PersonalizationMall.com v. ICS INC.
Claim Number: FA1406001563875
Complainant is PersonalizationMall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <personalixationmall.com>, registered with TUCOWS, INC.
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 Honourable Neil Anthony Brown QC 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 11, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <personalixationmall.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@personalixationmall.com. Also on June 17, 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 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
· Complainant, PersonalizationMall.com, has been using the PERSONALIZATIONMALL.COM mark in commerce since 1998 in connection with online retailing of personalized and customizable merchandise.
· Complainant has a valid trademark registration with the Untied States Patent and Trademark Office (“USPTO”) for the PERSONALIZATIONMALL.COM mark (Reg. No. 3996778, registered July 19, 2011).
· The domain name <personalixationmall.com> is confusingly similar to the trademark in which Complainant has rights.
· Respondent is not commonly known by the disputed domain name.
· Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third party websites, some of which compete directly with Complainant’s business.
· The domain name should be considered as having been registered and used in bad faith.
· Respondent has listed the disputed domain name as for sale which can be evidence of bad faith.
· Respondent is disrupting the business of Complainant by linking Internet users to direct competitors of Complainant.
· Respondent is using the disputed domain name for commercial gain through reliance on “click through” revenue, which likely provides Respondent with revenue for each misdirected Internet user.
· Respondent’s typosquatting conduct is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in online retailing of personalized and customizable merchandise.
2. Complainant has a valid trademark registration with the Untied States Patent and Trademark Office (“USPTO”) for PERSONALIZATION MALL Reg. No. 2,561,853 registered Apr. 16, 2002..
3. Respondent registered the domain name <personalixationmall.com>
on December 21, 2007.
4. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third party websites, some of which compete directly with Complainant’s business.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant alleges that it has been using the PERSONALIZATIONMALL.COM mark in commerce since 1998 in connection with online retailing services relating to personalized and customizable merchandise. Complainant contends that it has a valid trademark registration with the USPTO for the PERSONALIZATIONMALL.COM mark (Reg. No. 3,996,778, registered July 19, 2011). See Complainant’s Exhibit E. However, the Panel notes the filing date is only November 11, 2010. As such, the Panel here elects to note Complainant’s PERSONALIZATION MALL mark. See Compl., at Attached Ex. E: USPTO Reg. No. 2,561,853 registered Apr. 16, 2002 and evidence of which has been adduced. The Panel notes that Respondent resides in the United States, and therefore, the Panel finds that Complainant’s registration of the PERSONALIZATION MALL mark with the USPTO shows that it has rights in the mark 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.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PERSONALIZATION MALL mark. Complainant argues that the domain name <personalixationmall.com> is confusingly similar to the trademark in which Complainant has rights The Panel notes that the domain name merely makes a typographical error in Complainant’s mark and that traditionally 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). Accordingly, the Panel finds that the <personalixationmall.com> domain name is confusingly similar to the PERSONALIZATION MALL mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PERSONALIZATION MALL trademark and to use it in its domain name, making only a small spelling alteration to the trademark, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the disputed domain name to redirect Internet users to a website featuring generic links to third party websites, some of which compete directly with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant urges that Respondent is not commonly known by the disputed domain name. The Panel notes that the registrant of the disputed domain name is listed as “ICS INC.” In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) the panel found that the “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”. At present, the situations are comparable because the only evidence available to the Panel is the name listed in the WHOIS information due to Respondent’s default. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name <personalixationmall.com> under Policy ¶ 4(c)(ii);
(e) Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third party websites, some of which compete directly with Complainant’s business. The Panel notes that Respondent’s disputed domain name resolves to a webpage that provides links to direct competitors of Complainant. See Complainant Exhibit H. The Panel therefore concludes that Respondent is not using the disputed domain name <personalixationmall.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)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]respondent’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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent has listed the disputed domain name for sale which can be evidence of bad faith. As the Panel agrees that Respondent has offered to sell the disputed domain to third parties on the webpage to which the disputed domain name resolves, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to 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).”).
Secondly, Complainant urges that Respondent is disrupting the business of Complainant by linking Internet users to direct competitors of Complainant. Complainant claims that Respondent is using the disputed domain name to link to direct competitors of Complainant. See Compl., at Attached Ex. I. The Panel concludes that the hyperlinks on the disputed domain name contain generically phrased advertisements to customizable merchandise. See id. The Panel determines that Respondent has registered and is using the disputed domain name 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).”).
Thirdly, Complainant alleges that Respondent is using the disputed domain name for commercial gain through reliance on “click through” revenue, which likely provides Respondent with revenue for each misdirected Internet user. The Panel observes that Respondent’s disputed domain name leads to a website featuring links that lead to products that compete directly with Complainant. The Panel notes that the promoted links include “Personalized Baby Gifts”, “Personalized Gifts”, and “Unique Personalized Gifts”. See Compl., at Attached Ex. H. Further, 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 Respondent likely profits from the resulting confusion; therefore, the Panel finds evidence of 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.’”).
Fourthly, Complainant argues that Respondent’s typosquatting conduct is evidence of bad faith because the domain name varies so little from Complainant’s trademark. As the Panel agrees that Respondent employed typosquatting in the disputed domain name to redirect Internet users making common typographical errors, the Panel determines that Respondent has registered and is using the disputed domain name in bad faith pursuant to 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).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the PERSONALIZATION MALL mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <personalixationmall.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 17, 2014
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