Shoedazzle.com, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1310001522384
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoedazzl.com>, <shoedazzles.com>, and <showdazzel.com>, registered with Internet.Bs Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2013; the National Arbitration Forum received payment on October 2, 2013.
On October 6, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <shoedazzl.com>, <shoedazzles.com>, and <showdazzel.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 October 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@shoedazzl.com, postmaster@shoedazzles.com, and postmaster@showdazzel.com. Also on October 14, 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 November 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant, co-founded by Brian Lee, Robert Shapiro, M.J. Eng, and Kim Kardashian in 2008, provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences.
a. Consumers may join Complainant’s service for free by filling out an online form that describes their shopping choices and styles. If a member makes an initial purchase, Complainant keeps the billing information on file, and customers who decide to make a monthly purchase are given credits for future monthly purchases.
2. Complainant has used the SHOEDAZZLE mark for online shoe club ordering services since 2008.
3. Complainant has rights in the SHOEDAZZLE mark through its federal trademark registrations.
a. United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,736,740 filed June 11, 2009; registered January 12, 2010).
b. Complainant’s first use of the SHOEDAZZLE mark in commerce was October 1, 2008.
4. Complainant also has common law rights in the SHOEDAZZLE mark.
5. Respondent’s <shoedazzl.com>, <shoedazzles.com>, and <showdazzel.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark.
6. Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the disputed domain names.
b. Respondent is not sponsored by or affiliated with Complainant in any way.
c. Complainant has not given Respondent permission to use Complainant’s mark.
d. Respondent uses the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
e. Respondent presumably receives pay-per-click fees from the links provided on the websites.
f. 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.
g. The earliest date on which Respondent registered the disputed domain names was March 18, 2009.
7. Respondent registered and is using the <shoedazzl.com>, <shoedazzles.com>, and <showdazzel.com> domain names in bad faith.
a. Respondent offers the disputed domain names for sale.
b. Respondent has engaged in an ongoing pattern of typosquatting behavior.
c. Respondent’s typosquatting behavior is evidence of bad faith, in and of itself.
d. Respondent’s disputed domain names resolve to websites featuring links to services and products offered by the Complainant for commercial gain.
e. Respondent’s pay-per-click links displayed on the resolving websites promotes products that compete with Complainant, thereby diverting potential customers away from Complainant to third-party websites.
f. Respondent uses the disputed domain names to attract and mislead consumers for its own profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1.Complainant provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences.
2.Complainant has rights in the SHOEDAZZLE mark through its federal trademark registrations including United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,736,740 filed June 11, 2009; registered January 12, 2010).
3.Complainant has also established common law trademark rights to the SHOEDAZZLE mark.
4. Respondent registered the disputed domain names on or about March 18, 2009.
5. Respondent has used the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant contends it provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences. Complainant states that it routinely attracts more than 2.8 million monthly unique visitors to its website at <shoedazzle.com>. Complainant initially launched services in the United States but recently expanded operations to include the United Kingdom. Complainant claims its rights in the SHOEDAZZLE mark through its registration with the USPTO (Reg. No. 3,736,740 filed June 11, 2009; registered January 12, 2010). Previous panels have found that evidence of a registration with the USPTO for a given mark is sufficient to establish rights in that mark. 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). The Panel concludes based on Complainant’s registration with the USPTO, that Complainant has rights in the SHOEDAZZLE mark under Policy ¶ 4(a)(i) dating back to June 11, 2009. The Panel further notes that to establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. See 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). As such, the Panel finds that Complainant has rights in the SHOEDAZZLE mark dating back to June 11, 2009 pursuant to Policy ¶ 4(a)(i).
