Provide Commerce, Inc. v. Private Registration / WhoisGuardService.com
Claim Number: FA1311001529489
Complainant is Provide Commerce, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <proflowerd.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
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 November 12, 2013; the National Arbitration Forum received payment on November 12, 2013. The Complaint was submitted in Chinese and English.
On November 13, 2013, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <proflowerd.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. 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 November 26, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 16, 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@proflowerd.com. Also on November 26, 2013, the Chinese language 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 December 20, 2013, 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s < proflowerd.com> domain name, the domain name at issue, is confusingly similar to Complainant’s PROFLOWERS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Provide Commerce, Inc., is a leading online provider of high quality gifts such as flowers, chocolates, jewelry, clothing, housewares, and other unique gift selections. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PROFLOWERS mark (Reg. No. 2,476,976, registered August 14, 2001). The disputed domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark.
Respondent has not been commonly known by the disputed domain name. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s advertised pay-per-click links displayed on the resolving website promote products that compete with Complainant. Respondent has registered and used the disputed domain name to attract and mislead consumers for its own profit. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Respondent had actual knowledge of Complainant and its rights. The earliest date on which Respondent registered the disputed domain name was March 19, 2009.
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 is a leading online provider of high quality gifts such as flowers, chocolates, jewelry, clothing, housewares, and other unique gift selections and is the owner of a trademark registration with the USPTO for the PROFLOWERS mark (Reg. No. 2,476,976, registered August 14, 2001). Respondent apparently resides in China. However, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registered its mark in the country in which Respondent resides, so long as it can establish rights in some jurisdiction. 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). Thus, the Panel concludes that Complainant’s registration of the PROFLOWERS mark with the USPTO proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <proflowerd.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. Respondent substitutes the letter “s” in Complainant’s PROFLOWERS mark for the letter “d” in its <proflowerd.com> domain name. The Panel finds that Respondent’s substitution of letters in a mark for its domain name does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Respondent included the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in its disputed domain name; however, Respondent’s inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Thus, Respondent’s <proflowerd.com> domain name is confusingly similar to Complainant’s PROFLOWERS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has not been commonly known by the <proflowerd.com> domain name. The WHOIS record lists “Private Registration / WhoisGuardService.com” as the registrant of the disputed domain name. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and that it has not given Respondent permission to use Complainant’s mark in a domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, the Panel finds that Respondent is not commonly known by <proflowerd.com> domain name under Policy ¶ 4(c)(ii).
Respondent is using the <proflowerd.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s disputed domain name resolves to a website that displays competing links titled “Flowers – 20% Off Coupon,” “Flowers at 1-800-FLOWERS,” and more. Presumably, Respondent receives pay-per-click fees from these linked websites. Therefore, Respondent’s use of the <proflowerd.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s advertised pay-per-click links displayed on the resolving website promote products that compete with Complainant. Specifically, Respondent’s <proflowerd.com> domain name resolves to a website that provides competing hyperlinks titled “Flowers – 20% Off Coupon,” “Flowers at 1-800-FLOWERS,” and others. Complainant claims that these links divert potential customers away from Complainant to third-party websites, which Complainant claims disrupts Complainant’s business. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel determined that “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” The Panel here agrees that the presence of competing hyperlinks on the domain name’s resolving website is indicative of Policy ¶ 4(b)(iii) bad faith disruption.
Respondent has registered and used the <proflowerd.com> domain name to attract and mislead consumers for its own profit. As noted, Respondent’s <proflowerd.com> domain name resolves to a webpage containing competing links such as “Flowers – 20% Off Coupon,” “Flowers at 1-800-FLOWERS,” “800 Flowers,” and others. Presumably, Respondent is using the disputed domain name in connection with generating revenue as “click through” websites. Accordingly, he Panel holds that Respondent has registered and is using the <proflowerd.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Moreover, Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Respondent substitutes the letter “s” for the letter “d” in Complainant’s PROFLOWERS mark. Previous panels have 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. 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).”). In this case, the <proflowerd.com> domain name is an example of typosquatting and evidence of bad faith under Policy ¶ 4(a)(iii).
It appears that Respondent had actual knowledge of Complainant and its rights based on Respondent’s resolving websites offering the same types of services offered by Complainant. Respondent’s disputed domain name contains links that provide competing gift services. Therefore, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <proflowerd.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 21, 2013
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