Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1204001439309
Complainant is Charlotte Russe Merchandising, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <charlotterousse.com> and <charletterusse.com>, registered with Answerable.com (I) Pvt Ltd.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 13, 2012.
On April 14, 2012, Answerable.com (I) Pvt Ltd confirmed by e-mail to the National Arbitration Forum that the <charlotterousse.com> and <charletterusse.com> domain names are registered with Answerable.com (I) Pvt Ltd and that Respondent is the current registrant of the names. Answerable.com (I) Pvt Ltd has verified that Respondent is bound by the Answerable.com (I) Pvt Ltd 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 April 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2012 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@charlotterousse.com, postmaster@charletterusse.com. Also on April 16, 2012, 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 May 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Essentially Complainant contends:
(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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant was ordered to submit a copy of its complaint in a word processing format (it had been submitted only in a scanned PDF format). Complainant failed to do this within the allotted time.
While the Panel could have dismissed the case for failure to comply with its procedural order, such a result would not be just for the client. The Panel will be content to admonish CitizenHawk, Inc. for its failure to obey the Panel’s procedural order (or to explain why it was not possible to obey the order).
(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.
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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling the domain name:
(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.”).
Policy ¶4(a)(i) requires Complainant to demonstrate rights in its CHARLOTTE RUSSE mark. Complainant submitted proof it has several trademark registrations with the USPTO (e.g., Reg. No. 1,485,692 registered April 19, 1988). The Panel finds Complainant has successfully established rights in its mark through its registrations with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶4(a)(i)). Complainant need not register its mark in the country where Respondent resides and operates (India) for the purposes of Policy ¶4(a)(i). 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues the <charlotterousse.com> and <charletterusse.com> domain names are confusingly similar to its CHARLOTTE RUSSE mark. Complainant points out the disputed domain names both contain the generic top-level domain (“gTLD”) “.com,” and both names differ from the mark by a single letter. The Panel finds the <charlotterousse.com> domain name adds an extra letter “o” and the <charletterusse.com> domain name replaces the letter “o” with the letter “e.” The panel in Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), stated that misspelling words and adding letters to words does not create a distinctive mark from the complainant’s and leaves the domain name confusingly similar to the complainant’s mark. In Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), the panel held that the addition of the gTLD “.com” does not properly distinguish the domain name from the mark. The Panel finds the changes made within the disputed domain names do not sufficiently alter the domain names from Complainant’s mark and concludes the <charlotterousse.com> and <charletterusse.com> domain names are confusingly similar to the CHARLOTTE RUSSE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 submits evidence of the WHOIS information for both disputed domain names and argues Respondent is not commonly known by the domain names. Complainant also claims Respondent does not have authorization to register the mark in a domain name and is not sponsored by or legitimately affiliated with Complainant in any way. The submitted WHOIS information for both domain names identifies the registrant as “Private Registrations Aktien Gesellschaft / Domain Admin,” which the Panel finds not demonstrate Respondent is commonly known by either the <charlotterousse.com> or <charletterusse.com> domain name. The panel in United Way of Am. v. Zingaus, FA 1036202 (Nat. Arb. Forum Aug. 30, 2007), stated that no proof existed to suggest that the respondent was licensed to register the domain name and the WHOIS information did not support a finding that the respondent was commonly known by the disputed domain, which did not satisfy the requirements of Policy ¶4(c)(ii). The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), concluded that the respondent was not commonly known by the disputed domain name because the WHOIS information did not support such a conclusion, and the complainant did not authorize use of its mark in a domain name. This Panel determines, based on the WHOIS information and Respondent’s lack of authorization to use the mark in any way, Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant argues Respondent uses the disputed domain names to reroute consumers to its website, which offers links to Complainant’s competitors and generates fees for each click on the hyperlinks displayed. Previous panels have held offering “pay-per-click” hyperlinks to third-party businesses on a resolving website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a domain name. See Computer Doctor Franchise Sys., Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum Sep. 8, 2000) (finding that the respondent’s website, which contained only links to other websites, did not demonstrate a bona fide offering of goods or services or a legitimate noncommercial purpose); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii).”). The Panel finds using the <charlotterousse.com> and <charletterusse.com> domain names to display hyperlinks of competing businesses in order to generate referral fees is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent has demonstrated a pattern of registering domain names using marks belonging to other entities and submits evidence of past adverse decisions against Respondent. See Panduit Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1417221 (Nat. Arb. Forum Jan. 11, 2012); see also GOLFNOW, LLC. V. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1430960 (Nat. Arb. Forum Mar. 30, 2012). This Panel concludes evidence of at least three decisions transferring domain names from Respondent to the complaining party supports a finding Respondent is engaged in a bad faith pattern of “cybersquatting” under Policy ¶4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant contends registering confusingly similar domain names to host a website that displays sponsored third-party hyperlinks generating referral fees is evidence of bad faith registration and use. Complainant submits screenshots as evidence of Respondent’s bad faith registration and use of the disputed domain names, which shows the web page displays hyperlinks to apparel retailers. The panel in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), held the respondent’s use of the disputed domain name to host third-party hyperlinks in competition with Complainant’s business demonstrated bad faith because the respondent was presumed to receive fees in exchange for diverting Internet users to other websites. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) the panel found bad faith registration and use after concluding the respondent used the domain name to host a website featuring links to competitors’ websites and likely received referral fees. This Panel finds Respondent’s use of the <charlotterousse.com> and <charletterusse.com> domain names to confuse consumers, attract Internet traffic to its resolving website, and receive “pay-per-click” fees amounts to bad faith registration and use under Policy ¶4(b)(iv).
This Panel has frequently held in using a privacy registration (effectively holding the registration of a domain name in a bare trust) in a business context raises a rebuttable presumption of bad faith registration and use. While such devices may well be merited and bona fide in the personal context, they are not in the business context. Over time, any privacy service will appear to be a serial UDRP violator, but the issue is really one of failing to provide accurate WHOIS information. Failing to provide accurate information raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <charlotterousse.com> and <charletterusse.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, June 6, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page