PersonalizationMall.com v. Ryan G Foo / PPA Media Services
Claim Number: FA1406001563873
Complainant is PersonalizationMall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <personaliationmall.com> and <personalisationmall.com>, registered with Internet.bs Corp.
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 June 10, 2014; the National Arbitration Forum received payment on June 10, 2014.
On June 16, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <personaliationmall.com> and <personalisationmall.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@personaliationmall.com, postmaster@personalisationmall.com. Also on June 24, 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 22, 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 names be transferred from Respondent to Complainant.
Complainant
i. Complainant, Personalizationmall.com, has been using the PERSONALIZATIONMALL.COM mark in commerce since 1998 in connection with online retailing services related to personalized and customizable merchandise.
ii. Complainant has valid trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PERSONALIZATIONMALL.COM mark (Reg. No. 3,996,778, registered July 19, 2011), the PERSONALIZATION MALL.COM mark (Reg. No. 3,491,562, registered August 26, 2008), and the PERSONALIZATION MALL mark (Reg. No. 2,561,853, registered Apr. 16, 2002).
iii. The domain names <personaliationmall.com> and <personalisationmall.com> are confusingly similar to the trademarks in which Complainant has rights. These domain names merely introduce one-character spelling errors into the marks.
i. Respondent is not commonly known by the disputed domain names.
ii. Respondent is using the disputed domain name <personaliationmall.com> to redirect Internet users to Complainant’s own website.
iii. Respondent is using the disputed domain name <personalisationmall.com> to redirect Internet users to a website featuring generic links to third party websites, some of which compete directly with Complainant’s business.
i. Respondent has engaged in typosquatting.
ii. Respondent is disrupting Complainant’s business through use of the disputed domain names.
iii. Respondent is using the disputed domain names for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products sold by direct competitors of Complainant and by collecting click-through revenue from the site.
iv. Respondent’s registry of a confusingly similar mark to Complainant’s while Respondent was a member of Complainant’s affiliate program indicates intent and is evidence of bad faith.
v. Respondent’s typosquatting behavior is evidence of bad faith.
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 alleges that it has been using the PERSONALIZATIONMALL.COM mark in commerce since 1998 in connection with online retailing services related to personalized and customizable merchandise. Complainant contends that it has a valid trademark registration with the USPTO for the PERSONALIZATIONMALL.COM mark (USPTO Reg. No. 3,996,778, registered July 19, 2011), the PERSONALIZATION MALL.COM mark (USPTO Reg. No. 3,491,562, registered August 26, 2008) and the PERSONALIZATION MALL mark (USPTO Reg. No. 2,561,853, registered Apr. 16, 2002). Although Respondent resides in Chile, under Policy ¶ 4(a)(i) Complainant need not register its mark in the country that Respondent resides. 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). Complainant’s registrations of the PERSONALIZATION MALL mark, the PERSONALIZATION MALL.COM mark, and the PERSONALIZATIONMALL.COM mark establish Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that the domain names <personaliationmall.com> and <personalisationmall.com> are confusingly similar to the trademarks in which Complainant has rights. The domain names in dispute merely create typographical errors in Complainant’s mark—such errors create an inference of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that “[a] domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”). Further, the Panel finds the introduction of a generic top-level domain ("gTLD") is not distinctive under the UDRP. See 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). Accordingly, the Panel finds that the <personaliationmall.com> and <personalisationmall.com> domain names are confusingly similar to the PERSONALIZATIONMALL.COM mark, PERSONALIZATION MALL.COM mark, and PERSONALIZATION MALL 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.”).
Complainant claims that Respondent is not commonly known by the disputed domain names <personaliationmall.com> and <personalisationmall.com>. The registrant of the disputed domain names is listed as “Ryan G Foo”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel found 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. The present circumstances are comparable; due to Respondent’s default, the only evidence available to the Panel is the name listed in the WHOIS information. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain names <personaliationmall.com> and <personalisationmall.com> under Policy ¶ 4(c)(i).
Complainant alleges that Respondent is using the disputed domain name <personalisationmall.com> to redirect Internet users to Complainant’s own website. Respondent’s disputed domain name <personalisationmall.com> resolves to Complainant’s web page. The Panel finds that Respondent is not using the disputed domain name <personalisationmall.com> for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii), as the disputed domain name resolves to Complainant’s own website, through means over which Complainant has no control. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”).
Complainant asserts that Respondent is using the disputed domain name <personaliationmall.com> to redirect Internet users to a website featuring generic links to third party websites, some of which compete directly with Complainant’s business. The disputed domain name <personaliationmall.com> resolves to a web page featuring links that lead consumers to products of Complainant’s competitors. The links include “Personalized Twin Gifts”, “Things Remembered Gifts”, and “Cheap Personalized Baby Gifts.” The Panel finds that respondent is not using the disputed domain name <personaliationmall.com> for a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii), as the disputed domain name leads to a web page that links consumers to direct competitors of Complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant has proven this element.
Complainant contends that Respondent is disrupting Complainant’s business through use of the disputed domain name <personaliationmall.com>. Complainant claims that Respondent is using the disputed domain name <personaliationmall.com> to redirect Internet users to websites that directly compete with the services offered by Complainant. The links at the disputed domain name include “Personalized Twin Gifts”, “Things Remembered Gifts”, and “Cheap Personalized Baby Gifts.” The Panel determines that Respondent has registered and is using the disputed domain name <personaliationmall.com> in bad faith pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent is using the disputed domain names for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products sold by direct competitors of Complainant and by collecting click-through revenue from the site. Respondent’s disputed domain name <personaliationmall.com> leads to a website that features links to products that directly compete with Complainant’s. The links featured on the page resolved to by the disputed domain name <personaliationmall.com> are similar to the products offered by Complainant. Complainant presumes that Respondent receives compensation for promoting the links. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and that Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent’s registration of a confusingly similar mark to Complainant’s while Respondent was a member of Complainant’s affiliate program indicates intent and is evidence of bad faith. Respondent is a member of Complainant’s affiliate program and therefore would have known of Complainant and its trademarks before registering the disputed domain names. The Panel therefore concludes that Respondent was using the disputed domain names to profit from Complainant’s protected marks and was therefore acting in bad faith. See Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)).
Complainant claims that Respondent’s typosquatting behavior is evidence of bad faith because the disputed domain names vary from Complainant’s trademark by only one letter. The Panel agrees that Respondent employed typosquatting in the disputed domain names to redirect Internet users making common typographical errors, and determines that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <personaliationmall.com> and <personalisationmall.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 23, 2014
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