Charlotte Russe Merchandising, Inc. v. Above.com Domain Privacy
Claim Number: FA1302001486150
Complainant is Charlotte Russe Merchandising, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <charlortterusse.com> and <charlutterusse.com>, registered with Above.com Pty Ltd.
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 February 20, 2013; the National Arbitration Forum received payment on February 20, 2013.
On February 21, 2013, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <charlortterusse.com> and <charlutterusse.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@charlortterusse.com, postmaster@charlutterusse.com. Also on February 22, 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 28, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a mall-based specialty retailer of fashionable, value-priced apparel and accessories. Complainant has spent millions of dollars in advertisement and promotion of the CHARLOTTE RUSSE marks on the Internet through its websites located at <charlotte-russe.com> and <charlotterusse.com>.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHARLOTTE RUSSE mark (e.g., Reg. No. 1,485,692, registered April 18, 1988).
Respondent’s <charlortterusse.com> and <charlutterusse.com> domain names are confusingly similar to Complainant’s CHARLOTTE RUSSE mark because they differ by only a single character from Complainant’s mark.
Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent has not been commonly known by the disputed domain names.
Respondent is not sponsored by or legitimately affiliated with Complainant in any way and has not been given permission by Complainant to use Complainant’s mark.
Respondent is using the disputed 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.
Respondent’s registration of the disputed domain names is typosquatting, which is evidence in and of itself of bad faith.
Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. This function disrupts Complainant’s business, which is evidence of bad faith under Policy 4(b)(iii).
Respondent set up a “click through” website for which it likely receives revenue for each misdirected Internet user. Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv) by using the disputed domain name to attract and mislead consumers for its own profit.
The earliest date on which Respondent registered the <charlortterusse.com> domain name is August 18, 2007. The earliest date on which Respondent registered the <charlutterusse.com> domain name is April 29, 2008.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has USPTO trademark registrations for the CHARLOTTE RUSSE mark.
Respondent is not affiliated with Complainant and had not been authorized to use the CHARLOTTE RUSSE mark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired trademark rights in CHARLOTTE RUSSE.
The at-issue domain names address websites that displays hyperlinks to Complainant’s competition as well as to other third-party websites.
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 names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration for the CHARLOTTE RUSSE mark is conclusive evidence of Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). It is immaterial that Respondent may reside outside the jurisdiction of the trademark’s registrar. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Each of the at-issue domain names is a common misspelling of the Complainant’s CHARLOTTE RUSSE trademark and differs from that mark only by a single letter. After eliminating the space between the terms in Complainant’s trademark Respondent inserts the letter “r” into the mark and appends the top level domain name “.com” to form the <charlortterusse.com> domain name. Similarly, Respondent substitutes the letter “u” for the letter “o” to form its <charlutterusse.com> domain name. The addition of a letter or substitution of a letter does not distinguish Respondent’s domain names from Complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Furthermore, the elimination of spaces and addition of top level domain name likewise does nothing distinguish the disputed domain names from the mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel concludes that the <charlortterusse.com> and <charlutterusse.com> domain names are confusingly similar to the CHARLOTTE RUSSE mark pursuant to Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. 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 either of the at-issue domain names.
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 and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) that Respondent has rights or interests in either of the at-issue domain names, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Above.com Domain Privacy” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Respondent uses the disputed 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. Notably, Respondent’s <charlortterusse.com> domain name addresses a web directory featuring links to Complainant’s competition like “Wet Seal.com,” “NORDSTROM – Official Site,” “Forever 21,” and others. Similarly, Respondent’s <charlutterusse.com> domain name addresses a website featuring competing hyperlinks such as “FIND RETAIL CAREERS HERE!,” “Womens Shoes,” “Womens Clothing,” and others. It is reasonable to presume that Respondent receives pay-per-click fees when a visitor to one of the at-issue domain names’ website navigates via one of its displayed links. Respondent’s use of the at-issue domain names in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at‑issue domain names were each registered and used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present regarding each domain name and there is non-Policy ¶4(b) evidence which also shows that Respondent acted in bad faith regarding each of the at-issue domain names pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, the pay-per-click links that are displayed on Respondent’s at-issue websites link to products and vendors that compete with Complainant. Respondent intends that these links divert potential customers away from Complainant to third-party websites. These circumstances disrupt Complainant’s business and thereby demonstrates bad faith registration and use of each of the domain names under 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).”).
Respondent uses the confusingly similar at-issue domain names to capitalize on the mistakes of Internet users looking for Respondent but who, in typing Complainant’s trademark into their browser’s address bar, have inadvertently misspelled the CHARLOTTE RUSSE trademark in a manner that conforms to one of Respondent’s at-issue domain names. Thereby, instead of visiting one of Complainant’s web properties as intended, the user lands on one of Respondent’s at-issue websites. There, as discussed above, Respondent has set up “click through” links from which it will presumably receive revenue each time a lost visitor clicks one of the links. Given the forgoing, the Panel finds that Respondent’s use of each of the at-issue domain names to attract and mislead consumers for commercial gain demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, Respondent is a typosquatter. Respondent is intent on taking advantage of the inevitable misspelling of Complainant’s trademark to exploit the confusing similarity between the at-issue domain names and Complainant’s mark. Under the Policy Typosquatting 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.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <charlortterusse.com> and <charlutterusse.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 29, 2012
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