national arbitration forum

 

DECISION

 

Fragrancenet.com, Inc. v. Hulmiho Ukolen

Claim Number: FA1305001497908

PARTIES

Complainant is Fragrancenet.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Hulmiho Ukolen (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fragrncenet.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2013; the National Arbitration Forum received payment on May 2, 2013. The Complaint was submitted in both English and Finnish.

 

On May 5, 2013, HEBEI GUOJI MAOYI (SHANGHAI) LTD DBA HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <fragrncenet.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM and that Respondent is the current registrant of the name.  HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM 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 15, 2013, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of June 4, 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@fragrncenet.com.  Also on May 15, 2013, the Finnish language 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 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Complainant, Fragrancenet.com, Inc., is the leading online retailer of discounted genuine brand name fragrances and beauty products.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FRAGRANCENET mark (Reg. No. 3,339,343, filed September 19, 2005, registered November 20, 2007); and for the FRAGRANCENET.COM mark (Reg. No. 3,559,768, filed November 21, 2007, registered January 13, 2009).
    3. The disputed domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark.
    4. Respondent has no rights or legitimate interests in respect of the disputed domain name.

                                          i.    Respondent has not been commonly known by the disputed domain name.

                                         ii.    Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.

    1. The domain name should be considered as having been registered and being used in bad faith.

                                          i.    Respondent has engaged in typosquatting.

                                         ii.    Respondent’s advertised pay-per-click links displayed on the resolving website promotes products that compete with Complainant.

                                        iii.    Respondent has registered and used the disputed domain name by using the disputed domain name to attract and mislead consumers for its own profit.

    1. The earliest date on which Respondent registered the disputed domain name was August 16, 2007.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant asserts that it is the leading online retailer of discounted genuine brand name fragrances and beauty products. Complainant claims that it is the owner of trademark registrations with the USPTO for the FRAGRANCENET mark (Reg. No. 3,339,343, filed September 19, 2005, registered November 20, 2007); and for the FRAGRANCENET.COM mark (Reg. No. 3,559,768, filed November 21, 2007, registered January 13, 2009). The Panel notes that Respondent appears to reside in China. Therefore, the Panel finds that Complainant’s registration of the FRAGRANCENET and FRAGRANCENET.COM marks with the USPTO sufficiently establish its rights in the marks under Policy ¶ 4(a)(i), as Complainant does not need to register its mark in the country in which Respondent operates so long as it registers the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel determines that Complainant’s rights in the registered marks date back to the date on which Complainant filed a trademark application for each respective mark. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Accordingly, the Panel finds that Complainant’s rights in the FRAGRANCENET mark date back to September 19, 2005 and predate Respondent’s registration of the <fragrncenet.com> domain name.

 

Complainant contends that the <fragrncenet.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. The Panel notes that Respondent removes the letter “a” from Complainant’s FRAGRANCENET mark, while also affixing the generic top-level domain (“gTLD”) “.com.”. The elimination of a letter in Complainant’s mark does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Similarly, Respondent’s addition of a gTLD does not distinguish Respondent’s domain name from Complainant’s mark either. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Accordingly, the Panel holds that Respondent’s <fragrncenet.com> domain name is confusingly similar to Complainant’s FRAGRANCENET mark pursuant to Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

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. 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 asserts that Respondent has not been commonly known by the disputed domain name. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant contends that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that the WHOIS record indicates “Hulmiho Ukolen” as the registrant of the <fragrncenet.com> domain name. The Panel observes that Respondent does not provide any evidence that it was commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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).

 

Complainant alleges that Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s <fragrncenet.com> domain name links to a website providing links to Complainant’s own website and websites of Complainant’s competitors. Complainant asserts that Respondent presumably receives pay-per-click fees from these linked websites. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that because the “respondent’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. Consequently, the Panel determines that Respondent is not using the disputed domain name in the instant case for a bona fide offering of goods and services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant alleges that Respondent’s advertised pay-per-click links displayed on the resolving website promotes products that compete with Complainant. The Panel finds that Respondent’s <fragrncenet.com> domain name resolves to a competing hyperlink directory with links to Complainant’s website and competing websites, such as “PERFUME DUPLICATION,” “MEN’S COLOGNE FRAGRANCE,” and “DISCOUNT PERFUME.” Complainant contends that this effort diverts consumers and disrupts Complainant’s business. The Panel agrees that Respondent’s use of the domain name disrupts Complainant’s business and shows bad faith use and registration 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).”).

 

Complainant asserts that Respondent has registered and used the disputed domain name in bad faith by using the disputed domain name to attract and mislead consumers for its own profit. Complainant argues that Respondent is using the domain name in connection with generating revenue as a “click-through” website, by using Complainant’s registered trademarks and providing links to the types of services and products offered by Complainant to take advantage of Complainant’s well-known mark to achieve a wrongful competitive advantage and commercial gain. The Panel notes that Respondent’s <fragrncenet.com> domain name links to a page providing hyperlinks to Complainant’s websites and Complainant’s competitors’ websites. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that respondent's prior use of the <mailonsunday.com> domain name was evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefitted from the misleading domain name by receiving ‘click-through-fees.’” The Panel concludes that Respondent registered and is using the disputed domain name to attract consumers to its own website for its own commercial gain, proving bad faith use and registration under Policy ¶ 4(b)(iv).

 

Complainant makes the contention that the domain name’s registration constitutes a          “classic example” of typosquatting, which is a practice intended to take advantage of Internet users’ common misspellings of the mark. The Panel concludes that by typosquatting the disputed domain names, Respondent demonstrates bad faith registration pursuant to Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).

 

Complainant has proven this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <fragrncenet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Karl V. Fink (Ret.), Panelist

Dated: June 24, 2013

 

 

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