national arbitration forum

 

DECISION

 

Design Technology Holding, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin

Claim Number: FA1305001499024

 

PARTIES

Complainant is Design Technology Holding, LLC (“Complainant”), represented by Jason S. Marin of Gonzalez Saggio & Harlan LLP, New York, USA.  Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bettypageclothing.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.

 

PANEL

The undersigned certifies that she 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically May 9, 2013; the National Arbitration Forum received payment May 9, 2013.

 

On May 10, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <bettypageclothing.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and 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 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@bettypageclothing.com.  Also on May 13, 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 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

Complainant makes the following allegations in this proceeding:

 

a)    Complainant has rights in the BETTIE PAGE mark, used in connection with clothing. Complainant is the owner of a registration for the BETTIE PAGE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,868,614 registered Aug. 3, 2004).  See Complainant’s Exhibit B.

b)    The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <bettypageclothing.com> domain name differs only by the phonetically indistinguishable alternate spelling of “BETTIE,” with the “ie” replaced by a “y,” the addition of the word “clothing,” and the addition of the generic top-level domain (“gTLD”) “.com.” None of these differences create a distinction between the disputed domain name and Complainant’s mark.

c)    Respondent does not own any right or have any legitimate interests in the <bettypageclothing.com> domain name.

a.    Respondent has never been commonly known by the disputed domain name or Complainant’s mark. The WHOIS information for the disputed domain name provides evidence of this fact.

                                          i.    Complainant is in no way affiliated with Respondent and Complainant has not given Respondent rights to Complainant’s mark in any way.

b.    Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.

                                          i.    Respondent has used the disputed domain name only to provide links to third-party websites selling similar or related goods to those that Complainant sells. See Complainant’s Exhibit E.

                                         ii.    Respondent has ignored Complainant’s attempts to resolve this dispute outside of this proceeding. Complainant sent a cease and desist letter to Respondent.

d)    Respondent registered and is using the <bettypageclothing.com> domain name in bad faith.

a.    Respondent has used the disputed domain name with an intent to obtain commercial gain by diverting Internet users to its website and providing links to Complainant’s competitors. See Complainant’s Exhibit E. Complainant believes Respondent is receiving click-through revenue from the linked websites or other similar compensation for redirecting Internet traffic.

b.    Respondent has engaged in typosquatting by relying on Internet users who mistype or misspell Complainant’ s mark.

 

Respondent did not submit a Response; however, the Panel notes that Respondent’s response to Complainant’s cease and desist letter is in Complainant’s Exhibit G.

  1. The Panel notes that in the email Respondent states it has no control over the activity carried out on the resolving website connected to the disputed domain name.

 

  1. The Panel notes that Respondent registered the <bettypageclothing.com> domain name August 11, 2007.

 

FINDINGS

 

Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.

 

Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.

 

The disputed domain name is confusingly similar to Complainant’s mark.

 

Respondent registered and used the disputed domain name in bad faith.

 

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 Complainant to 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 to or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar

 

Complainant contends it has rights in the BETTIE PAGE mark, used in connection with clothing. Complainant alleges that it is the owner of a registration for the BETTIE PAGE mark with the USPTO (Reg. No. 2,868,614 registered Aug. 3, 2004).  See Complainant’s Exhibit B. Therefore, the Panel finds that Complainant has rights in the BETTIE PAGE mark under Policy ¶ 4(a)(i) notwithstanding the fact Respondent operates outside the United States. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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).

 

Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark. Complainant urges that Respondent’s <bettypageclothing.com> domain name differs only by the phonetically indistinguishable alternate spelling of “BETTIE,” with the “ie” replaced by a “y,” the addition of the word “clothing,” and the addition of the gTLD “.com.” Complainant asserts that none of these differences creates a distinction between the disputed domain name and Complainant’s mark. First, the Panel finds that the phonetically identical spelling of Complainant’s mark in the disputed domain name is confusingly similar to Complainant’s mark. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”) Next, the Panel finds that addition of the descriptive word “clothing” and the affixation of a gTLD do not distinguish the disputed domain name from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Lastly, the Panel notes that the disputed domain name eliminates the space between words in Complainant’s mark. The Panel finds that removal of spaces does not distinguish a disputed domain name under Policy ¶ 4(a)(i). 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 finds that the <bettypageclothing.com> domain name is confusingly similar to Complainant’s BETTIE PAGE mark under Policy ¶ 4(a)(i).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights to 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 of proof shifts to Respondent to show it does have such 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 alleges that Respondent does not own any right to or have any legitimate interest in the <bettypageclothing.com> domain name. Complainant contends that Respondent has never been commonly known by the disputed domain name or Complainant’s mark. The WHOIS information for the disputed domain name lists “Private Registrations Aktien Gesellschaft” as the domain name registrant. The Panel considers the WHOIS information as one factor in determining whether Respondent is commonly known by the disputed domain name. See Tercent Inc. v. 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). Further, Complainant states that Respondent is in no way affiliated with Complainant, and that Complainant has not given Respondent rights to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the <bettypageclothing.com> domain name under Policy ¶ 4(c)(ii), as Respondent is not commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as no evidence in the record shows that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant next alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. According to Complainant, Respondent has used the disputed domain name only to provide links to third-party websites selling similar or related goods to those that Complainant sells. See Complainant’s Exhibit E. Panels have found that placing hyperlinks on a disputed domain name that resolve to websites that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s use of the <bettypageclothing.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii). 


The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant next urges that Respondent registered and is using the <bettypageclothing.com> domain name in bad faith and that Respondent has used the disputed domain name with intent to obtain commercial gain by diverting Internet users to its website and providing links to Complainant’s competitors. See Complainant’s Exhibit E. Complainant believes Respondent is receiving click-through revenue from the linked websites or other similar compensation for redirecting Internet traffic. Therefore, the Panel finds that the evidence shows that Respondent registered and is using the <bettypageclothing.com> domain name to obtain commercial gain in bad faith under 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.’”).

 

Complainant contends as well that Respondent has engaged in typosquatting by relying on Internet users who mistype or misspell Complainant’ s mark. Such conduct has been found to support findings of bad faith registration and use. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). However, the Panel notes that the disputed domain name includes the descriptive term “clothing.” Prior cases that have found typosquatting ruled that typosquatting is established only in domain names that consist only of a common misspelling of Complainant’s marks without any additional words. See, e.g., 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).”). Therefore, the Panel declines to find that Respondent engaged in typosquatting in this instance.

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

DECISION

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

 

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

 

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  June 25, 2013.

 

 

 

 

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