiwers.com>, <proflowera.com>, and <sherrysberrys.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 27, 2013
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