Redenvelope, Inc. v Peter Carrington aka Party Night, Inc.

DECISION

Redenvelope, Inc. v. Peter Carrington a/k/a Party Night, Inc.

Claim Number: FA0303000150486

PARTIES

Complainant is Redenvelope, Inc., San Francisco, CA, USA (“Complainant”) represented by John C. Baum, of Townsend and Townsend and Crew LLP. Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <redenvlope.com>, registered with Key-Systems Gmbh.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 18, 2003; the Forum received a hard copy of the Complaint on March 20, 2003.

On March 22, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain name <redenvlope.com> is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh registration agreement and has 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 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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@redenvlope.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 21, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <redenvlope.com> domain name is confusingly similar to Complainant’s RED ENVELOPE mark.

2. Respondent does not have any rights or legitimate interests in the <redenvlope.com> domain name.

3. Respondent registered and used the <redenvlope.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant uses its RED ENVELOPE mark to identify its online and mail-order catalog retail business. Complainant’s business is generated mostly from the Internet at <redenvelope.com>. Complainant has done business from this website since 1999. 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 has 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 <redenvlope.com> domain name on March 21, 2002. Respondent, Peter Carrington a/k/a Party Night Inc., is a notorious cybersquatter that has registered numerous misspellings of famous marks as domain names. Respondent is using <redenvlope.com> to divert Internet users to <hanky-panky-college.com>, an adult content website.

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."

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the RED ENVELOPE mark through registration in the United States and throughout the world.

Respondent’s <redenvlope.com> domain name is confusingly similar to Complainant’s mark because it merely omits the “e” in “envelope.” The omission of one letter from a famous mark does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) analysis. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has 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”).

Moreover, 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, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <redenvlope.com> domain name, a misspelling of Complainant’s well-known mark and domain name, to divert Internet users to a pornographic website. This type of use 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 MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Respondent is known to this Panel as Party Night Inc. and John Carrington. There is no evidence on record that Respondent is commonly known as RED EVNLOPE or <redenvlope.com>. Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed 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)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is making a profit from each Internet user it diverts to <hanky-panky-college.com>. Thus, Respondent is using a domain name confusingly similar to Complainant’s RED ENVELOPE mark for Respondent’s own commercial gain. This behavior evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Respondent is engaging in typosquatting, the misspelling of well-known marks in domain names to take advantage of common spelling errors by Internet users and to divert Internet traffic for profit. Typosquatting gives rise to a presumption of bad faith registration and use. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding that the Respondent’s registration of names of famous people, with slight typographical errors, was evidence of bad faith).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Honorable Paul A. Dorf (Ret.), Panelist

Dated: April 28, 2003

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