Shoedazzle.com, Inc. v. ICS INC.
Claim Number: FA1405001557085
Complainant is Shoedazzle.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.com>, registered with Pdr Ltd. d/b/a Publicdomainregistry.Com.
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 Honorable Charles K. McCotter, Jr. (Ret.) 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 2, 2014, Pdr Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.com> domain names are registered with Pdr Ltd. d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. d/b/a Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. d/b/a Publicdomainregistry.Com 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 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@sheodazzel.com, postmaster@shoedasle.com, postmaster@shoedazzie.com, postmaster@shoedazzlie.com, postmaster@shoedeazzle.com, postmaster@shoedrazzle.com, postmaster@shoesdazel.com, postmaster@shoesdazz.com, and postmaster@sjoedazzle.com. Also on May 9, 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 June 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Shoedazzle.com, Inc., provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SHOEDAZZLE mark (e.g., Reg. No. 3,736,740, registered January 12, 2010). The disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent has not been commonly known by the disputed domain names. Respondent is using the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
The disputed domain names should be considered as having been registered and being used in bad faith. Respondent has also listed the disputed domain names for sale. Respondent is a recalcitrant, serial cybersquatter. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. Respondent has registered and used the disputed domain names to attract and mislead consumers for its own profit. Respondent’s typosquatting behavior is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Shoedazzle.com, Inc., provides a unique club shopping experience for consumers who seek shoes, handbags, and jewelry based on their preferences. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SHOEDAZZLE mark (e.g., Reg. No. 3,736,740, registered January 12, 2010).
Respondent, ICS, INC., registered the <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.com> domain names. The earliest date Respondent registered the disputed domain names is December 14, 2011. Respondent is using the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant.
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 has rights in the disputed domain names under Policy ¶ 4(a)(i) through registration of the SHOEDAZZLE mark with the USPTO. 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).”); see also 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).
Respondent’s <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i), because they differ only slightly from Complainant’s mark. Respondent either transposes letters, removes letters, substitutes one letter for another, or adds letters to Complainant’s SHOEDAZZLE mark in the disputed domain names. Respondent’s misspelling of the SHOEDAZZLE mark in the disputed domain names does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (finding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent also adds the generic top-level domain (“gTLD”) “.com” to each of the disputed domain names. Respondent’s inclusion of a gTLD to the SHOEDAZZLE mark does not differentiate the domain names from the mark pursuant to Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
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).
Respondent is not commonly known by the <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.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 has not given Respondent permission to use the SHOEDAZZLE mark. Respondent is not sponsored by or affiliated with Complainant. The WHOIS record shows “ICS INC.” as the registrant of the disputed domain names.
Respondent is using the <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.com> domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant. Respondent uses the disputed domain names to provide competing links to websites such as “Sexy Women’s Club Shoes,” “Shoe Dazzle,” “Blue High Heels,” and others. Respondent likely receives pay-per-click fees from its display of the linked websites. The Panel finds that Respondent is not using the <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.com> domain names for 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). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007)(resolution of the <usaa-insurance.net> domain name to a website displaying the complainant’s marks and links to the complainant’s competitors was not 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)).
Respondent has listed the <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.com> domain names for sale. The WHOIS information for the disputed domain names says “The owner of the domain you are researching has it listed for sale.” The Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“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).”).
Respondent is a serial cybersquatter. Complainant argues that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. See MB Financial Bank, N.A. v ICS INC., FA 1552275 (Nat. Arb. Forum May 1, 2014); The American Automobile Association, Inc. v. ICS Inc., D2014-0123 (WIPO Mar. 31, 2014); Tetra Laval Holdings & Finance S.A. v. ICS Inc., D2014-0239 (WIPO Apr. 2, 2014). Multiple prior adverse rulings ordering the transfer of domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008)(the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. Respondent’s use of the disputed domain names to display links likely diverts potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Therefore, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (use of the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant established bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent registered and uses the disputed domain names to attract and mislead consumers for its own profit. It is likely that Respondent earns click-through fees through the use of the disputed domain names. Therefore, Respondent registered and uses the disputed domain names 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.’”).
Respondent’s typosquatting behavior is evidence of bad faith under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003)(typosquatting is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)).
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 <sheodazzel.com>, <shoedasle.com>, <shoedazzie.com>, <shoedazzlie.com>, <shoedeazzle.com>, <shoedrazzle.com>, <shoesdazel.com>, <shoesdazz.com>, and <sjoedazzle.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 18, 2014
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