PersonalizationMall.com, Inc. v. PERSONALIZATIONSMALL.COM / Privacy Protect
Claim Number: FA1212001476551
Complainant is PersonalizationMall.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Personalizationsmall.com / Privacy Protect (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <personalizationsmall.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2012; the National Arbitration Forum received payment on December 18, 2012.
On December 25, 2012, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <personalizationsmall.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.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 December 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 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@personalizationsmall.com. Also on December 27, 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 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <personalizationsmall.com> domain name, the domain name at issue, is confusingly similar to Complainant’s PERSONALIZATION MALL mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its PERSONALIZATION MALL mark in connection with marketing electronic retailing services containing a customer’s name, initials or other identifier and has done so since 1999. Complainant has registered the PERSONALIZATION MALL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,561,853 registered April 16, 2002). Respondent registered the <personalizationsmall.com> domain name on April 29, 2010. The <personalizationsmall.com> domain name is confusingly similar to Complainant’s PERSONALIZATION MALL mark because it differs by only a minor misspelling and the generic top-level domain (“gTLD”). Respondent has not been commonly known by the <personalizationsmall.com> domain name and is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant's mark in a domain name.
Respondent is using the disputed domain name 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 these linked websites.
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.”).
Complainant’s registration of the PERSONALIZATION MALL mark with the USPTO (Reg. No. 2,561,853 registered April 16, 2002) establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). Complainant’s registration with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent operates 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 <personalizationsmall.com> domain name is confusingly similar to its PERSONALIZATION MALL mark under Policy ¶ 4(a)(i). The disputed domain name includes Complainant’s mark, while deleting the space between the words in the mark, adding the letter “s” between the words in the mark, and affixing the generic top-level domain (“gTLD”) “.com.” The affixation of a gTLD and the elimination of spaces between words in a mark are not relevant when considering confusing similarity pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Previous panels have also held that the addition of a single letter to a complainant’s mark does not distinguish a disputed domain name from the mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, Respondent’s <personalizationsmall.com> domain name is confusingly similar to Complainant’s PERSONALIZATION MALL mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the <personalizationsmall.com> domain name within the meaning of Policy ¶ 4(c)(ii) and Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant's mark in a domain name. The WHOIS information on file for the disputed domain name identifies the domain name registrant as “PERSONALIZATIONSMALL.COM / Privacy Protect.” While this name may appear similar to the disputed domain name, Respondent has failed to satisfy its burden of providing a Response in this proceeding, leaving no further evidence in the record to suggest that Respondent is in fact commonly known by the <personalizationsmall.com> domain name or was so known prior to the domain name’s registration. In the absence of any affirmative evidence indicating that Respondent is commonly known by the <personalizationsmall.com> domain name pursuant to Policy ¶ 4(c)(ii), the Panel concludes that Respondent is not so known. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent’s use of the <personalizationsmall.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business, cannot constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Past panels have refused to find rights or legitimate interests where a disputed domain name resolves to a website featuring competing hyperlinks. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Accordingly, Respondent’s use of the <personalizationsmall.com> domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s website contains “pay-per-click” links to Complainant’s competitors, which disrupts Complainant’s business. Respondent’s registration of a confusingly similar domain name increases the likelihood that some Internet users will mistakenly visit Respondent’s site when they had intended to visit Complainant’s, only to then be exposed to links advertising products and services that compete with those provided by Complainant. The Panel infers that some amount of visitors will access these links and ultimately purchase products and services from Complainant’s competitors, despite their original intent to visit a site dedicated to Complainant’s business. This type of operation illustrative of disruption, which indicates bad faith registration and use within the meaning of 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)).
Finally, Respondent’s registration of the <personalizationsmall.com> domain name constitutes typosquatting, which represents bad faith registration and use, in and of itself. Respondent’s domain name merely adds an “s” to Complainant’s mark, and this registration of the disputed domain constitutes typosquatting activity. The Panel finds that Respondent’s typosquatting activity exhibits bad faith registration and use of the <personalizationsmall.com> domain name under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <personalizationsmall.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 2, 2013
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