Woot, Inc. v. PE, Inc.
Claim Number: FA1301001482872
Complainant is Woot, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is PE, Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adultwoot.com>, registered with DNC Holdings, Inc.
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.
Mr Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2013; the National Arbitration Forum received payment on January 30, 2013.
On January 31, 2013, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <adultwoot.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 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@adultwoot.com. Also on January 31, 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.
A timely Response was received and determined to be complete on February 20, 2013.
On March 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist.
On March 12, 2013, Respondent sent an additional e-mail to the Forum. As this e-mail does not comply with Supplemental Rule 7, it will not be taken into consideration by the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Since at least as early as July 13, 2004, Complainant, a pioneer of the one-deal-a-day business model, has offered online retail services under the WOOT mark via the domain name <woot.com>.
2. Complainant also operates various specialty sub-sites under the WOOT mark, including <dealswoot.com>, <homewoot.com>, <kidswoot.com>, <shirtwoot.com>, and <techwoot.com>.
3. Complainant has registered the WOOT mark with the United States Patent and Trademark Office several times (“USPTO”) (e.g., Reg. No. 3,012,788 registered November 8, 2005).
4. The <adultwoot.com> domain name is confusingly similar to Complainant’s WOOT mark, adding only the generic word “adult” and the generic TLD “.com.”
5. Respondent is not commonly known by the <adultwoot.com> domain name.
6. Respondent is not affiliated with Complainant in any way, nor is Respondent licensed by Complainant to use Complainant’s marks.
7. The <adultwoot.com> domain name resolves to a landing page for a “Daily XXX Deals” site featuring adult-oriented DVDs. As of December 29, 2012, Respondent’s site featured a logo and “add to cart” button that were clear imitations of the WOOT logo and “I want one” button found on Complainant’s website. After receiving a takedown request from Complainant, Respondent changed its logo and button colors from green to blue.
8. Respondent uses the <adultwoot.com> domain name to offer daily online deals for DVDs. Complainant’s business centers around offering daily online deals, which include DVD deals.
9. Respondent is using Complainant’s mark to promote adult-oriented material.
10. Respondent registered the <adultwoot.com> domain name with knowledge of Complainant’s rights in the WOOT mark:
a. At the time that Respondent registered the disputed domain name, Complainant’s WOOT mark was already registered and used for a well-known daily deals site.
b. Respondent chose a domain and business name confusingly similar to that of Complainant for Respondent’s own daily deal site.
c. Respondent chose a logo and cart button with the same stylization as Complainant’s logo and cart buttons.
11. By offering a daily deal site under a name that is confusingly similar to Complainant’s WOOT mark, Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s mark and online retail business.
12. Respondent’s promotion of daily deal services under a confusingly similar domain name diverts and disrupts Complainant’s daily deal business.
B. Respondent
1. Respondent’s website does not compete with Complainant’s business, as it does not offer goods or services that compete with the goods or services being sold by Complainant under its WOOT mark: a) Respondent sells only adult-oriented DVD’s, while Complainant is a “megastore” selling everything except adult-oriented DVD’s, and b) Respondent does not use supply channels that compete with those used by Complainant.
2. Respondent’s <adultwoot.com> domain name does not divert Internet users from Complainant’s <woot.com> domain name, as search engine results for the term “woot” do not yield links to Respondent’s site.
3. The webpage title on Respondent’s site does not use the term “woot,” but “adult woot.”
4. Respondent’s <adultwoot.com> domain name is not confusingly similar to Complainant’s WOOT mark.
5. The term “woot” in Respondent’s <adultwoot.com> domain name refers not to the federally registered trademark used to identify a similarly-modeled daily deals site, but to an acronym meaning “want one of those,” or alternatively, refers to “an expression of excitement when someone shouts out ‘woot.’”
6. Respondent’s site may use colors and fonts which may appear similar to the colors and fonts used by Complainant on its <woot.com> site, but Respondent’s colors and fonts are not identical.
7. Respondent presents no threat to Complainant’s business, as the domain name <adultwoot.com> does not divert business away from Complainant.
8. Hundreds of other domain owners operate sites whose domain name includes the term “woot.”
9. Respondent’s business is legal.
10.
Respondent
also refers to Respondent’s personal situation, being a determined single
mother of two, having a life and having bills to pay for, claiming that the
Complainant is seeking
to destroy Respondent’s small, homemade business.
The Complainant is the owner of the U.S. trademark registrations:
No 3,012,788 “WOOT”, filed September 16, 2004, registered November 8, 2005, with the date of first use of July 13, 2004.
