Sittercity Incorporated v. ICS INC.
Claim Number: FA1407001567811
Complainant is Sittercity Incorporated (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC. (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sitterciti.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2014; the National Arbitration Forum received payment on July 1, 2014.
On July 2, 2014, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <sitterciti.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 July 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@sitterciti.com. Also on July 7, 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 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. Complainant, Sittercity Incorporated, has been using the SITTERCITY mark in commerce since 2001 in connection with the fields of child care, elder care, pet care, and house monitoring and care.
ii. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the SITTERCITY trademark (Reg. No. 3029158, registered December 13, 2005).
iii. The disputed domain name is confusingly similar to the mark in which Complainant has rights.
iv. Respondent is not commonly known by the disputed domain name.
v. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
vi. Respondent has listed the disputed domain name for sale.
vii. Respondent has engaged in an ongoing pattern of cybersquatting behavior.
viii. Respondent’s use of the disputed domain name is disrupting Complainant’s business.
ix. Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential customers to products sold by competitors and by collecting click-through revenue from the site.
x. Respondent’s typosquatting behavior is indicative of bad faith.
xi. Respondent registered the disputed domain name on April 13, 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SITTERCITY mark. Respondent’s domain name is confusingly similar to Complainant’s SITTERCITY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <sitterciti.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 asserts that it has been using the SITTERCITY mark in commerce since 2001 in connection with the fields of child care, elder care, pet care, and house monitoring and care. Complainant has a valid registration with the USPTO for the SITTERCITY trademark (Reg. No. 3,029,158, registered December 13, 2005). Complainant’s registration of the SITTERCITY mark with the USPTO shows that it has the 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.”).
Complainant contends that the disputed domain name is confusingly similar to the mark in which Complainant has rights. The disputed domain name <sitterciti.com> merely changes the last letter of Complainant’s mark from a “y” to an “i”. Such minor typographical changes do not defeat a finding of confusing similarity. 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”). Respondent also added a generic top-level domain name (“gTLD”) “.com” to Complainant’s mark. The addition of a gTLD does not distinguish the disputed domain name from Complainant’s trademark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel determines that the disputed domain name <sitterciti.com> is confusingly similar to the SITTERCITY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant urges that Respondent is not commonly known by the disputed domain name. The registrant of the disputed domain name is listed as “ICS INC.” In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) the panel found 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. The circumstances are comparable in this case as the only evidence available to the Panel is the information listed in the WHOIS record due to Respondent’s default. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii).
Complainant argues 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 directly compete with Complainant’s business. The disputed domain name resolves to a webpage that features links that lead to direct Competitors of Complainant. The Panel therefore finds that Respondent has not registered and is not using the disputed domain name 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]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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant submits that Respondent has listed the disputed domain name for sale. The record reflects that to be the case. This constitutes 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).”).
Complainant asserts that Respondent has engaged in an ongoing pattern of cybersquatting. Complainant states that it searched through the NAF and WIPO UDRP decision databases and found that Respondent has been involved in multiple prior decisions for similar cases. Complainant has submitted an exhibit with a list of such cases. This evidence establishes that Respondent has engaged in an ongoing pattern of cybersquatting behavior, which amounts to bad faith registration and use under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant alleges that Respondent’s use of the disputed domain name is disrupting Complainant’s business. The domain name resolves to a webpage that features links that lead to direct competitors of Complainant--“Local Nannies,” “Elderly Sitter,” and “Babysitting Service.” It is reasonable to conclude that Complainant’s customers would be confused as to its affiliation with the disputed domain name and, by mistake, use the services identified on the resolving website. This qualifies as bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent’s typosquatting behavior is evidence of bad faith. The Panel concludes that Respondent has engaged in typosquatting behavior to take advantage of common typographical errors by Internet users to redirect them to a site featuring links to competitors of Complainant which is evidence of bad faith under 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sitterciti.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 5, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page