Shoebuy.com, Inc. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1405001557173
Complainant is Shoebuy.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoebut.com>, registered with Fabulous.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.
James A. Carmody, Esq., 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 1, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <shoebut.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@shoebut.com. Also on May 13, 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 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <shoebut.com> domain name, the domain name at issue, is confusingly similar to Complainant’s SHOE BUY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shoebuy.com, Inc., is one of the largest online retailers, which offers footwear, bags, apparel, and accessories and is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SHOEBUY.COM mark (e.g., Reg. No. 1,518,099 registered December 11, 2001). The disputed domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark.
Respondent has not been commonly known by the disputed domain name. The disputed domain name redirects Internet users to Complainant’s own website in violation of Complainant’s affiliate program. The domain name should be considered as having been registered and being used in bad faith. Respondent has listed the disputed domain name for sale and is a recalcitrant, serial cybersquatter. Respondent is using the disputed domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program. Respondent must have had actual notice of Complainant’s rights in the SHOEBUY mark when it registered the disputed domain name. Respondent’s typosquatting is, in and of itself, evidence of bad faith. Respondent registered the <shoebut.com> domain name on January 7, 2004.
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 is one of the largest online retailers, which offers footwear, bags, apparel, and accessories and is the owner of trademark registrations with the USPTO for the SHOEBUY.COM mark (e.g., Reg. No. 1,518,099, registered December 11, 2001). Although Respondent resides in Isle of Man, Policy ¶ 4(a)(i) does not require a trademark registration in the country of Respondent’s origin. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel concludes that Complainant has proved its rights in the SHOEBUY.COM mark pursuant to Policy ¶ 4(a)(i) through its USPTO registration. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <shoebut.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. Respondent substitutes the letter “y” in SHOEBUY.COM mark with the letter “t.” A respondent’s substitution of letters in a mark is inconsequential to a 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”). Thus, the Panel concludes that Respondent’s <shoebut.com> domain name is confusingly similar to Complainant’s SHOEBUY.COM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has not been commonly known by the <shoebut.com> domain name, and Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the SHOEBUY.COM mark in a domain name. The Panel notes that the WHOIS record indicates that “Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT” is the registrant of the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known under the <shoebut.com> domain name pursuant to 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).
Respondent’s <shoebut.com> domain name redirects Internet users to Complainant’s own website in violation of Complainant’s affiliate program. In Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006), the panel found that respondent’s use of the disputed domain names to divert Internet users attempting to reach complainant’s website and in breach of complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). Therefore, the Panel holds that Respondent’s decision to send Internet users to Complainant’s own website in an attempt to exploit an affiliate agreement is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has listed the <shoebut.com> domain name for sale. The Panel notes that the WHOIS record for the disputed domain name states “The owner of the domain you are researching has it listed for sale.” Complainant has included a screenshot of an auction website depicting bids for the disputed domain name. Prior UDRP panels have found that a respondent’s general offer to sell a domain name can demonstrate evidence of bad faith. 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).”). Therefore, the Panel finds that Respondent has registered and is using the <shoebut.com> domain name in bad faith under Policy ¶ 4(b)(i).
It appease that Respondent is a recalcitrant, serial cybersquatter. Black Hills Ammunition, Inc. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT, FA 1540661 (Nat. Arb. Forum Feb. 26, 2014); Brown Shoe Co., Inc. and its subsidiary Brown Group Retail, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1520868 (Nat. Arb. Forum Nov. 6, 2013); Vanguard Trademark Holdings USA LLC v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1493712 (Nat. Arb. Forum May 14, 2013). In TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) the panel concluded, “These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).” Therefore, the Panel concludes that Respondent’s prior UDRP proceedings resulting in bad faith findings show that it has registered the <shoebut.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Respondent is using the <shoebut.com> domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program. Respondent’s registration and use of the disputed domain name while a member of Complainant’s affiliate program evidences bad faith under Policy ¶ 4(a)(iii). The Panel finds that Respondent has registered and is using the <shoebut.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program).
Respondent must have had actual notice of Complainant’s rights in the SHOEBUY.COM mark when it registered the <shoebut.com> domain name given that Respondent was a member of Complainant’s affiliate program. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the SHOEBUY.COM mark when it registered the disputed domain name, demonstrating bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”)
Respondent’s typosquatting is, in and of itself, evidence of bad faith. The Panel observes that Respondent replaces the letter “y” with the letter “t” in Complainant SHOEBUY.COM mark in forming the <shoebut.com> domain name. Previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark. 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).”). Consequently, the Panel finds that Respondent has engaged in typosquatting, showing bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoebut.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 12, 2014
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