Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. v. Venkateshwara Distributor Private Limited. / Venkateshwara Distributor Private Limited.
Claim Number: FA1404001555849
Complainant is Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Venkateshwara Distributor Private Limited. / Venkateshwara Distributor Private Limited. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <carolweightgifts.com>, <carolwrighthifts.com>, <carolwrightsgifts.com>, <carolwrigthgifts.com>, and <drleonsrds.com>, registered with Tirupati Domains and Hosting Pvt 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2014; the National Arbitration Forum received payment on April 24, 2014.
On April 25, 2014; Apr 26, 2014, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <carolweightgifts.com>, <carolwrighthifts.com>, <carolwrightsgifts.com>, <carolwrigthgifts.com>, and <drleonsrds.com> domain names are registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the names. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting 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 June 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@carolweightgifts.com, postmaster@carolwrighthifts.com, postmaster@carolwrightsgifts.com, postmaster@carolwrigthgifts.com, and postmaster@drleonsrds.com. Also on June 10, 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 July 7, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant is a direct-mail catalog and online retailer specializing in the retail of a wide variety of health products such as clothing, collectibles, exercise equipment, home furnishings, housewares, and shoes aimed at seniors. Complainant also owns several other brands, including Carol Wright Gifts. This sister company specializes in direct-mail catalog and online retail of kitchen gadget, travel items, gardening supplies, holiday gifts, and women’s apparel merchandise.
2. Complainant owns federal trademark registrations for the CAROL WRIGHT, CAROL WRIGHT GIFTS, and DR. LEONARD’S marks with the United States Patent and Trademark Office (“USPTO”).
a. CAROL WRIGHT (e.g., Reg. No. 1571260 registered December 12, 1989).
b. CAROL WRIGHT GIFTS (e.g., Reg. No. 2290178 registered November 2, 1999).
c. DR. LEONARD’S (e.g., Reg. No. 1818850 registered February 1, 1994).
3. Respondent’s <carolweightgifts.com>, <carolwrighthifts.com>, <carolwrightsgifts.com>, <carolwrigthgifts.com>, and <drleonsrds.com> domain names are confusingly similar to Complainant’s marks.
4. Respondent has no rights or legitimate interests in the <carolweightgifts.com>, <carolwrighthifts.com>, <carolwrightsgifts.com>, <carolwrigthgifts.com>, and <drleonsrds.com> domain names
a. Respondent is not commonly known by the disputed domain names. Respondent has no trademark or intellectual property rights in the domain names and Complainant has not authorized or permitted Respondent to use any of Complainant’s marks for any purpose.
b. Respondent’s disputed domain names are being used to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the links displayed on the resolving websites.
5. Respondent registered and is using the <carolweightgifts.com>, <carolwrighthifts.com>, <carolwrightsgifts.com>, <carolwrigthgifts.com>, and <drleonsrds.com> domain names in bad faith.
a. Respondent is a recalcitrant, serial cybersquatter, as evidenced by the prior UDRP decisions held unfavorably against Respondent. See Complainant’s Exhibit N.
b. Respondent’s resolving websites display pay-per-click links promoting products that compete with Complainant, thus diverting Internet users and disrupting Complainant’s legitimate business. See Complainant’s Exhibit H.
c. Respondent uses the disputed domain names to take advantage of Complainant’s well known trademarks in order to achieve a commercial profit and competitive advantage, resulting from the confusion caused when Internet users, searching for Complainant’s business, are uncertain of Complainant’s association with the disputed domain names.
d. Respondent’s registration and use of the disputed domain names indicates typosquatting behavior.
e. Respondent uses allegedly falsified and incomplete WHOIS contact information, demonstrating a desire to avoid being held accountable.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Complainant asserts that Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. is a direct-mail catalog and online retailer specializing in the retail of a wide variety of health products aimed at seniors. The company was established in 1979 by Dr. Leonard Feldman, and came under the ownership of a private equity investment firm, Cortec Group before being sold to AmeriMark LLC Direct in 2008. Complainant thus contends that Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. are, in fact, one complainant.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated: It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. The Panel here finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and thus will treat them as a single entity in this proceeding.
Complainant is Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. of Edison, New Jersey, USA. Complainant is the owner of USA trademark registrations for the CAROL WRIGHT, CAROL WRIGHT GIFTS and DR. LEONARD’S marks which it uses in connection with its direct-mail and online retailing business specializing in health products, housewares, and associated goods aimed at senior citizens. Complainant has continuously used the marks since at least as early as 1989 and also owns numerous domain names featuring its marks.
