Shoedazzle.com, Inc. v. cao rui
Claim Number: FA1301001478946
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is cao rui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shordazzle.com> and <shoedazzlr.com>, registered with Dynadot, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2013; the National Arbitration Forum received payment on January 7, 2013.
On January 9, 2013, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <shordazzle.com> and <shoedazzlr.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 January 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 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@shordazzle.com, postmaster@shoedazzlr.com. Also on January 9, 2013, 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 February 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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’s Contentions
B. Respondent
Respondent’s Contentions
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its SHOEDAZZLE mark.
2. Respondent’s <shordazzle> and <shoedazzlr.com> domain names are confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain names.
4. Respondent registered and used the domain names in bad faith.
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 states that it owns the USPTO trademark registrations to the SHOEDAZZLE mark. See Reg. No. 3,735,740 registered on Jan. 12, 2010. Complainant avers that it is irrelevant under the Policy whether Complainant registered the mark in the country where Respondent operates or resides. The Panel notes that while Complainant provides a copy of a trademark search from the USPTO’s website, it does not provide a copy of the certificate of registration. The Panel nonetheless agrees that USPTO registration of a mark satisfies a showing of rights in that mark under Policy ¶ 4(a)(i), regardless of where Respondent resides. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <shordazzle.com> and <shoedazzlr.com> domain names are confusingly similar to the SHOEDAZZLE mark. Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” is not relevant to this analysis. Complainant further notes that both of the disputed domain names differ by only a single character from the SHOEDAZZLE mark: both domain names simply replace an instance of the letter “e” with the letter “r.” The Panel agrees that both domain names merely replace a letter “e” with a letter “r,” and the Panel concludes that this alteration is ineffective in thwarting a confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also agrees that the addition of the gTLD “.com” is irrelevant under the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). For these reasons the Panel finds that both the <shordazzle.com> and <shoedazzlr.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has not been commonly known by the disputed domain names. Complainant notes that the WHOIS information suggests Respondent is not known by the disputed domain name. Complainant asserts that it has not sponsored or affiliated itself with Respondent in any way. The Panel notes that the WHOIS information lists one “cao rui” as the registrant of the domain names. Previous panels have agreed that when neither the WHOIS information nor any other evidence in the record ties a respondent to a domain name, that respondent is not commonly known by the domain name. 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). The Panel agrees and finds that the Respondent is not commonly known by the <shordazzle.com> and <shoedazzlr.com> domain names under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent is not using the <shordazzle.com> and <shoedazzlr.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant bases this claim upon the reasoning that Respondent is using the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that both of the disputed domain names resolve to websites dominated by lists of hyperlinks to various competing and related products, including hyperlinks to Complainant’s own website. See Complainant’s Ex. H. Previous panels have found that the use of a disputed domain name to advertise competing or unrelated products shows neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). This Panel agrees and find that Respondent has made neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.
Complainant next contends that the <shordazzle.com> and <shoedazzlr.com> domain names are classic examples of typosquatting. Complainant alleges that both domain names take the SHOEDAZZLE mark and alter it so as to take advantage of common typing errors. Complainant claims that because the letter “r” is close to the letter “e” on the conventional keyboard, it is likely these disputed domain names will be reached by Internet users who misspell the SHOEDAZZLE mark. The Panel finds that under Policy ¶ 4(a)(ii) that Respondent was engaged in typosquatting behavior and therefore lacks rights and legitimate interests in the disputed 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).”)).
Complainant argues that Respondent advertised click-through links and promoted products that compete with those sold under Complainant’s SHOEDAZZLE mark. Complainant alleges that these links divert Internet users away from Complainant and therefore disrupt Complainant’s business. The Panel notes that both the <shordazzle.com> and <shoedazzlr.com> domain names resolve to websites featuring competing hyperlinks. See Complainant’s Ex. I. The Panel agrees that it is bad faith use and registration, under Policy ¶ 4(b)(iii), for Respondent to compete with Complainant by way of promoting hyperlinks to Respondent’s competitors on its disputed domain names. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further alleges that Respondent sought to attract commercial gains in the form of click-through revenues. Complainant contends that Respondent sought to take advantage of Complainant’s marks and confuse Internet users into visiting competing hyperlinks under the belief that the hyperlinks were associated with Complainant. The Panel notes that the <shordazzle.com> and <shoedazzlr.com> domain names resolve to websites dominated by both related and unrelated hyperlinks. See Complainant’s Ex. I. Previous panels have determined that a respondent engages in bad faith use and registration of a disputed domain name when the respondent requests Internet users to go through competing or unrelated hyperlinks in order to secure commercial gains for the respondent. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel agrees and finds that Respondent has shown Policy ¶ 4(b)(iv) bad faith use and registration of the <shordazzle.com> and <shoedazzlr.com> domain names.
Complainant finally contends that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that that the major change made in the disputed domain names is the replacement of a letter “e” with the letter “r.” The Panel finds that Respondent’s typosquatting behavior is indicative of bad faith use and registration of the <shordazzle.com> and <shoedazzlr.com> domain names. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shordazzle.com> and <shoedazzlr.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 20, 2013
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