Shoedazzle.com, Inc. v. Pan Shu
Claim Number: FA1309001518884
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pan Shu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shpedazzle.com>, registered with DYNADOT, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2013; the National Arbitration Forum received payment on September 10, 2013.
On September 11, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <shpedazzle.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, 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 September 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@shpedazzle.com. Also on September 12, 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 October 7, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
a) Policy ¶ 4(a)(i)
a. Complainant has rights in the SHOEDAZZLE mark for online shoe club ordering services featuring designer shoes, computerized ordering services, personal fashion consulting services, and providing news and information in the field of fashion. Complainant is the owner of a federal trademark with the United States Patent and Trademark Office (“USPTO”) for the SHOEDAZZLE mark (Reg. No. 3,736,740 registered Jan. 12, 2010).
b. The disputed domain name is confusingly similar to the SHOEDAZZLE mark. The mark is incorporated in the disputed domain name with only one letter changed, and with the addition of the generic top-level domain (“gTLD”) “.com.”
b) Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <shpedazzle.com> domain name. Respondent does not have intellectual property rights in the domain name and the WHOIS suggests that the Respondent is known as an entity other than the name reflected by the <shpedazzle.com> domain name. Further, Respondent has not been given permission to use the SHOEDAZZLE mark and is not sponsored by or legitimately affiliated with Complainant.
b. Respondent is using the disputed domain name to host links to third-party websites, some of which compete with Complainant. Presumably, Respondent receives pay-per-click fees from these linked websites.
c) Policy ¶ 4(a)(iii)
a. Respondent has listed the disputed domain name for sale generally.
b. Respondent’s use of the <shpedazzle.com> domain name diverts potential customers away from Complainant to competing third-party websites, disrupting Complainant’s business.
c. Respondent’s bad faith is further shown by Respondent’s use of the <shpedazzle.com> domain name in connection with generating revenue as a click-through website. By using the Complainant’s registered trademark and providing links to the services and products offered by the Complainant, Respondent takes advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercial gain.
d. The disputed domain name is a classic example of typosquatting. The substantive portion of the domain name merely the SHOEDAZZLE mark misspelled by one letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends that it has rights in the SHOEDAZZLE mark for online shoe club ordering services featuring designer shoes, computerized ordering services, personal fashion consulting services, and providing news and information in the field of fashion. Complainant demonstrates that it is the owner of a federal trademark with the USPTO for the SHOEDAZZLE mark (Reg. No. 3,736,740 registered Jan. 12, 2010). Panels have found that registration of a mark with a federal trademark authority is evidence of rights in a mark and that this showing satisfies the requirements of the Policy regardless of the location of the parties. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the SHOEDAZZLE mark under Policy ¶ 4(a)(i).
Complainant next alleges that the disputed domain name is confusingly similar to the SHOEDAZZLE mark. Complainant argues that the mark is incorporated in the disputed domain name with only one letter changed, and with the addition of the gTLD “.com.” Panels have found that the misspelling of a mark by one letter and the addition of a gTLD do not negate bad faith. 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <shpedazzle.com> domain name is confusingly similar to the SHOEDAZZLE mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 argues that Respondent is not commonly known by the <shpedazzle.com> domain name. Complainant claims that Respondent does not have intellectual property rights in the domain name and the WHOIS suggests that the Respondent is known as an entity other than the name reflected in the <shpedazzle.com> domain name. The Panel notes that the WHOIS record lists “Pan Shu” as the domain name registrant. Further, Complainant notes that Respondent has not been given permission to use the SHOEDAZZLE mark and is not sponsored by or legitimately affiliated with Complainant. As such, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent is using the disputed domain name to host links to third-party websites, some of which compete with Complainant. Complainant presumes that Respondent receives pay-per-click fees from these linked websites. Previous panels have found that such a use does not give the respondent rights or legitimate interests in the disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 <shpedazzle.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.
Complainant has proven this element.
Complainant contends that Respondent has listed the disputed domain name for sale generally. The Panel notes that the screenshots provided of the <shpedazzle.com> domain name’s resolving website displays the following statement: “The domain shpedazzle.com is listed for sale. Click here to inquire about this domain name.” The panel in Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), held that the willingness to sell a domain name indicates bad faith. Therefore, the Panel finds that in the present case, Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(i).
Complainant next alleges that Respondent’s use of the <shpedazzle.com> domain name diverts potential customers away from Complainant to competing third-party websites, disrupting Complainant’s business. Panels have found that when a respondent uses a domain name to offer competing links, the projected consumer base of the business of the complainant is disrupted. 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). Therefore, the Panel finds that Respondent registered and is using the disputed domain name disruptively and in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s bad faith is further shown by Respondent’s use of the <shpedazzle.com> domain name in connection with generating revenue as a click-through website. According to Complainant, by using the Complainant’s registered trademark and providing links to the services and products offered by the Complainant, Respondent takes advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercial gain. The Panel finds that Respondent is attempting to create a likelihood of confusion in order to take commercial advantage of Internet users’ mistakes. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds that Respondent registered and is using the <shpedazzle.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant asserts that the disputed domain name is a classic example of typosquatting. Complainant notes that the substantive portion of the domain name consists merely of the SHOEDAZZLE mark, misspelled by one letter. Previous panels have interpreted typosquatting as taking advantage of typographical errors. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent typosquatted the SHOEDAZZLE mark in the <shpedazzle.com> domain name and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proven this element.
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 <shpedazzle.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 14, 2013
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