Euromarket Designs, Inc. DBA Crate & Barrel v. PRIVACY PROTECT C/O CRATEANDBARREEL.COM, C/O CRATEDANDBARREL.COM
Claim Number: FA1301001480566
Complainant is Euromarket Designs, Inc. d/b/a Crate & Barrel (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PRIVACY PROTECT C/O CRATEANDBARREEL.COM, C/O CRATEDANDBARREL.COM (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <crateandbarreel.com> and <cratedandbarrel.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.Com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2013; the National Arbitration Forum received payment on January 16, 2013.
On January 21, 2013, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <crateandbarreel.com> and <cratedandbarrel.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.Com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd db/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 January 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@crateandbarreel.com, postmaster@cratedandbarrel.com. Also on January 29, 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 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
B. [i.] CRATE AND BARREL
retail store and mail order services supplying glassware, tableware, plates,
saucers, cups, serving knives, forks, spoons, glasses, serving trays, vases,
bowls, imported gift items, electric appliances, furniture, rugs, bed linens,
bath linens, kitchen towels, potholders, bake ware, cookware, baking/cooking
gadgets, plastic/lucite/polyurethane items, baskets and basket ware, ceramics,
Christmas ornaments, tablecloths, placemats, napkins, wrapping papers, cards,
ties, desk accessories, picnic accessories, barbeques and barbeque accessories,
gardening tools and accessories, beach chairs, umbrellas, tables, wooden items,
wine racks and storage containers.(U.S Reg. 1,469,515)
[iii] CRATE & BARREL furniture. (U.S. Reg. 2,205,822)
[iii.] CRATE & BARREL retail store and mail order services supplying
furniture. (U.S. Reg. 2,205,823)
FACTUAL
AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Complainant Euromarket Designs, Inc. doing business as Crate & Barrel,
operates a chain of housewares and furniture stores in the United States. Crate
& Barrel offers living room, dining, kitchen, bedroom, home office,
entryway, outdoor, and kids' furniture, as well as, furniture care products;
dining and entertaining products.
Complainant’s famous CRATE & BARREL and CRATE AND BARREL trademarks serve as the basis for this Complaint. Since 1962, and long before the conduct of Respondent alleged herein, Complainant has continuously used the name CRATE & BARREL and CRATE AND BARREL as a trademark to identify its world renowned housewares, furniture and other products, which are now offered on its website located at www.crateandbarrel.com, through its catalogues, and in over 100 retail stores. As a result of these efforts, and by virtue of the resulting popularity of Complainant’s products, Complainant’s products sold under the CRATE & BARREL and CRATE AND BARREL marks have generated large amounts of revenue, and the CRATE & BARREL and CRATE AND BARREL name and mark have become known to consumers worldwide as symbolizing Complainant as a source of extremely high-quality products.
As a result of its marketing investment and effort, Complainant has built up substantial goodwill in its CRATE & BARREL and CRATE AND BARREL marks among consumers both in the United States and throughout the world, and the CRATE & BARREL and CRATE AND BARREL marks have become one of Complainant’s most valuable assets.
As mentioned above, to further protect its marks and promote its products and services, Complainant has registered the “generic” top-level domain name (or gTLD) comprised of its CRATE AND BARREL mark, www.crateandbarrel.com.
As indicated above, Euromarket Designs, Inc., dba Crate & Barrel, owns the Marks cited in Section 4(c) for which it has obtained federal trademark registrations. The federal mark registrations have not been abandoned, cancelled or revoked.
Based on its federal trademark registrations and extensive use, Euromarket Designs, Inc., dba Crate & Barrel, owns the exclusive right to use the Marks in connection with retail store and mail order services for housewares and furniture.
[a.] The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.
i. By virtue of its federal trademark and/or service mark registration(s), Complainant is the owner of the Complainant's Mark(s). See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)").
ii. When comparing the Disputed Domain Name(s) to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name(s) and the Complainant's Mark(s). See Rollerblade, Inc. v. McCrady, WIPO Case No.D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.")
iii.
The
Disputed Domain Name(s) (is/are) confusingly similar to Complainant's Mark(s)
because (it/they) differ(s) by only a single character from Complainant's
Mark(s), or because it differs by only the juxtaposition of two characters when
compared to Complainant's Mark(s). For clarification, the Disputed Domain
Name(s) contain(s) either:
[i.] the addition of one extra character, or...
[ii.] the removal of one character, or...
[iii.] one character which is incorrect, or...
[iv.] two juxtaposed characters
as compared to Complainant's Mark(s).
iv. The Disputed Domain Name(s) (is/are), simply put, a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (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); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks).
[b.] Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:
i. Respondent has not been commonly known by the Disputed Domain Name(s). See Policy, ¶4(c)(ii). See WHOIS record for the Disputed Domain Name(s). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202. Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
ii. Complainant has not given Respondent permission to use Complainant's Mark in a domain name.
iii. A "Cease and Desist" letter was sent to the Respondent. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
iv. Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. Rave Club Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
v. Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. Rave Club Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
vi. Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the 24hrsfitness.comgt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).
vii. The earliest date on which Respondent registered the Disputed Domain Name(s) was October 7, 2005, which is significantly after Complainant's first use in commerce, December 7, 1962, as specified in their relevant registration with the USPTO.
viii. The earliest date on which Respondent registered the Disputed Domain Name(s) was October 7, 2005, which is significantly after Complainant's registration of their relevant Marks with the USPTO on December 15, 1987.
ix. The earliest date on which Respondent registered the Disputed Domain Name(s) was October 7, 2005, which is significantly after Complainant's registration of CRATEANDBARREL.COM on March 23, 1998.
