Sittercity Incorporated v. uPort Inc. / uPort Inc / J Clinton
Claim Number: FA1302001484767
Complainant is Sittercity Incorporated (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is uPort Inc. / uPort Inc / J Clinton (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <isttercity.com>, <sittecity.com>, <sitterciyt.com>, and <sittericty.com> registered with INTERNET.BS CORP., and <sittrcity.com>, <sittrecity.com>, <sitterity.com>, <sitterciy.com>, and <ittercity.com> registered with WILD WEST DOMAINS, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2013; the National Arbitration Forum received payment on February 12, 2013.
On February 12, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <sittrcity.com>, <sittrecity.com>, <sitterity.com>, <sitterciy.com>, and <ittercity.com> domain names are registered with WILD WEST DOMAINS, LLC, and that Respondent is the current registrant of the names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 February 13, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <isttercity.com>, <sittecity.com>, <sitterciyt.com>, and <sittericty.com> domain names are registered with INTERNET.BS CORP., and that Respondent is the current registrant of the names. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 February 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@isttercity.com, postmaster@ittercity.com, postmaster@sittecity.com, postmaster@sitterciy.com, postmaster@sitterciyt.com, postmaster@sittericty.com, postmaster@sitterity.com, postmaster@sittrcity.com, and postmaster@sittrecity.com. Also on February 21, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Complainant owns federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SITTERCITY (Reg. No. 3,029,158 registered Dec. 13, 2005), the SITTERCITY & Design (Reg. No. 3,029,159 registered Dec. 13, 2005), and the SITTERCITY.COM (Reg. No. 3,050,204 registered Jan. 24, 2006) marks.
ii. Respondent registered the <isttercity.com>, <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterciyt.com>, <sittericty.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names well after Complainant’s registration of its marks.
iii. The addition of the generic top-level domain (“gTLD”) is irrelevant to the Policy ¶ 4(a)(i) confusing similarity comparison.
iv. The disputed domain names are confusingly similar to Complainant’s mark, differing only by the deletion of a single letter or the transposal of two letters.
i. Respondent is not commonly known by the disputed domain names, based on the WHOIS information and the fact that Complainant did not authorize Respondent to use its mark.
ii. Respondent is using some of the disputed domain names to operate inactive websites.
i. Respondent is using some of the disputed domain names to resolve to an inactive website.
ii. Respondent is using some of the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s Reward Program, which violates the Reward Program agreement which governs Respondent’s relationship as a participant in the program. Respondent is attempting to opportunistically benefit from its registration and use of the disputed domain names at Complainant’s expense.
iii. Respondent is typosquatting, which is itself evidence of bad faith.
iv. Respondent has previously registered other domain names which have been involuntarily transferred through UDRP proceedings. This represents a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
i. Respondent registered the <sittrcity.com>, <sitterity.com>, <sitterciy.com>, and <ittercity.com> domain names on October 25, 2006.
ii. Respondent registered the <sittrecity.com> domain name on August 12, 2007.
Respondent registered the <sittericty.com>, <sitterciyt.com>, <sittecity.com>, and <isttercity.com> domain names on March 25, 2007.
1. Respondent’s <isttercity.com>, <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterciyt.com>, <sittericty.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names are confusingly similar to Complainant’s SITTERCITY mark.
2. Respondent does not have any rights or legitimate interests in the <isttercity.com>, <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterciyt.com>, <sittericty.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names.
3. Respondent registered or used the <isttercity.com>, <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterciyt.com>, <sittericty.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names <tartget.com> 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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that although some of the disputed domain names are registered to uPort Inc. and others are registered to J Clinton, both use the same administrative e-mail address (mail@uport.co.uk). See Complainant Exhibit I. Complainant also notes that the DNS <ns-canada.topdns.com> is the same for eight of the nine disputed domain names. Complainant further argues that all disputed domain names are typographical errors of Complainant’s <sittercity.com> website, and that four of the disputed domain names (including three registered to J Clinton and one registered to uPort Inc.) use the same traffic forwarding mechanism provided by <BuzzReferral.com>. Complainant argues that collectively, these similarities indicate that the disputed domain names are controlled by a single entity.
Complainant claims rights in the SITTERCITY service mark based on its registration of the SITTERCITY (Reg. No. 3,029,158 registered Dec. 13, 2005), the SITTERCITY & Design (Reg. No. 3,029,159 registered Dec. 13, 2005), and the SITTERCITY.COM (Reg. No. 3,050,204 registered Jan. 24, 2006) marks with the USPTO, for the purposes of providing users with child care and related services. See Complainant Exhibit E. The Panel notes that previous panels have found that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). 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.”). Further, the Panel notes that past panels have found that a complainant need not register its mark in the country of a respondent to demonstrate rights in the mark. See 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). Therefore, the Panel finds that Complainant has established rights under ¶ 4(a)i) in the SITTERCITY, SITTERCITY & Design, and SITTERCITY.COM marks.
