Mason Companies, Inc. v. Global Vip Traffic LLC
Claim Number: FA1108001402375
Complainant is Mason Companies, Inc. (“Complainant”), represented by William D. Schultz of Merchant & Gould P.C., Minnesota, USA. Respondent is Global Vip Traffic LLC (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sexyshoesmall.com>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2011; the National Arbitration Forum received payment on August 9, 2011.
On August 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sexyshoesmall.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 August 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2011 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@sexyshoesmall.com. Also on August 10, 2011, 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 September 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <sexyshoesmall.com> domain name is confusingly similar to Complainant’s SHOEMALL mark.
2. Respondent does not have any rights or legitimate interests in the <sexyshoesmall.com> domain name.
3. Respondent registered and used the <sexyshoesmall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mason Companies, Inc., offers computerized online retail services and mail order catalogue services in the field of clothing and footwear. Complainant owns multiple trademark registrations for the SHOEMALL and related marks with the United States Patent and Trademark Office (“USPTO”) and the European Union Office for Harmonization in the Internal Market (“OHIM”):
USPTO
SHOE MALL Reg. No. 2,605,442 registered August 6, 2002;
SHOEMALL Reg. No. 2,701,366 registered March 25, 2003;
SHOEMALL Reg. No. 2,992,709 registered September 6, 2005;
SHOEMALL Reg. No. 3,021,263 registered November 29, 2005;
SHOEMALL.COM Reg. No. 3,299,876 registered September 25, 2007;
OHIM
SHOE MALL Reg. No. 858,803 registered December 22, 1999.
Respondent, Global Vip Traffic LLC, registered the <sexyshoesmall.com> domain name on January 26, 2004. The disputed domain name resolves to a website displaying numerous competing third-party advertisements in the form of pay-per-click links for footwear.
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 has registered its SHOEMALL and related marks with various trademark agencies, including the USPTO (Reg. No. 2,701,366 registered March 25, 2003) and OHIM (Reg. No. 858,803 registered December 22, 1999). In line with Goldfish Card Servs. Ltd. v. Connolly, FA 1000020 (Nat. Arb. Forum July 11, 2007), finding trademark rights as a result of OHIM registration, and Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), holding that USPTO registration established complainant’s rights in a mark, the Panel here concludes that Complainant’s trademark registrations effectively prove its rights in the SHOEMALL mark for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <sexyshoesmall.com> domain name is confusingly similar to Complainant’s SHOEMALL mark because the addition of the generic term “sexy,” the letter “s,” and the generic top-level domain (“gTLD”) “.com” does not remove the disputed domain name from the realm of confusing similarity. In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the Panel held the addition of the term “travel” was insignificant, and, in Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the panel found that the added term “bomb” did not distinguish the disputed domain name. In line with these prior cases, the Panel determines that the term “sexy” has no effect on the essential nature of the disputed domain name and does not prevent a finding of confusing similarity. Likewise, the Panel agrees with the panel in Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006), where disputed domain names were found confusingly similar to the mark despite the addition of the letter “s” and a gTLD. As a result, the Panel determines that Respondent’s <sexyshoesmall.com> domain name is confusingly similar to Complainant’s SHOEMALL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires Complainant to first establish a prima facie case against Respondent before shifting the burden to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. Complainant’s presentation of a prima facie case in these proceedings and Respondent’s subsequent failure to respond are sufficient for the Panel to conclude that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the evidence in the record to determine whether Complainant has any rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant contends that Respondent has no permission to use Complainant’s mark and is not a licensee of Complainant. The WHOIS information for the <sexyshoesmall.com> domain name identifies the registrant as “Global Vip Traffic LLC,” which suggests no association between Respondent and the disputed domain name. Based on these facts, Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel concurs and holds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that the website resolving from the <sexyshoesmall.com> domain name features a variety of presumably pay-per-click links to third-party shoe providers that compete with Complainant. Complainant contends that the use of its mark in connection with the sale and advertisement of other’s goods does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel, relying on cases that hold directories of competing links do not satisfy Policy ¶¶4(c)(i) or (iii), such as Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), concludes that Respondent has not shown rights in the disputed domain name.
Complainant also asserts that there is a large box on the resolving website advertising that the <sexyshoesmall.com> domain name is for sale. Previous cases have found that a respondent’s willingness to sell a disputed domain name indicates a lack of rights and legitimate interests. See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). In accord with these holdings, the Panel finds that Respondent has shown no rights and legitimate interests in the <sexyshoesmall.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is offering the disputed domain name for sale via a message on the resolving website and that this offer is evidence of Respondent’s bad faith registration and use. The Panel agrees with Complainant, finding bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Complainant contends that Respondent uses the disputed domain name to redirect Internet users to a directory web page featuring many third-party links offering footwear in competition with Complainant. This directory website substantially disrupts Complainant’s business because unsuspecting Internet users are directed away from Complainant’s actual site and may subsequently follow one of the displayed links to arrive at a competitor’s site. The Panel finds that such efforts to disrupt Complainant’s business show bad faith registration and use according 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); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent’s operation of a directory website reached via the disputed domain name presumably financially benefits Respondent. By displaying links that are related to Complainant’s business, there is a greater likelihood that the links will be of interest to Internet users arriving at the site and that the Internet users will subsequently click on one of them. Each click results in profit to Respondent by way of “click-through” fees. The Panel finds that Respondent’s efforts to increase traffic to its website, and consequently profit by attracting Complainant’s customers, are evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innerversion Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that at the time Respondent registered the <sexyshoesmall.com> domain name, it had constructive knowledge of Complainant’s rights in the SHOEMALL mark because the mark was registered with the USPTO. While panels have previously determined that constructive notice is insufficient to prove bad faith under the Policy, the Panel finds that it can infer Respondent had actual notice of the mark, which reveals bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.”). The Panel makes such an inference in this case.
The Panel finds 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 <sexyshoesmall.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 16, 2011
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