[c.] The Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:
i. Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. 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'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").
ii. Respondent's bad faith is further shown by the Respondent using the Disputed Domain Name(s) website in connection with generating revenue as a "click through" website by using the Complainant's registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain. In WIPO Decision D2008-1470, AIDA Cruises German Branch of Societa di CrociereMercurioS.r.l., v. Caribbean Online International Ltd. / BelgiumDomains "the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies' websites related to cruises and travels, in the form of a "clickthrough" website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a "click-through" website has to be considered as an evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)"
iii. To further stress the above, Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith. The Respondent has registered and used the Disputed Domain Name(s) in bad faith pursuant to Policy ¶4(b)(iv) by using the Disputed Domain Name(s) to attract and mislead consumers for its own profit. 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).”); see also 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). See also Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy ¶4(b)(iv).
iv.In addition to the above, the Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The Panel should find that this effort to divert consumers and disrupt Complainant’s business is evidence of bad faith registration and use under Policy ¶4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶4(b)(iii)).
v. Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Name(s) to display Complainant's Mark(s) spelled correctly (even though the domainname(s) is a misspelled version of the same mark(s)). This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s).
B. Respondent
Respondent failed to submit a Response in this proceeding.
iv. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
v. Respondent has no rights or legitimate interests in respect of the domain name; and
vi. the domain name has been registered and is being used 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 has provided evidence of its registration of the CRATE AND BARREL mark with the United States Patent & trademark Office (“USPTO”) (Reg. No. 1,469,515 registered December 15, 1987) in support of its claim to have rights in the mark. Past panels have found registration of a mark with the USPTO sufficiently demonstrates rights pursuant to Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). This Panel agrees and finds Complainant has adequately established rights in the CRATE AND BARREL mark for the purposes of Policy ¶4(a)(i) even though Respondent operates in a different country. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Policy ¶4(a)(i) requires Complainant to have rights somewhere; not that Complainant has better rights than Respondent.
Complainant claims the <crateandbarreel.com> and <cratedandbarrel.com> domain names are confusingly similar to its CRATE AND BARREL mark within the meaning of Policy ¶4(a)(i). Each disputed domain adds a single letter to Complainant’s mark, while eliminating the spaces between words, and affixing the generic top-level domain (“gTLD”) “.com.” The <crateandbarreel.com> domain name adds an extra “e” to Complainant’s mark, and the <cratedandbarrel.com> domain name adds a “d” to Complainant’s mark. The addition of a single imbedded letter to a mark does not adequately distinguish the disputed domain names in this case. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). The elimination of spaces between words nor adding a gTLD affects the issue of confusing similarity under the Policy. 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.”). The Panel finds Respondent’s <crateandbarreel.com> and <cratedandbarrel.com> domain names are confusingly similar to Complainant’s CRATE AND BARREL mark within the meaning of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the <crateandbarreel.com> or <cratedandbarrel.com> domain name pursuant to Policy ¶4(c)(ii). Complainant has not given Respondent permission to use the CRATE AND BARREL mark. Respondent is not sponsored by or legitimately associated with Complainant in any way. Complainant notes Respondent has failed to meet its burden in this proceeding because Respondent has failed to submit a Response addressing Complainant’s allegations. The WHOIS information on record for each disputed domain lists the domain registrant as “PRIVACY PROTECT C/O CRATEANDBARREEL.COM, C/O CRATEDANDBARREL.COM.” In light of these findings, and absent any evidence to the contrary, the Panel finds Respondent is not commonly known by the <crateandbarreel.com> or <cratedandbarrel.com> domain name pursuant to Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Complainant claims Respondent’s use of the <crateandbarreel.com> and <cratedandbarrel.com> domain names to resolve to pages featuring links to products and services provided by third-parties, some of which directly compete with Complainant and Respondent’s use of the disputed domain names does not qualify as 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). Respondent’s use of confusingly similar domain names to redirect Internet users to sites displaying competing links illustrates Respondent’s lack of rights or legitimate interests in the disputed domain names. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent registered the disputed domain names using a WHOIS privacy service. This Panel has repeatedly held such a registration prevents a respondent from acquiring any rights in a commercial context for the obvious reasons.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s use of the <crateandbarreel.com> and <cratedandbarrel.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, disrupts Complainant’s business in bad faith pursuant to Policy ¶4(b)(iii). Complainant believes Respondent’s websites disrupt Complainant’s business with advertising links which divert potential customers away from Complainant to third-party websites. This Panel agrees and finds Respondent has registered and uses the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent has registered and used the <crateandbarreel.com> and <cratedandbarrel.com> domain names in bad faith pursuant to Policy ¶4(b)(iv) by using the domains to attract and mislead consumers for Respondent’s own profit. Respondent is clearly attempting to generate a commercial gain (through the collection of click-through revenues, either directly or indirectly) from the confusion it creates (by using domain names which are confusingly similar to Complainant’s mark). Accordingly, Panel finds Respondent’s registration and use of the disputed domain names demonstrate Respondent is using the disputed domain names for commercial gain, evidencing bad faith 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).”).
Complainant claims Respondent is typosquatting and ipso facto this adequately proves bad faith registration and use. This Panel refuses to go that far. The UDRP does not go that far, although it could have. The UDRP sets forth what must be proven, and Complainant has adequately proven this element without requiring this Panel to adopt Complainant’s typosquatting argument.
Finally, Respondent has registered the disputed domain names using a privacy WHOIS service. This Panel has repeatedly held such a registration raises the rebuttable presumption of bad faith registration and use in a commercial context. Respondent has done nothing to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <crateandbarreel.com> and <cratedandbarrel.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 7, 2013
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