Macy's Inc. and its subsidiary Macy's West Stores, Inc. Stores, Inc. v. David Ghou
Claim Number: FA1404001552898
Complainant is Macy's Inc. and its subsidiary Macy's West Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is David Ghou (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <macyx.com>, registered with GoDaddy.com, LLC.
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 April 7, 2014; the National Arbitration Forum received payment on April 7, 2014.
On April 7, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <macyx.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2014 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@macyx.com. Also on April 8, 2014, 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 5, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Policy ¶ 4(a)(i)
1. Complainant uses the MACY’S mark in connection with its retail department store operations. Complainant has long held trademark registration for this mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 78,333, registered June 7, 1910).
2. Respondent’s domain name is confusingly similar to the MACY’s mark. The <macyx.com> domain name merely modifies the mark by misspelling it, and affixes the generic top-level domain ("gTLD") “.com.”
Policy ¶ 4(a)(ii)
3. Respondent has not been commonly known by this <macyx.com> domain name. Respondent has not otherwise been licensed or authorized to use Complainant’s trademark.
4. Respondent is using the <macyx.com> domain name to host a commercial hyperlink page that promotes various goods and services of third-party businesses.
Policy ¶ 4(a)(iii)
5. Respondent is a recalcitrant and serial typosquatter. Respondent has been subject of several prior UDRP decisions.
6. Respondent’s operation of the <macyx.com> domain name disrupts Complainant’s commercial operations.
7. Respondent’s decision to host a variety of advertisements on the <macyx.com> domain name’s website illustrates an intent to capitalize on the likelihood that Internet users who visit the website shall be confused as Complainant’s affiliation.
8. Respondent is typosquatting the <macyx.com> domain name. This conduct is in itself evidence that Respondent has registered the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the retail and related sectors.
2. Complainant has long held trademark registration for this mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 78,333, registered June 7, 1910).
3. The <macyx.com> domain name was registered October 4, 2004.
4. Respondent is using the <macyx.com> domain name to host a commercial hyperlink page that promotes various goods and services of third-party businesses.
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. Complainant claims it uses the MACY’S mark in connection with its retail operations. Complainant states it has long held trademark registration for this mark with the USPTO (Reg. No. 78,333, registered June 7, 1910). The Panel finds Complainant’s longstanding USPTO registration establishes Policy ¶ 4(a)(i) rights in the mark, regardless of where Respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MACY’S mark. Complainant further argues that Respondent’s domain name is confusingly similar to the MACY’S mark. Complainant submits the <macyx.com> domain name merely modifies the mark by misspelling it, and affixes the gTLD “.com.” The Panel notes the domain name removes the apostrophe and letter “s” from the mark, adding the letter “x” and the gTLD. The Panel agrees these changes do little to distinguish the domain name, and determines that the <macyx.com> domain name is confusingly similar to the MACY’S mark pursuant to Policy ¶ 4(a)(i). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also 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).
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 MACY’S trademark and to use it in its domain name, making only minor alterations;
(b) Respondent has then used the <macyx.com> domain name to host a commercial hyperlink page that promotes various goods and services of third-party businesses;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant argues that Respondent has not been commonly known by this <macyx.com> domain name. Complainant notes Respondent has not otherwise been licensed or authorized to use Complainant’s trademarks. The Panel notes the WHOIS information lists “David Ghou” as the registrant of record for the disputed domain name. The Panel agrees there is no basis for finding Respondent is known by this domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e)Complainant also claims Respondent is using the <macyx.com> domain name to host a commercial hyperlink page that promotes various goods and services of third party businesses, some of which direct Internet users to retail providers in competition with Complainant. The Panel notes the disputed domain name presently resolves to a generic hyperlink-laden website, with offers such as “PUBLIC CAR AUCTIONS $500,” “Designer Shoes,” “Handbags,” and “Golf Shoes.” See Compl., at Attached Ex. H. In Gen. Mills, Inc. v. Zuccarini, FA 97050 (Nat. Arb. Forum May 30, 2001), the panel did not find a bona fide offering present in the respondent’s use of the domain name to promote commercial hyperlinks to third-party websites. The Panel here agrees there is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, associated with this domain name.
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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent is a recalcitrant and serial typosquatter. Complainant claims Respondent has been the subject of several prior UDRP decisions. See Enterprise Holdings, Inc. v. Oleg Techino c/o Oleg Techino a/k/a David Ghou c/o David Ghou a/k/a Lidnick Webcorp Inc c/o Lidnick Webcorp a/k/a Orel Hlasek LLC c/o Orel Hlasek, FA 1366013 (Nat. Arb. Forum Feb. 18, 2011); Wells Fargo & Co. v. David Ghou, FA 1507686 (Nat. Arb. Forum July 28, 2013); see also Compl., at Attached Ex. N. The Panel agrees that these prior UDRP proceedings, where Respondent was found to have acted in bad faith, evidence Respondent’s current Policy ¶ 4(b)(ii) bad faith with respect to this domain name. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Secondly, Complainant further claims that Respondent’s operation of the <macyx.com> domain name disrupts Complainant’s commercial operations. The Panel notes that some of the hyperlinks viewable through the disputed domain name’s website make reference to various fashion goods—the kinds of goods sold under the MACY’S mark. See Compl., at Attached Ex. H. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) the panel agreed that related commercial advertising could disrupt the complainant’s business, because these advertisements shuttled Internet users to competing websites and away from the complainant’s own business. The Panel here likewise concludes Policy ¶ 4(b)(iii) bad faith.
Thirdly, Complainant further claims that Respondent’s decision to host a variety of advertisements on the <macyx.com> domain name’s website illustrates an intent to capitalize on the likelihood that Internet users who visit the website shall be confused as to Complainant’s affiliation with the website and integrated hyperlinks. The Panel again notes the hyperlinks posted on the disputed domain name’s website. See Compl., at Attached Ex. H. Complainant presumes that Respondent generates click-through revenue through the linked websites. The Panel agrees that Respondent’s use of the domain name for purposes of commercial hyperlinks is evidence of an attempt to prey upon the likelihood that Internet users may be confused into associating the domain name’s content with Complainant. Accordingly, the Panel finds evidence of Complainant’s bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Fourthly, Complainant also maintains Respondent is typosquatting the <macyx.com> domain name. Complainant argues this conduct is in itself evidence that Respondent has registered the domain name in bad faith. The Panel agrees that ordinarily typosquatting is the act of intentionally registering a common misspelling of a mark in an Internet domain name, and that such conduct is a ground for a finding of bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel finds that the domain name is indeed the product of an act of typosquatting and hence bad faith for the purposes of Policy ¶ 4(a)(iii).
Fifthly, 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 name using the MACY’S mark and the manner in which it has been used, Respondent registered and used the domain name 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 <macyx.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 8, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page