Complainant argues that it has common law rights in the SHOEDAZZLE mark under Policy ¶ 4(a)(i). The Panel notes that Respondent’s creation date of the <shoedazzles.com> domain name predates Complainant’s filing date with the USPTO. Complainant contends that Respondent created the <shoedazzles.com> domain name on March 18, 2009. Complainant argues that it bagan using the SHOEDAZZLE mark on October 1, 2008, as stated on Complainant’s USPTO registration, and has used the mark continuously since that date in connection with its business. Complainant states that Complainant registered its official domain name on June 4, 2008. Complainant states that it has acquired common law rights in the SHOEDAZZLE mark through its use and pomotions through the United States. Complainant’s Exhibit G displays Complainant’s use and recognition of the SHOEDAZZLE mark displaying a launch date of November 28, 2008. Based on the evidence provided, the Panel finds that Complainant has common law rights in the SHOEDAZZLE mark dating back to November 28, 2008 pursuant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SHOEDAZZLE mark. Complainant contends that Respondent’s <shoedazzl.com>, <shoedazzles.com>, and <showdazzel.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark under Policy ¶ 4(a)(i). Complainant argues that the disputed domain names differ by only a single character from Complainant’s SHOEDAZZLE mark. The Panel notes that the <shoedazzl.com> domain name eliminates the “e” in “dazzle.” The Panel notes that the <shoedazzles.com> domain name adds the letter “s” to the end of Complainant’s SHOEDAZZLE mark. Previous panels have found that adding or deleting a letter in a complainant’s registered mark is not enough to differentiate a disputed domain name from a given mark. 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) The Panel also notes that the <showdazzel.com> domain name switches the “l” and the “e” position in “dazzle.” The Panel notes that all of the disputed domain names contain the generic top-level domain “.com” which previous panels have found irrelevant to a discussion of confusing similarity. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Previous panels have found that domain names with slight variations such as an addition or elimination of a letter or a misspelling with the addition of a generic top-level domain, are insufficient variances to overcome a finding of confusingly similar. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). The Panel therefore finds that Respondent’s <shoedazzl.com>, <shoedazzles.com>, and <showdazzel.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SHOEDAZZLE trademark and to use it in its domain names, making only minor spelling alterations to the mark in each case;
(b) Respondent uses the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii). Complainant contends that Respondent has no trademark or intellectual property rights in the disputed domain names. Complainant also asserts that it has not given Respondent permission to use Complainant’s mark in any way. The Panel notes that the WHOIS information for the disputed domain names lists “PPA Media Services/Ryan G Foo” as registrant. Previous panels have found that a respondent was not commonly known by a domain name where there was no indication on the record, including the WHOIS information, suggesting that respondent was 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 there was no evidence in the record showing 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). The Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(e)Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because it is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant argues that Respondent uses the disputed domain names to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant contends that Respondent receives pay-per-click fees from the links present on the websites. The Panel notes that the disputed domain names feature links relating to Complainant and Complainant’s business. The <shoedazzl.com> domain name features links such as “Pumps Heels Shoes” and “Shoe Fashion;” the <shoedazzles.com> domain name features links including “Shoe Dazzle,” “Designer Handbags,” and “High Heel Shoes;” the <showdazzel.com> domain name displays links such as “Shoedazzle com” and “Womens Shoes and Boots.” The Panel notes that previous UDRP panels have found that featuring a series of links to competing third-parties, and gaining revenue from the links, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the 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)). The Panel concludes that Respondent has no rights or legitimate interests in the <shoedazzl.com>, <shoedazzles.com>, and <showdazzel.com> domain names because it is not making a Policy ¶ 4(c)(i) or ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain names.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has listed the disputed domain names for sale. Complainant references Exhibit 1 of the WHOIS records for the disputed domain names, displaying the message, “The owner of the domain name you are researching has it listed for sale.” Previous panels have found that offering to sell a domain name indicates bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel therefore finds that Respondent’s offer to sell the disputed domain names indicates bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii). Complainant contends that Respondent has engaged in an ongoing pattern of typosquatting behavior. Complainant’s Exhibit N provides details of previous UDRP claims that Respondent has been involved in and was ordered to transfer the disputed domain name. The Panel notes that a few of the cases listed include: Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services/ Ryan G Foo., FA 1510619 (Nat. Arb. Forum Oct. 9, 2013) and The TJX Companies, Inc. v. PPA Media Services/ Ryan G Foo, FA 1514112 (Nat. Arb. Forum Oct. 3, 2013.). Previous panels have found that previous UDRP decisions held against a respondent are sufficient for a finding of bad faith use and registration under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Thirdly, Complainant argues that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent uses the disputed domain names to feature pay-per-click links, some of which compete with Complainant’s business. Complainant claims that these links divert Internet users away from Complainant and to the third-party websites, thereby disrupting Complainant’s business. Prior panels have found bad faith use and registration under Policy ¶ 4(b)(iii) when a respondent uses a confusingly similar domain name to resolve to a website featuring links that compete with a complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Fourthly, Complainant contends that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent uses the confusingly similar domain names to attract and mislead consumers for Respondent’s own profit. Previous panels have found bad faith when a respondent uses a disputed domain name to feature links to a complainant’s competitors and consequently receives revenue. See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel thus concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Fifthly, Complainant asserts that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that past panels have found that typosquatting, the intentional misspelling of a mark in a domain to take advantage of typographical errors by Internet users, is evidence of bad faith. 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).”). The Panel notes that the disputed domain names differ from Complainant’s registered mark by only a mere letter or two. The Panel notes that previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. The Panel therefore finds accordingly.
Sixthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the SHOEDAZZLE mark and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoedazzl.com>, <shoedazzles.com>, and <showdazzel.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 11, 2013
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