Shoedazzle.com, Inc. v. Above.com Domain Privacy / Above.com Domain Privacy
Claim Number: FA1405001557077
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy / Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com>, registered with Above.com Pty 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 May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 5, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 May 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@shoebazzle.com, postmaster@shoedazxle.com, postmaster@shoesdazzles.com, postmaster@shoesdizzle.com. Also on May 6, 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 29, 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
a. Policy ¶ 4(a)(i)
i. Complainant, Shoedazzle.com, Inc., provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences.
ii. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SHOEDAZZLE mark (Reg. No. 3,736,740, registered January 12, 2010).
iii. The disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark.
b. Policy ¶ 4(a)(ii)
i. Respondent has no rights or legitimate interests in the disputed domain names.
ii. Respondent has not been commonly known by the disputed domain names.
iii. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
c. Policy ¶ 4(a)(iii)
i. The disputed domain names should be considered as having been registered and being used in bad faith.
ii. Respondent has also listed the <shoedazxle.com> domain name for sale.
iii. Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant.
iv. Respondent is using the disputed domain names to attract and mislead consumers for its own profit.
v. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
d. The earliest date on which Respondent registered the disputed domain names was July 22, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Shoedazzle.com, Inc. of Los Angeles, CA, USA. Complainant is the owner of a domestic trademark registration for the mark SHOEDAZZLE which it has used continuously since at least as early as January, 2012 in connection with its business of providing on-line shoe club ordering services.
Respondent is Above.com Domain Privacy / Above.com Domain Privacy of Victoria, Australia. Respondent’s registrar’s address is reflected as being in the same location. Respondent registered the disputed domain names as follows;
<shoebazzle.com> was registered on or about July 23, 2011; <shoedazxle.com> was registered on or about August 21, 2012; <shoesdazzles.com> was registered on or about October 21, 2012; and, <shoesdizzle.com> was registered on or about August 25, 2012.
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 argues that it provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences. Complainant alleges that it is the owner of a trademark registration with the USPTO for the SHOEDAZZLE mark (Reg. No. 3,736,740, registered January 12, 2010). The Panel notes that while Respondent resides in Australia, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registered its mark in the country of Respondent’s residence, so long as it can demonstrate rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel here finds that Complainant’s registration of the SHOEDAZZLE mark with the USPTO establishes that it has rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant asserts that Respondent’s <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent either substitutes one letter for another and/or adds an additional letter to Complainant’s SHOEDAZZLE mark in the disputed domain names. The Panel finds that Respondent’s misspelling of Complainant’s SHOEDAZZLE mark in the disputed domain names does not distinguish the domain names from the mark 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”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel further notes that Respondent has added the generic top-level domain (“gTLD”) “.com” to each of the disputed domain names. The Panel finds that Respondent’s inclusion of a gTLD to a mark does nothing to prevent a panel from finding confusing similarity pursuant to Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). The Panel here finds that Respondent’s <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names are confusingly similar to Complainant’s SHOEDAZZLE mark pursuant to Policy ¶ 4(a)(i).
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 alleges that Respondent has not been commonly known by the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names. Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the SHOEDAZZLE mark in a domain name. The Panel notes that the WHOIS record indicates that “Above.com Domain Privacy / Above.com Domain Privacy” is the registrant of the disputed domain names. The Panel finds that Respondent is not commonly known under the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant states Respondent is using the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent uses the disputed domain names to provide competing advertisements, including “Designer Fashion Boutique,” “JustFab Fall Boots Sales,” “Sexy Shoes & Heels,” and more. Complainant alleges that Respondent may receive pay-per-click fees from these linked websites. Prior UDRP panels have held that a respondent’s use of a disputed domain name to resolve to competing hyperlink directories is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 here finds that Respondent is not using the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names for 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).
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 alleges that Respondent has also listed the <shoedazxle.com> domain name for sale. The Panel notes that the WHOIS record for the <shoedazxle.com> domain name states “The owner of the domain you are researching has it listed for sale.” In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel held that “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” The Panel here finds that Respondent has registered and is using the <shoedazxle.com> domain name in bad faith according to Policy ¶ 4(b)(i).
Complainant argues that Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. The Panel again notes that Respondent is using the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names to offer competing advertisements such as “Sexy Shoes & Heels,” “Women’s Shoes,” “High Heels,” and more. Complainant asserts that these links provided on Respondent’s disputed domain names divert potential customers away from Complainant to third-party website, which disrupts Complainant’s legitimate business. The Panel finds that Respondent has registered and is using the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent is using the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names to attract and mislead consumers for its own profit. Complainant argues that Respondent is using the disputed domain names for a “click through” website for which it likely receives revenue for each misdirected Internet user. The Panel again notes that Respondent is using the disputed domain names to provide competing hyperlinks for other shoe distributors and sellers. The Panel finds that Respondent has registered and is using the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names in bad faith pursuant to 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.’”).
Complainant states that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel again notes that Respondent has added a letter or substituted one letter in the mark for another in the <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names, all changes that may be considered common typographical errors of the SHOEDAZZLE mark. The Panel finds that Respondent has engaged in typosquatting, and therefore finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii). 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).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
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 <shoebazzle.com>, <shoedazxle.com>, <shoesdazzles.com>, and <shoesdizzle.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 12, 2014
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