No 3,397,587 “WOOT!”, filed April 6, 2007, registered March 18, 2008, with the date of first use of July 13, 2003.
No 4,098,136 “WOOT!”, filed January 31, 2011, registered February 14, 2012, with the date of first use of August 2005.
No 3,868,482 “KIDS.WOOT!”, filed August 18, 2009, registered October 26, 2010, with the date of first use of August 18, 2009.
No 3,800,682 “SELLOUT.WOOT!”, filed March 24, 2009, registered June 8, 2010, with the date of first use of September 13, 2007.
(Exhibit E of the Complaint).
The Respondent registered the disputed domain name <adultwoot.com> on March 7, 2011.
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.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends, and Respondent has not contradicted, that Respondent is not commonly known by the <adultwoot.com> domain name. The Panel notes that the relevant WHOIS information identifies Respondent as “PE, Inc.” Complainant also states that Respondent is not affiliated with Complainant in any way, nor is Respondent licensed by Complainant to use Complainant’s marks. In light of this evidence, the Panel has determined that Respondent is not commonly known by the <adultwoot.com> domain name as envisioned by Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further contends that Respondent’s use of the <adultwoot.com> domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Complainant claims that Respondent’s <adultwoot.com> domain name resolves to a landing page for a “Daily XXX Deals” site, where Respondent offers daily deals for adult-oriented DVD’s. Complainant asserts that through Respondent’s use of the website housed at the <adultwoot.com> domain name, Respondent has attempted to pass itself off as Complainant, noting that Complainant has achieved notoriety by offering daily online deals under its WOOT mark. Complainant also cites the visual similarities between its <woot.com> site and Respondent’s site as evidence that Respondent is attempting to improperly hold itself out as Complainant, especially as of December 29, 2012, when Respondent’s site featured a logo and “add to cart” button that were clear imitations of the WOOT logo.
Respondent, on the other hand, argues that the terms of the <adultwoot.com> domain name are common and descriptive, and that a) the term “adult” describes Respondent’s purveyance of adult-oriented material, and b) whereas “woot” refers not to the federally registered trademark, but to an acronym meaning “want one of those,” or alternatively, refers to “an expression of excitement when someone shouts out ‘woot.’”
The Panel is however not convinced by Respondent’s arguments. Considering the obvious visual similarities between the two sites, the Panel rather finds that Respondent has attempted to pass itself off as Complainant through its use of the <adultwoot.com> domain name. The Panel has determined that such use does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offering [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
In this respect, it is of less importance that Respondent has used the disputed domain name to promote adult-oriented material. However, the Panel notes that both parties sell DVD’s, Respondent’s being “adult-oriented,” whereas Complainant’s are more traditional movies.
Complainant alleges that Respondent’s promotion of daily deal services under the confusingly similar <adultwoot.com> domain name diverts and disrupts Complainant’s daily deal business. As stated above, the Panel notes that while Respondent uses its site to sell adult-oriented DVD’s, Complainant also uses its site to sell DVD’s from time to time, albeit not those of the adult-oriented variety. The Panel considers Respondent to operate a competing website on the basis of this overlap. Further, Respondent’s registration and use of the <adultwoot.com> domain name for such overlapping purpose illustrates bad faith disruption of Complainant’s business within the meaning of Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
By offering a daily deal site under a name that is confusingly similar to Complainant’s - registered and therewith distinctive - WOOT mark, the Panel finds that Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s mark and online retail business, showing bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Given the visual and functional similarities between Respondent’s site and Complainant’s site, as well as Respondent’s registration of a confusingly similar domain name, the Panel finds that Respondent has sought to create confusion by passing itself off as Complainant. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Complainant alleges that Respondent registered the <adultwoot.com> domain name with knowledge of Complainant’s rights in the WOOT mark. Complainant notes that at the time Respondent registered the disputed domain name, Complainant’s WOOT mark was already registered and used for a well-known daily deals site. The Panel opines that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
Complainant asserts that Respondent then chose a domain and “business name” confusingly similar to that of Complainant for Respondent’s own daily deal site, further asserting that Respondent also chose a logo and cart button with the same stylization as Complainant’s logo and cart buttons. Respondent on the other hand, contends that the <adultwoot.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s WOOT mark, and that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith.
Again, looking at the Respondent’s actual use of the domain name, the Panel finds that Complainant has presented sufficient evidence to show that Respondent had, in fact, actual knowledge of Complainant's rights in the mark prior to registering the <adultwoot.com> domain name, and finds that such actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adultwoot.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 15, 2013
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