Adorama, Inc. v. Liu Yuan
Claim Number: FA1306001503224
Complainant is Adorama, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Liu Yuan (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adoama.com> and <adoarma.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2013; the National Arbitration Forum received payment on June 4, 2013.
On June 5, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <adoama.com> and <adoarma.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@adoama.com and postmaster@adoarma.com. Also on June 10, 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 July 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
i. Respondent has not been commonly known by the disputed domain names.
ii. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant.
ii. Respondent has registered and used the disputed domain names in bad faith by using the domain names to attract and mislead consumers for its own profit.
iii. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Complainant asserts that it is a retailer carrying items such as home theater equipment, tablet computers, custom scrapbooks and hard drives. Complainant is the owner of a trademark registration with the USPTO for the ADORAMA mark (Reg. No. 3,296,024, registered September 25, 2007). The Panel notes that Respondent appears to reside in Germany. However, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, as long as it establishes rights in the mark in some jurisdiction. See 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). Therefore, the Panel holds that Complainant has established rights in its ADORAMA mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant contends that the disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent removes the letter “r” in Complainant’s ADORAMA mark to form the <adoama.com> domain name. The Panel finds that Respondent’s removal of a letter does not establish distinctiveness 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”). The Panel further notes that Respondent transposes the letters “r” and “a” in Complainant’s ADORAMA mark to form its <adoarma.com> domain name. The Panel holds that Respondent’s transposition of letters in a domain name does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Accordingly, the Panel determines that Respondent’s <adoama.com> and <adoarma.com> domain names are confusingly similar to Complainant’s ADORAMA mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has not been commonly known by the disputed domain names. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant asserts that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that the WHOIS information identifies “Liu Yuan” as the registrant of the domain names. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized the respondent to register a domain name containing its registered mark. Thus, the Panel finds that Respondent is not commonly known by the <adoama.com> and <adoarma.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent is using the disputed domain names 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 observes that Respondent’s <adoama.com> and <adoarma.com> domain names resolve to hyperlink directories featuring competing links such as “Adorama Camera Shop,” “Slr Cameras Clearance,” “HD Camera Rental,” and others. Complainant asserts that Respondent presumably receives pay-per-click fees from these linked websites. Complainant argues that Respondent is not using the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent is using the disputed domain names to provide competing hyperlinks, which is not a use in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. The Panel notes that Respondent is using the disputed domain names to feature hyperlinks that directly compete with Complainant’s legitimate business. Complainant contends that these links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The Panel accepts these allegations and finds that Respondent registered and is using the domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant argues that Respondent has registered and used the disputed domain names in bad faith by using the domain names to attract and mislead consumers for its own profit. The Panel observes that Respondent is using the <adoama.com> and <adoarma.com> domain names to provide competing hyperlinks. Complainant claims that Respondent has set up a “click-through” website for which it likely receives revenue for each misdirected Internet user, demonstrating Respondent’s bad faith. Prior panels have found that a respondent’s use of the disputed domain names to provide competing hyperlinks demonstrates attraction for commercial gain, showing bad faith use and registration 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.’”). In light of the foregoing, the Panel determines that Respondent has sought to improperly attract visitors to the <adoama.com> and <adoarma.com> domain names for its own commercial gain, thereby demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent merely deletes the letter “r” or transposes the letters “r” and “a” in its <adoama.com> and <adoarma.com> domain names. Such domain names are apparently intentional misspellings of Complainant’s ADORAMA mark. Thus, the Panel holds that Respondent has engaged in typosquatting, which evidences both bad faith use and registration under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Therefore, Complainant has also 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 <adoama.com> and <adoarma.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 18, 2013
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