DOLLARAMA L.P. v. Johnson Properties
Claim Number: FA1303001490632
Complainant is DOLLARAMA L.P. (“Complainant”), represented by Léon Moubayed of Davies Ward Phillips & Vineberg LLP, Canada. Respondent is Johnson Properties (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dollaramaplus.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 March 19, 2013; the National Arbitration Forum received payment on March 19, 2013.
On March 21, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dollaramaplus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@dollaramaplus.com. Also on March 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.
Not having received a formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns rights in the DOLLARAMA mark through its trademark registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. 626,311 registered November 23, 2004).
2. It is not necessary for Complainant to register its DOLLARAMA mark within the country where Respondent is located or operates.
3. Respondent’s <dollaramaplus.com> domain name is confusingly similar to Complainant’s DOLLARAMA mark.
a. Respondent’s <dollaramaplus.com> domain name contains Complainant’s entire DOLLARAMA mark with the addition of the term “plus” and the generic top-level domain (“gTLD”) “.com.”
4. Complainant has applied to register the DOLLARAMA mark with the United States Patent and Trademark Office (“USPTO”) in 2010.
5. Complainant has used its DOLLARAMA mark continuously since 1993.
6. Complainant has established good will and considerable recognition for its DOLLARAMA mark.
7. Complainant has a prominent branding image associated with its DOLLARAMA mark.
8. Respondent has no rights or legitimate interests in the <dollaramaplus.com> domain name.
a. Respondent is not commonly known by the disputed domain name and has not acquired rights to use the mark.
b. Respondent has not been granted any license, permission or authorization to use Complainant’s DOLLARAMA mark in the disputed domain name.
c. Complainant’s DOLLARAMA mark is not a common word with a meaning distinct from the trademark associated with Complainant.
d. Respondent’s use causes confusion between Respondent’s use and Complainant’s legitimate business.
e. Respondent has never used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering or advertisement of goods or services.
f. Respondent’s disputed domain name is parked by the Registrar and redirects Internet users to a directory of links, which is not a bona fide offering of goods or services.
9. Respondent is using the <dollaramaplus.com> domain name in bad faith.
a. Respondent’s <dollaramaplus.com> domain name redirects Internet users to its “parked” website featuring a directory containing links to websites of third parties, some of which compete with Complainant.
b. Respondent’s registration of the domain name creates a likelihood of confusion with Complainant’s DOLLARAMA mark as to the source, affiliation, or endorsement of the domain name and Respondent attempts to commercially gain from the confusion through the receipt of click-through fees, which is evidence of bad faith under Policy ¶ 4(b)(iv).
c. Respondent had knowledge of Complainant’s mark at the time it registered the <dollaramaplus.com> domain name.
d. Respondent is engaged in cybersquatting.
B. Respondent
While Respondent has failed to produce a formal response in this case, the Panel notes that the record contains email correspondence from Respondent, dated March 21, 2013, which makes several arguments relevant to UDRP Policy. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. However, the Panel, at its discretion, may choose whether to accept and consider this Response despite the fact that it is not a formal Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
The Panel has given consideration to this issue and in the exercise of its discretion has decided to accept and consider the informal Response submitted by Respondent.
Respondent makes the following contentions.
1. Respondent purchased the disputed domain name legally in 2009, which was before Complainant filed for its USPTO registration in 2010.
2. Respondent submits a photo of a building it owns and leases to the “Dollar Plus” store in Madison, Wisconsin, which displays signage featuring the name “Dollar Plus.”
3. Respondent acquired the <dollaramaplus.com> domain name for use in association with the building it owns and leases to the “Dollar Plus” store.
1. Complainant is a Canadian company that has conducted a
chain of retail stores throughout Canada since 1992 and now operates about 690 stores.
2. Complainant owns rights in the DOLLARAMA mark through its trademark registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. 626,311 registered November 23, 2004).
3. Respondent registered the disputed domain name on March 6, 2009. It resolves to a parking page containing links to goods and services that in some cases compete directly or indirectly with those of Complainant.
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 the Panel’s observations relating to the Respondent’s informal Response, the Panel shall decide this administrative proceeding on the basis of the Complaint and the evidence tendered in support of it, the informal Response and the evidence tendered in support of it and all reasonable inferences to be drawn from both.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can reply. Complainant submits that it has rights in the DOLLARAMA mark under Policy ¶ 4(a)(i) due to its trademark registration with CIPO (Reg. No. 626,311 registered November 23, 2004) (“the DOLLARAMA mark”) and has tendered evidence to that effect. Complainant also provides evidence of its application for registration for its DOLLARAMA mark with the USPTO. The Panel accepts the evidence tendered by Complainant to establish those contentions. Complainant also contends that a complainant need not register the mark in the country in which the respondent resides or operates in order to establish rights in the mark. The Panel agrees with that submission and there are many UDRP decisions to support it. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel therefore finds that Complainant has established rights in its DOLLARAMA mark through its registration with CIPO. See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the DOLLARAMA mark. Complainant argues that Respondent’s <dollaramaplus.com> domain name is confusingly similar to Complainant’s DOLLARAMA mark under Policy ¶ 4(a)(i). Complainant claims that Respondent’s <dollaramaplus.com> domain name contains Complainant’s DOLLARAMA mark in its entirety with the addition of the generic term “plus” and the gTLD “.com.” It is clear that Complainant’s submission is correct. Previous panels have found that variations such as adding generic terms and gTLDs do not distinguish a disputed domain name from a given mark. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Based on these previous UDRP decisions and the plain terms of the domain name, the Panel finds that Respondent’s <dollaramaplus.com> domain name is confusingly similar to Complainant’s DOLLARAMA mark under Policy ¶ 4(a)(i).
