Sterling Jewelers Inc. v. Osama Eltohamy / Toto
Claim Number: FA1404001553711
Complainant is Sterling Jewelers Inc. (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is Osama Eltohamy / Toto (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jzred.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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2014; the National Arbitration Forum received payment on April 11, 2014.
On April 11, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <jzred.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 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 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@jzred.com. Also on April 14, 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 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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" 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.
i. Complainant owns the JARED mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,150,413, registered Oct. 3, 2006).
ii. Complainant’s rights in the JARED mark are further demonstrated through its trademark registrations with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 727,807, registered November 5, 2008).
iii. Complainant uses the JARED mark in connection with jewelry and jewelry store services.
iv. Complainant operates online through <jared.com>, which has been in use since 1994.
i. Policy ¶ 4(a)(i)
1. The <jzred.com> domain name is confusingly similar to Complainant’s JARED mark because Respondent has simply substituted the letter “z” for the “a” in the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <jzred.com> domain name. Respondent is neither licensed nor authorized to use the JARED mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. The disputed domain name previously re-directed to a third-party jewelry page, namely <amazon.com>. Respondent received financial compensation for product advertising and directing consumers to the linked sites.
5. As of April 8, 2014, the disputed domain name resolves to a 404 “page not found” error message.
iii. Policy ¶ 4(a)(iii)
1. Respondent previously used the disputed domain name to direct Internet users to amazon.com’s jewelry page. Respondent used the JARED mark in order to attract Internet traffic to a third-party website in an effort to generate revenue for Respondent’s own benefit.
2. Respondent’s typosquatting behavior is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses the JARED mark in connection with jewelry and jewelry store services. Complainant claims to own the JARED mark through its trademark registrations with the USPTO (e.g., Reg. No. 3,150,413, registered Oct. 3, 2006). Complainant argues that its rights in the JARED mark are further demonstrated through trademark registrations with the CIPO (e.g., Reg. No. 727,807, registered Nov. 5, 2008). Complainant argues that such registrations are sufficient to establish rights in the JARED mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. For example, in W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) the panel stated, “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.” Accordingly, even though the record indicates that Respondent operates in Egypt, the Panel finds that Complainant’s USPTO and CIPO trademark registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <jzred.com> domain name is confusingly similar to Complainant’s JARED mark because Respondent has simply substituted the letter “z” for the “a” in the mark. The Panel notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that a domain name differing from a mark by a single letter does not escape confusing similarity, and that the affixation of gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. 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”); 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). As such, the Panel finds that Respondent’s <jzred.com> domain name is confusingly similar to Complainant’s JARED mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <jzred.com> domain name. The Panel notes that the WHOIS information identifies “Osama Eltohamy / Toto” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the JARED mark. The Panel notes that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <jzred.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant states that the disputed domain name previously re-directed Internet users to a third-party jewelry page, namely <amazon.com>. Complainant alleges that Respondent was involved in amazon.com’s associate program and therefore received financial compensation for product advertising and directing consumers to the linked sites. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used to forward Internet users to a third-party website that provides products competing with those of Complainant. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent’s previous use of the disputed domain name did not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ (4)(c)(i) and 4(c)(iii), respectively.
Further, Complainant notes that as of April 8, 2014, the disputed domain name resolves to a 404 “page not found” error message. Complainant asserts that it contacted amazon.com on April 7, 2014 to report Respondent’s use of the disputed domain name as being in violation of the associate agreement. Complainant argues that the resulting non-use of the disputed domain name should not preclude a transfer of the disputed domain name because Respondent could restore the resolving page to re-direct to another site from which Respondent could improperly benefit. Previous panel have been persuaded under similar circumstances where the page is inactive. See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). The Panel determines that the disputed domain name is inactive, and find that Respondent’s current non-use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4 (c)(iii).
Complainant has proven this element.
Complainant argues that Respondent previously used the disputed domain name to direct Internet users to amazon.com’s jewelry page. Complainant urges that such use misleads users as to Complainant’s affiliation with the disputed domain name and reachable pages. In so doing, Complainant argues that Respondent used the JARED mark in order to mislead and attract Internet traffic to a third-party website in an effort to generate revenue for Respondent’s own benefit. Complainant contends that such conduct warrants a finding of bad faith. Previous panels have found evidence of bad faith where the respondent is attempting to mislead and divert Internet users through a confusingly similar domain name to a third-party website for the respondent’s own commercial gain. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel agrees that Respondent’s previous use of the disputed domain name was in a manner conforming to Policy ¶ 4(b)(iv) bad faith.
Complainant asserts that Respondent’s behavior constitutes typosquatting. While Complainant’s assertion was conveyed solely in its Policy ¶ 4 (a)(i) section, the Panel considers the suggestion in determining Respondent’s bad faith. Panels have consistently held that typosquatting is meant to take advantage of typographical errors, and is thus motivated by bad faith. 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).”). The <jzred.com> domain name differs from the JARED mark by a single letter, namely, the “a” is replaced with the letter “z.” The Panel agrees that the circumstances demonstrate that Respondent has engaged in typosquatting and finds this behavior to serve as an inference of bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <jzred.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 13, 2014
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