Complainant claims that the <isttercity.com>, <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterciyt.com>, <sittericty.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names are confusingly similar to its SITTERCITY mark. Although Complainant has in fact registered the entire SITTERCITY.COM trademark, the Panel notes that the addition of a gTLD such as “.com” to Complainant’s SITTERCITY mark is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison. 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). Complainant notes that the disputed domain names are nearly identical to Complainant’s mark, with only a slight typographical error in each. In the case of the <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterity.com>, and <sittrcity.com> domain names, the Panel notes that a single letter is missing. In the case of the <isttercity.com>, <sitterciyt.com>, <sittericty.com>, and <sittrecity.com> domain names, the Panel notes that two letters are merely transposed. The Panel notes that past panels have found such slight misspellings insufficient to distinguish a domain name in a confusing similarity comparison. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also 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). Therefore, the Panel here holds that the <isttercity.com>, <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterciyt.com>, <sittericty.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names are confusingly similar to Complainant’s SITTERCITY mark for the purposes of Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has not been commonly known by the disputed domain names and has therefore not demonstrated rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). Complainant notes that the WHOIS information identifies either “uPort, Inc.” or “J Clinton” as the registrant of the disputed domain names. Complainant also notes that it is not affiliated with Respondent and has not authorized Respondent to use the SITTERCITY mark. The Panel notes that past panels have found nominally unsupportive WHOIS information and a lack of authorization to be strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Complainant notes that Respondent is using several of the disputed domain names (namely <ittercity.com>, <sitterciy.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com>) to operate inactive websites, and that this does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). The Panel notes that past panels have found that the non-use of a disputed domain name does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Accordingly, the Panel finds that Respondent has not established rights or legitimate interests in the <ittercity.com>, <sitterciy.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names via Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant argues that the remaining disputed domain names redirect to Complainant’s own website, but do so through Complainant’s referral Rewards Program, thus allowing Respondent to profit when Internet users incorrectly input Complainant’s web address. See Complainant Exhibit H. Because past panels have found that the use of a disputed domain name to profit through affiliate fees is not a showing of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), the Panel here finds that Respondent has not established rights or legitimate interests in the <isttercity.com>, <sittecity.com>, <sitterciyt.com>, and <sittericty.com> domain names. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
Complainant argues that Respondent has previously registered other domain names which have been involuntarily transferred through UDRP proceedings, which demonstrates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Skinit, Inc. v. uPort Inc, FA 1467702 (Nat. Arb. Forum Dec. 9, 2012); see also Kaspersky Lab Zao v. uPort Inc., FA 1328687 (Nat. Arb. Forum July 12, 2010). In light of these past UDRP decisions, in which Respondent was determined to have registered other domain names in bad faith, the Panel finds that Respondent has established a pattern of bad faith registration and use, suggesting that the <isttercity.com>, <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterciyt.com>, <sittericty.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names were registered and are being used in bad faith pursuant to Policy ¶ 4(b)(ii) as well.
Complainant argues that Respondent is using the <isttercity.com>, <sittecity.com>, <sitterciyt.com>, and <sittericty.com> domain names to redirect Internet users to Complainant’s own website through Complainant’s Reward Program, through which Respondent receives rewards. See Complainant Exhibit H. The Panel notes that past panels have found similar abuses of affiliate programs to be evidence of bad faith under Policy ¶ 4(b)(iv). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program). Therefore, the Panel finds that Respondent is intentionally attracting users to the disputed domain names for its commercial gain, by creating a likelihood of confusion with Complainant’s SITTERCITY mark, and that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that the <ittercity.com>, <sitterciy.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names do not resolve to any active websites, and that this shows bad faith. See Complainant Exhibit H. The Panel notes that past panels have found such inactivity to demonstrate bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel therefore finds that Respondent registered and is using the <ittercity.com>, <sitterciy.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant also describes Respondent’s behavior as typosquatting, a practice that involves preying on the typing errors of Internet users, and claims that this is, in itself, evidence of bad faith. The Panel notes that past panels have found typosquatting to be evidence of bad faith registration and use. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); therefore, the Panel finds that Respondent is engaging in typosquatting, it also finds that Respondent registered and is using the disputed domain names in bad faith, 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 <isttercity.com>, <ittercity.com>, <sittecity.com>, <sitterciy.com>, <sitterciyt.com>, <sittericty.com>, <sitterity.com>, <sittrcity.com>, and <sittrecity.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 12, 2013
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