Redenvelope, Inc. v. Oui!
Claim
Number: FA0303000149186
Complainant is
Redevelope, Inc., San Fracisco, CA, USA (“Complainant”) represented
by John C. Baum of Townsend and Townsend and Crew LLP. Respondent
is Jose Penha Oui!, Lisbon, PORTUGAL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <redemvelope.com>, registered with Tucows,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 12, 2003; the Forum received a hard copy of the
Complaint on March 13, 2003.
On
March 12, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <redemvelope.com> is registered with Tucows, Inc. and that
Respondent is the current registrant of the name. Tucows, Inc. verified that
Respondent is bound by the Tucows, Inc. registration agreement and thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 28, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 17, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@redemvelope.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 26, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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."
Therefore, the Panel may issue its decision based on the documents submitted
and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<redemvelope.com>, is confusingly similar to Complainant’s RED
ENVELOPE mark.
2. Respondent has no rights to or legitimate
interests in the <redemvelope.com> domain name.
3. Respondent registered and used the <redemvelope.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, one
of the most successful online gift retailers in the world, uses its RED
ENVELOPE mark to identify its online and mail order catalog retail
business. Complainant’s business is
generated mainly from the Internet at <redenvelope.com>. Complainant has done business from this
website since 1999. Complainant actively
promotes its RED ENVELOPE mark in the United States and abroad. Complainant
holds numerous trademark registrations for its RED ENVELOPE mark in the United
States and throughout the world, including Registration Numbers 2,461,506 and
2,474,275 with the U.S. Patent and Trademark Office. Complainant also registered its RED ENVELOPE mark in Australia
(Reg. No. 832,179), Canada (Reg. No. 555,832), China (Reg. No. 1,699,726),
Japan (Reg. No. 4,551,718), and the European Community (Reg. No. 1,601,327).
Respondent
registered the <redemvelope.com> domain name on April 1,
2002. Respondent is using the domain
name to redirect Internet users to a series of advertisements for credit card
services. Internet users who reach the
domain name and attempt to close out of the initial advertisement that pops up
are inundated with numerous other pop-up advertisements. This technique is called “mousetrapping,”
and prevents unwary Internet consumers from escaping the series of advertisements.
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."
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.
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.
Complainant
established that it has rights in the RED ENVELOPE mark through registration
with the U.S. Patent and Trademark Office and use in relation to its online
gift retail business since 1999.
Respondent’s
<redemvelop.com> domain name is confusingly similar to
Complainant’s mark because it is merely a misspelling of RED ENVELOPE. Respondent has only replaced the “n” in
“envelope” with an “m.” The misspelling
of another’s mark within a domain name does not create any distinguishable
characteristics capable of overcoming a claim of confusing similarity. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May
30, 2000) (finding the domain name <hewlitpackard.com> to be identical or
confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Compaq
Info. Techs. Group, L.P. v. Seocho
, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain
name <compq.com> is confusingly similar to Complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and interests in the mark in issue.
Respondent failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all
reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant 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”).
Respondent has
failed to invoke any circumstances that could demonstrate rights and legitimate
interests in the domain name. When
Complainant asserts a prima facie case against Respondent, the burden of
proof shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, Respondent failed to invoke any
circumstance that could demonstrate any rights or legitimate interests in the
domain name).
Respondent is
engaging in typosquatting, by taking advantage of a common typographical error
to redirect Internet users to a website unrelated to Complainant’s mark. In this case, Respondent is using the <redemvelope.com>
domain name to redirect Internet users to a website that features a series of
pop-up advertisements. This type of
behavior is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See FAO Schwarz v. Zuccarini, FA 95828 (Nat.
Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the
domain names <faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and <faoswartz.com> where Respondent was using
these domain names to link to an advertising website); see also Nat’l
Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of
redirecting consumers against their will to another site, does not qualify as a
bona fide offering of goods or services, whatever may be the goods or services
offered at that site”).
Moreover,
Respondent is not commonly known as RED ENVELOPE, RED EMVELOPE or <redemvelope.com>. There is no evidence in record or in
Respondent’s WHOIS information that could establish that Respondent is known by
the disputed domain name. Thus, the
Panel finds that Respondent has no rights or legitimate interests in the <redemvelope.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant alleged
that Respondent acted in bad faith in using a misspelling of Complainant’s
well-known mark in registering and using the domain name in issue. Based on this fact the Panel infers that
Respondent had actual knowledge of Complainant’s rights in the RED ENVELOPE
mark when it registered the <redemvelope.com> domain name. Registration of an infringing domain name
despite actual knowledge of Complainant’s rights is evidence of bad faith
registration pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (holding that “there is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
Respondent is
using a domain name confusingly similar to Complainant’s mark to redirect
Internet traffic to an advertising website.
The use of a confusingly similar domain name to direct Internet users
interested in Complainant to an unconnected advertising website is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent
is creating a likelihood of confusion for its own commercial gain. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where Respondent linked the domain name to another website
<iwin.com>. Presumably, Respondent received a portion of the advertising
revenue from the site by directing Internet traffic to the site, thus using a
domain name to attract Internet users for commercial gain); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted
users to advertisements); see also Kmart v. Kahn, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <redemvelope.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 9, 2003.
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page