Respondent is Venkateshwara Distributor Private Limited. / Venkateshwara Distributor Private Limited of Mumbai, India. Respondent’s registrar’s address is listed as Thane, India.
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 claims it owns federal trademark registrations for the CAROL WRIGHT, CAROL WRIGHT GIFTS, and DR. LEONARD’S marks with the USPTO. See CAROL WRIGHT (e.g., Reg. No. 1571260 registered December 12, 1989); CAROL WRIGHT GIFTS (e.g., Reg. No. 2290178 registered November 2, 1999); DR. LEONARD’S (e.g., Reg. No. 1818850 registered February 1, 1994). The Panel finds that these USPTO registrations satisfy the Policy ¶ 4(a)(i) required showing of rights, regardless of where Respondent dwells. 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.”).
Complainant claims Respondent’s <carolweightgifts.com>, <carolwrighthifts.com>, <carolwrightsgifts.com>, <carolwrigthgifts.com>, and <drleonsrds.com> domain names are confusingly similar to Complainant’s marks. The Panel notes the disputed domain names all add the generic top-level domain ("gTLD") “.com” to the CAROL WRIGHT GIFTS mark and introduce various spelling errors. The Panel finds that these modifications create Policy ¶ 4(a)(i) confusing similarity. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Complainant further claims the <drleonsrds.com> domain name is confusingly similar to Complainant’s mark. The Panel finds that the Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) decision as cited above serves equally to illustrate Respondent has registered a confusingly similar domain name here.
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant claims Respondent is not commonly known by the disputed domain names. Complainant notes Respondent has no trademark or intellectual property rights in the domain names and Complainant has not authorized or permitted Respondent to use any of Complainant’s marks for any purpose. The Panel notes that WHOIS lists “Venkateshwara Distributor Private Limited” as the registrant of record for the disputed domain names. The Panel finds that in the absence of any other evidence, there is no basis for finding Respondent to be known by any of these domain names pursuant to Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant further claims Respondent’s disputed domain names are being used to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant claims Respondent presumably receives pay-per-click fees from the links displayed on the resolving websites. The Panel finds that these generic hyperlink listings to various businesses cannot serve as a basis for a Policy ¶ 4(c)(i) bona fide offering of goods or services, or as a basis for Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims Respondent is a recalcitrant, serial cybersquatter, as evidenced by the prior UDRP decisions held unfavorably against Respondent. See e.g. Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Venkateshwara Distributor Private Ltd., FA 1299746 (Nat. Arb. Forum Feb. 9, 2010); Williams-Sonoma, Inc. v. Venkateshwara Distrib. Priv. Ltd., FA 1361215 (Nat. Arb. Forum Jan. 6, 2011); Frederick’s of Hollywood Group Inc. v. Venkateshwara Distrib. Priv. Ltd., FA 1302434 (Nat. Arb. Forum Mar. 3, 2010). The Panel here finds that these prior decisions evidence a pattern of bad faith use and registration so as to imply bad faith under Policy ¶ 4(b)(ii). 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).
Complainant further claims that Respondent’s resolving websites display pay-per-click links promoting products that compete with Complainant, thus diverting Internet users and disrupting Complainant’s legitimate business. Respondent’s hyperlinks that are in fact competitive with Complainant’s business also provide the basis for a finding of bad faith under Policy ¶ 4(b)(iii). See 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 claims Respondent uses the disputed domain names to take advantage of Complainant’s well-known trademarks in order to achieve a commercial profit and competitive advantage, resulting from the confusion caused when Internet users, searching for Complainant’s business, are uncertain of Complainant’s association with the disputed domain names. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) the panel found that use of a confusingly similar domain name for purposes of promoting hyperlinks gave rise to a Policy ¶ 4(b)(iv) bad faith likelihood of confusion. The Panel here finds that Respondent’s conduct amounts to Policy ¶ 4(b)(iv) bad faith.
Complainant finally claims Respondent’s registration and use of the disputed domain names indicates typosquatting behavior. Domain names that reflect mere typographical errors of Complainant’s marks, warrant an inference of bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <carolweightgifts.com>, <carolwrighthifts.com>, <carolwrightsgifts.com>, <carolwrigthgifts.com>, and <drleonsrds.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 21, 2014
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