Shoebuy.com, Inc. v. Domain Administrator
Claim Number: FA1304001497256
Complainant is Shoebuy.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator (“Respondent”), Jordan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwshoebuy.com>, registered with MONIKER.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2013; the National Arbitration Forum received payment on April 29, 2013.
On May 14, 2013, MONIKER confirmed by e-mail to the National Arbitration Forum that the <wwwshoebuy.com> domain name is registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has verified that Respondent is bound by the MONIKER 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 May 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@wwwshoebuy.com. Also on May 16, 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 June 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwshoebuy.com> domain name is confusingly similar to Complainant’s SHOEBUY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <wwwshoebuy.com> domain name.
3. Respondent registered and used the <wwwshoebuy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the SHOEBUY.COM mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,518,099 registered Dec. 11, 2001). Complainant also owns the SHOEBUY mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,871,916 registered Aug. 10, 2004).
Respondent registered the <wwwshoebuy.com> domain name on January 12, 2003, and uses it on the resolving website for links promoting the products of Complainant’s competitors.
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 Panel finds that Complainant’s USPTO trademark registrations establish its rights in the SHOEBUY and SHOEBUY.COM marks under Policy ¶ 4(a)(i), despite the fact that Respondent resides outside of the United States. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also 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).
Respondent’s <wwwshoebuy.com> domain name is confusing similar to Complainant’s SHOEBUY.COM mark, since the addition of the prefix “www” to Complainant’s mark does not differentiate the domain name. See Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (“Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a “www” prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent is not commonly known by the <wwwshoebuy.com> domain name. Complainant asserts that Respondent has never been affiliated with Complainant, nor has Complainant given Respondent permission to use its SHOEBUY or SHOEBUY.COM marks. There is nothing in Respondent’s WHOIS information, or elsewhere in the record, to suggest that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <wwwshoebuy.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent’s use of the disputed domain name to redirect users to third-party sites, presumably to receive pay-per-click fees, does not represent a bona fide offering of goods and services. Further, Complainant contends that such use of the <wwwshoebuy.com> domain name does not constitute a legitimate noncommercial or fair use of the disputed domain name. The Panel agrees and finds Respondent’s competing use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is a serial cybersquatter, citing previous UDRP decisions against Respondent. See Redcats USA, L.P. v. Domain Administrator, FA 1314369 (Nat. Arb. Forum April 29, 2010); see also Gamestop, Inc. v. Domain Administrator, FA 1430646 (Nat. Arb. Forum April 10, 2012). The Panel finds that previous UDRP decisions against Respondent is evidence that Respondent registered the <wwwshoebuy.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bing Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant contends that Respondent’s registration and use of the disputed domain is evidence of bad faith as it disrupts Complainant’s business by diverting potential customers to links that promote competing products and services. The Panel agrees and finds that Respondent’s registration of a confusingly similar domain name to divert customers away from Complainant is evidence of bad faith under Policy ¶ 4(b)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Respondent’s use of the <wwwshoebuy.com> domain name for its website likely generates pay-per-click revenue. The Panel finds that Respondent has intentionally sought to attract consumers to its site by creating confusion with Complainant for commercial gain, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant argues that Respondent’s actual knowledge of Complainant’s rights in the mark, since Respondent incorporated Complainant’s SHOEBUY mark in its entirety with the addition of the “www” prefix. Further, Complainant states that Respondent was previously in Complainant’s affiliate program and therefore knew of Complainant’s trademarks prior to registering the <wwwshoebuy.com> domain name. The Panel finds that Respondent had actual knowledge of Complainant’s mark and thus registered and used the disputed domain name is in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent’s use of the disputed domain name is also a classic example of typosquatting, capitalizing on Internet users’ common typing mistakes. The Panel finds that Respondent’s typosquatting is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
The Panel finds that Complainant has satisfied 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 <wwwshoebuy.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 25, 2013
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