Shoedazzle.com, Inc. v. Qijin Yang
Claim Number: FA1302001485149
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Qijin Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoedzzle.com> and <soedazzle.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2013; the National Arbitration Forum received payment on February 13, 2013.
On February 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <shoedzzle.com> and <soedazzle.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@shoedzzle.com, postmaster@soedazzle.com. Also on February 20, 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 March 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1.Policy ¶ 4(a)(i): Complainant’s Rights / Confusingly Similar Domain Names
2.Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
3.Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates an online club for shopping for shoes, handbags, jewelry and related goods and services.
2. Complainant is the registered owner of the USPTO trademark registration for the SHOEDAZZLE mark, Reg. No. 3,736,740 registered on January 12, 2010. and used in conjunction with the sale of shoes and footwear.
3. The Respondent registered the <shoedzzle.com> and <soedazzle.com> domain names on June 1, 2010.
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 first question is whether Complainant has rights in a trademark or a service mark.Complainant contends that it holds the USPTO trademark registration for the SHOEDAZZLE mark, used in conjunction with the sale of shoes and footwear. See Reg. No. 3,736,740 registered on January 12, 2010. The Panel agrees that USPTO registration of a mark serves as a satisfactory showing of Complainant’s rights in the SHOEDAZZLE mark, even if Respondent dwells in another country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second question is whether the disputed domain names are identical or confusingly similar to the SHOEDAZZLE mark. Complainant argues that Respondent’s <shoedzzle.com> and <soedazzle.com> domain names are confusingly similar to the SHOEDAZZLE mark. Complainant asserts that both of the domain names feature the irrelevant addition of the gTLD “.com.” Complainant further notes that the <shoedzzle.com> domain name takes the mark and removes the letter “a,” whereas the <soedazzle.com> domain names takes the mark and removes the letter “h.” The Panel agrees that the addition of gTLDs to the domain names and the mere alteration of a single-character in the SHOEDAZZLE mark in forming the substance of each domain name demonstrates confusing similarity between the two domain names and the SHOEDAZZLE mark. 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); 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).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SHOEDAZZLE trademark and to use it in its domain names, making only minor spelling alterations to each domain name, thus enhancing the confusing similarity between the domain names and the trademark;
(b) Respondent has then decided to use the domain names to resolve to a website with generic links to websites some of which sell goods and services in competition with those of Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent has not been commonly known by the disputed domain names. Complainant asserts that the WHOIS record suggests that Respondent is known as an entity that is not referred to as either of the <shoedzzle.com> and <soedazzle.com> domain names. Complainant avows that it has not otherwise sponsored, permitted, or affiliated itself with, Respondent’s decision to use the SHOEDAZZLE mark in domain names. The Panel notes that the WHOIS information lists “Qijin Yang” as the registrant of both domain names. The Panel agrees that based upon all the evidence there is nothing at all to show that Respondent is commonly known by the <shoedzzle.com> and <soedazzle.com> domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute);
(e) Complainant also contends that Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party and competing websites, and that such a use is neither a bona fide offering, or legitimate noncommercial or fair use under the Policy. Complainant asserts that Respondent is presumably accruing pay-per-click advertising revenue through these tactics. The Panel notes that both of the disputed domain names resolve to a generic webpage dominated by click-through advertisements to a variety of Complainant’s competitors. See Complainant’s Ex. H. The Panel agrees that Policy ¶ 4(c)(i) does not consider the solicitation of hyperlinks to be within its meaning of a ‘bona fide offering of goods or services,’ and that a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use does not arise through Respondent’s endeavor to acquire advertising revenues through the 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);
(f) Complainant further asserts that Respondent is typosquatting both of the domain names off the SHOEDAZZLE mark, which is in itself evidence that Respondent has no true rights or legitimate interests in either domain name. The Panel agrees the slight variations made to the SHOEDAZZLE mark in forming both domain names illustrates that Respondent sought to take advantage of typographical errors made by Internet users—conduct previous panels have found to deprive a respondent of a finding in favor of Policy ¶ 4(a)(ii) rights and legitimate interests. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is using the <shoedzzle.com> and <soedazzle.com> domain names to promote the business of Complainant’s competitors explicitly through the promotion of click-through hyperlink advertisements. Complainant avers that its business is disrupted every time an Internet user clicks through the hyperlink to these competing businesses. The Panel notes that the record illustrates that the advertisements on the websites to which the disputed domain names lead are predominated by hyperlinks to shoe and footwear businesses that operate in competition with Complainant. See Complainant’s Ex. H. Previous panels have found that bad faith by way of commercial disruption of a complainant’s business can arise from a respondent’s use of a confusingly similar domain name to promote a complainant’s business competitors. 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)). As the Panel agrees it finds that Respondent’s use of both of the disputed domain names to redirect Internet users to Complainant’s competitors constitutes Policy ¶ 4(b)(iii) bad faith use and registration of the domain names for the disruption of Complainant’s business.
Secondly, Complainant also contends that Respondent has set up both of the <shoedzzle.com> and <soedazzle.com> domain names to operate as click-through websites, which exist to generate advertising revenue through the redirection of confused Internet users to competing and unrelated third-party websites. Complainant believes that Respondent is taking advantage both of Complainant’s famous mark, and the likelihood that Internet users will confuse Complainant as to the source of the content on the disputed domain names’ resolving websites. The Panel notes that the content of the websites consists primarily of hyperlink advertisements that shuttle Internet users to one of Complainant’s competitors. See Complainant’s Ex. H. The Panel agrees that Respondent’s use of the confusingly similar <shoedzzle.com> and <soedazzle.com> domain names for purposes of soliciting hyperlinks to businesses that compete directly with Complainant’s SHOEDAZZLE mark illustrates Policy ¶ 4(b)(iv) bad faith use and registration. 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).
Thirdly, Complainant argues that Respondent’s typosquatting behavior in regards to both of the domain names is in itself evidence that Respondent has acted in bad faith. The Panel agrees that Respondent’s decision to register the <shoedzzle.com> and <soedazzle.com> domain names, each of which consist of single-character alterations to the SHOEDAZZLE mark, illustrates Respondent’s Policy ¶ 4(a)(iii) bad faith use and registration of the names in hopes of exploiting Internet users’ common typographical mistakes. 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).”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the SHOEDAZZLE mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoedzzle.com> and <soedazzle.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 27, 2013
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