Shoedazzle.com, Inc. v. Zhou Xiangsheng
Claim Number: FA1301001479059
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Zhou Xiangsheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <shiedazzle.com>, registered with DYNADOT, LLC.
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 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 <shiedazzle.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. 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 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 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@shiedazzle.com. Also on January 11, 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has registered the SHOEDAZZLE trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,736,740 registered January 12, 2010), and has continually used the mark since 2008.
Respondent registered the <shiedazzle.com> domain name on May 14, 2011.
Respondent’s <shiedazzle.com> domain name is confusingly similar to Complainant’s SHOEDAZZLE mark. Disregarding the generic top-level domain “.com,” which is irrelevant for purposes of a confusing similarity comparison, the disputed domain name differs from the SHOEDAZZLE mark by a single letter.
The disputed domain name is being used for typosquatting, which means the domain name and the mark must be confusingly similar by design.
Respondent has no rights or legitimate interests in respect to the disputed domain name.
Complainant is neither given permission nor been affiliated with Respondent.
Respondent has failed to respond to a cease and desist letter, and to attempts to resolve the dispute outside of this proceeding.
Respondent has not been commonly known by the disputed domain name, based on the WHOIS information.
Respondent is using the disputed domain name to redirect users to a website featuring links to third-party websites, some of which compete with Complainant’s business.
The disputed domain name has been registered and used in bad faith.
Respondent’s typosquatting is itself evidence of bad faith.
Respondent holds registrations on other domain names that appear to be straightforward examples of typosquatting.
Using the domain for a “click-through” website shows further bad faith.The disputed domain name is used to attract and mislead consumers for profit, by tricking them into entering a confusingly similar domain name and clicking on the links therein. This is evidence of bad faith under Policy ¶ 4(b)(iv).
By linking to products that compete with Complainant, Respondent is showing bad faith under Policy ¶ 4(b)(iii).
Respondent holds registrations on other domain names that appear to be straightforward examples of typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has a trademark registration with the USPTO for its SHOEDAZZLE mark.
Complainant acquired rights in its SHOEDAZZLE mark prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark in any capacity.
The at-issue domain name addresses a website that features links to third-party websites, some of which compete with Complainant’s business.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the SHOEDAZZLE mark with the USPTO confers rights in such mark upon Complainant pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). It is immaterial for the purposes of establishing rights in a mark under Policy ¶ 4(a)(i) that Respondent may reside or operate outside the jurisdiction in which Complainant’s registered its trademark. See 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).
Respondent’s <shiedazzle.com > domain name is confusingly similar to Complainant’s SHOEDAZZLE mark under Policy ¶ 4(a)(i). Complainant’s mark is contained in the at-issue domain as a simple misspelling or typo that an Internet user might make when typing Complainant’s mark. In forming the second level domain name, “shiedazzle,” Respondent merely changes the letter “o” in Complainant’s mark to an “i”. Furthermore, it is well settled that the top-level domain name, here “.com,” does nothing to distinguish an at-issue domain name and from an otherwise similar trademark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); 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.”).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. 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 the at‑issue domain name.
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 showing acts conclusively.
WHOIS information identifies “Zhou Xiangsheng” as the registrant of the at-issue domain name and there is no evidence before the Panel which suggests that Respondent is nevertheless commonly known by the <shiedazzle.com> domain name despite the contrary WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name 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).
Furthermore, Respondent is using the disputed domain name to direct Internet users to a website featuring third party hyperlinks, including links to websites that compete with Complainant’s business, such as “Zappos” and “JustFab.” Using the domain name in this manner is constitutes 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 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”).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present as well as non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by attempting to disrupt Complainant’s business by posting competing hyperlinks on the <shiedazzle.com> website. 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).”).
The at-issue domain name is also being used to attract and mislead consumers for profit. Using the confusingly similar <shiedazzle.com> domain name to address Respondent’s website creates a situation designed to take advantage of an Internet user’s inadvertent typographical errors when seeking Complainant. The user’s inadvertence takes the user to Respondent’s <shiedazzle.com> website where “pay-per-click” links are presented. Respondent’s scheme is clearly intended to result in “click-through” revenue for Respondent. These circumstances demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, Respondent is typosquatting. Such behavior is, in and of itself, evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shiedazzle.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 7, 2013
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