SmartBargains.com, L.P. v. DNS Administrator
Claim Number: FA1002001306472
Complainant is SmartBargains.com, L.P. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <smarbargains.com>, registered with Moniker.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 4, 2010.
On February 4, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <smarbargains.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 February 9, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2010 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@smarbargains.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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." 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 makes the following assertions:
1. Respondent’s <smarbargains.com> domain name is confusingly similar to Complainant’s SMARTBARGAINS mark.
2. Respondent does not have any rights or legitimate interests in the <smarbargains.com> domain name.
3. Respondent registered and used the <smarbargains.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SmartBargains.com,
L.P., holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for its SMARTBARGAINS mark (e.g., Reg. No. 1,960,558 issued May 6, 2002) in connection with
on-line retail services.
Respondent registered the <smarbargains.com> domain name on October 17, 2002. The disputed domain name resolves to a website featuring generic links to third-party websites, some of which compete with Complainant’s business. Presumably, Respondent receives pay-per-click fees from these linked websites.
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. 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.”).
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.
Complainant asserts rights in its SMARTBARGAINS mark through
its holding of several trademark registrations with the USPTO (e.g., Reg.
No. 1,960,558 issued May 6, 2002). The
Panel finds that Complainant has established rights in the SMARTBARGAINS mark
under Policy ¶ 4(a)(i) through its registration with the USPTO. 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 Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (finding that the complainant’s federal trademark
registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to
establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that
Respondent’s <smarbargains.com> domain name is confusingly similar to Complainant’s SMARTBARGAINS mark
pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed domain name is confusingly similar to
Complainant’s mark as it merely deletes the letter “t” from Complainant’s mark
and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of the
letter “t” from Complainant’s mark creates a confusing similarity between the
disputed domain name and Complainant’s mark.
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”); see also Hallelujah Acres, Inc. v. Manila Indus.,
Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the
respondent’s <hacrs.com> domain name was confusingly similar to the
complainant’s HACRES mark because it omitted the letter “e” from the mark and
added the generic top-level domain “.com”).
The Panel also finds that the addition of a gTLD to a mark is irrelevant
in distinguishing a disputed domain name from a mark. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27,
2007) (concluding that the affixation of a gTLD to a domain name is irrelevant
to a Policy ¶ 4(a)(i) analysis); see also
Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. 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 Policy ¶ 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) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant asserts that nothing in the WHOIS information suggests that Respondent is commonly known by the disputed domain name. Additionally, Complainant asserts that Respondent is not sponsored or legitimately affiliated with Complainant in any way and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Respondent’s disputed domain name resolves to a website featuring generic
links to third-party websites, some of which compete with Complainant’s
business. Presumably, Respondent
receives pay-per-click fees from these linked websites. The Panel finds that Respondent is not using
the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i)
or making a legitimate noncommercial or fair use of the disputed domain name
pursuant to Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v.
Complainant argues that
Respondent is using a typographical error in the confusingly similar disputed
domain name to redirect Internet users to Respondent’s website and attempting
to profit from it through the collection of pay-per-click fees. The Panel agrees and finds that Respondent
has no rights or legitimate interests under Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum
Sept. 19, 2003) (finding that the respondent lacked rights and legitimate
interests in the disputed domain names because it “engaged in the
practice of typosquatting by taking advantage of Internet users who attempt to
access Complainant's <indymac.com> website but mistakenly misspell
Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate
interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain
name to link Internet users to various websites in competition with Complainant
constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See
The Panel finds that
Respondent is using the disputed domain name to intentionally attract Internet
users and profit through the receipt of pay-per-click fees. The Panel finds that this use is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
As established previously, Respondent has engaged in the practice of typosquatting by using a common mistyping of Complainant’s SMARTBARGAINS mark to misdirect Internet users. The Panel finds typosquatting is itself evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also 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 finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smarbargains.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 22, 2010
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