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 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. Arab. 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. Gerber, FA 780200 (Nat. Arab. 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 adopted Complainant’s DOLLARAMA mark and used it in its domain name, adding only the generic word “plus”, thus giving the false impression to the internet user that the domain name is a superlative of the business covered by the trademark and that consequently it is an official domain name of Complainant that will lead to its official website;
(b) Respondent has then use the domain name not to establish a legitimate website but to lead to a parking page featuring links to third-party websites, some of which directly or indirectly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent has no rights or legitimate interests in
the disputed domain name because it is not commonly known by it. Complainant argues that it has never granted Respondent any license, permission or authorization to use its DOLLARAMA mark. The Panel notes that the WHOIS information for Respondent lists”Johnson Properties” as Registrant. Based on the evidence submitted and Complainant’s contentions, the Panel finds that Respondent is not commonly known by the disputed domain name under 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);
(e) Complainant claims that Respondent has no rights or legitimate interests in
the <dollaramaplus.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use. Complainant submits that Respondent’s disputed domain name is parked by the Registrar of the domain name and redirects Internet users to a directory website featuring constantly changing links to websites of owners/operators or providers of a variety of services, some of which directly or indirectly compete with Complainant’s business. The Panel notes in particular that Respondent’s resolving website features links such as, “Fly Cheap To Toronto,” “New Condos in Montreal,” “Dollar Store Online,” “Retail Benchmarks,” and “All Things Customed.” See Annex 6. The Panel notes that previous panels have found that using a confusingly similar domain name to resolve to a website featuring commercial links to third parties, some of which are competing with a complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. Respondent has not filed a formal Response but, as the Panel has decided to consider the informal Response submitted by Respondent, the Panel will now consider if Respondent has rebutted the prima facie case against it. The Panel has given careful consideration to the points made by Respondent but concludes that Respondent has not rebutted the prima facie case.
Respondent has submitted that it purchased the disputed domain name legally in 2009, which was before Complainant filed for its USPTO registration in 2010. A sequence of events of that sort can sometimes be of significance in UDRP proceedings. But in the present case, Complainant has a Canadian trademark and as the internet is international it has long been accepted that a Complainant bringing a claim under the UDRP need only establish a trademark or service mark, registered or at common law and no matter in what country it is made out. It will have been noted that Complainant’s Canadian trademark was registered in the year 2004 and , hence, before the domain name was registered.
Respondent makes two other submissions, that it owns and leases a property to the “Dollar Plus” store in Madison, Wisconsin, which displays signage featuring the name “Dollar Plus” and that Respondent acquired the <dollaramaplus.com> domain name for use in association with the building it owns and leases to the “Dollar Plus” store. That may well be true, but it does not show that Respondent has a right or legitimate interest in the domain name. The domain name is <dollaramaplus.com> and it includes the whole of Complainant’s DOLLARAMA trademark. This suggests that the domain name was created with the trademark in mind and although that may be a contentious issue, it is not rebutted by suggesting that it was to be used for a store with a different name. Indeed, it raises the additional question of why Respondent registered <dollaramaplus.com> as a domain name instead of a form of “dollar plus” if it was so concerned to have a domain name that evoked “dollar plus.” Respondent’s difficulty is that the trademark DOLLARAMA is an unusual and clearly invented word and if it is then found to have been used as a domain name ,with the addition of the word ”plus”, it raises the inference that this was deliberate and an attempt to trade on the trademark.
The Panel’s view, therefore, is that Respondent has not rebutted the prima facie case that it does not have a right or legitimate interest in the domain name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and is using the <dollaramaplus.com> domain name in bad faith. Complainant claims that Respondent’s use of the disputed domain name competes with Complainant’s business by displaying links to competing and noncompeting third parties. Previous panels have found that this type of competition disrupts a complainant’s business by redirecting potential customers of a complainant to another business and thus demonstrates bad faith 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).”) The Panel therefore finds that Respondent’s use of the disputed domain name violates Policy ¶ 4(b)(iii).
Secondly, Complainant contends Respondent has registered the <dollaramaplus.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent is using the confusingly similar <dollaramaplus.com> domain name to attract Internet users to its resolving website for commercial gain by creating a likelihood of confusion with Complainant’s DOLLARAMA mark as to the source, affiliation, or endorsement of its resolving website. Complainant provides a screen shot of Respondent’s “parked” website resolving from the disputed domain name, featuring a directory of links to third parties, some of which compete with Complainant. Complainant asserts that Respondent attempts to gain commercially from the confusion through the receipt of click-through fees. Based on Complainant’s contentions, Respondent’s Response to those contentions and the evidence, the Panel finds that Respondent’s use of the <dollaramaplus.com> domain name violates Policy ¶ 4(b)(iv) because the disputed domain name was registered with the intent to attract consumers and financially profit by creating a likelihood of confusion with Complainant’s mark. 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.’”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Thirdly, Complainant asserts that, due to its trademark registration and its offering and advertisement of its services under the <dollarama.com> domain name, Respondent must have known about Complainant's rights in the DOLLARAMA mark when Respondent registered the confusingly similar disputed domain name. The Panel draws the inference on the balance of probabilities that Respondent had actual knowledge of Complainant’s rights in the mark and it therefore concludes that Respondent registered the <dollaramaplus.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 name using the DOLLARAMA mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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 <dollaramaplus.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 20, 2013
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