PersonalizationMall.com v. Jano Kerekes / Poste Restante
Claim Number: FA1408001577334
Complainant is PersonalizationMall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jano Kerekes / Poste Restante (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <personlizationmall.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2014; the National Arbitration Forum received payment on August 28, 2014. Complainant included both an English and Slovak Complaint.
On September 1, 2014, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <personlizationmall.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.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 September 9, 2014, the Forum served the Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of September 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@personlizationmall.com. Also on September 9, 2014, the Slovak language 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 October 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Complaint:
1. Complainant uses the PERSONALIZATION MALL mark for online retail store services featuring personalized merchandise and gifts. Complainant owns the PERSONALIZATION MALL mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,561,853 registered April 16, 2002). The <personlizationmall.com> domain name is confusingly similar to the PERSONALIZATION MALL mark.
2. Respondent has not been commonly known by the disputed domain name. Further, Respondent is not affiliated with Complainant. Respondent is using the domain name to promote links to third-party websites, some of which compete with Complainant.
3. Respondent has engaged in bad faith use and registration. Respondent’s use of the domain name to promote competing hyperlinks to Complainant evinces bad faith. Further, Respondent’s use of click-through fees in connection with these competing hyperlinks amounts to bad faith. Lastly, Respondent has engaged in typosquatting, which is further evidence of Respondent’s bad faith.
B Response:
1. Respondent failed to submit a response.
1. Respondent’s <personlizationmall.com> domain name is confusingly similar to Complainant’s PERSONALIZATION MALL mark.
2. Respondent does not have any rights or legitimate interests in the <personlizationmall.com> domain name.
3. Respondent registered or used the <personlizationmall.com> domain name in bad faith.
PANEL NOTE: LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
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 uses the PERSONALIZATION MALL mark for online retail store services featuring personalized merchandise and gifts. Complainant claims rights in the PERSONALIZATION MALL mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,561,853 registered April 16, 2002). The Panel agrees that Complainant’s USPTO registrations are sufficient to establish rights in the PERSONALIZATION MALL mark for purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues the <personlizationmall.com> domain name is confusingly similar to the PERSONALIZATION MALL mark. Complainant notes that the name incorporates a misspelled version of the mark, omitting the first letter “a” in “PERSONALIZATION.” The Panel also notes that the domain name eliminates the spacing in the mark, and adds the generic top-level domain (“gTLD”) “.com.” Prior panels have held that the omission of a single letter from an otherwise incorporated mark is insufficient to differentiate the name from the mark, and that the affixation of a gTLD and omission of spacing are irrelevant to the Policy ¶ 4(a)(i) consideration. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds the <personlizationmall.com> domain name confusingly similar to the PERSONALIZATION MALL mark pursuant to Policy ¶ 4(a)(i).
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 argues Respondent has not been commonly known by the disputed domain name. The Panel notes the WHOIS record identifies “Jano Kerekes / Poste Restante” as registrant of the disputed domain name. Further, Complainant urges that Respondent is not affiliated with Complainant. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded 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. Consistent with such reasoning, the Panel agrees that Respondent is not commonly known by the <personlizationmall.com> name pursuant to Policy ¶ 4(c)(ii) in light of the available evidence.
Complainant argues that Respondent is using the domain name to promote links to third-party websites, some of which compete with Complainant. The Panel notes the resolving pages features a list of links, which include “Personalized Gifts Photo,” “Personalized Photo Frames,” and “Xmas Gift Ideas.” See Compl., at Attached Ex. H. The Panel agrees that the use of a confusingly similar domain name to promote competing links does not amount to a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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 argues that Respondent’s use of the domain name to promote competing hyperlinks to Complainant evinces bad faith. The Panel recalls that the domain name resolves to promote links such as “Personalized Gifts Photo,” “Personalized Photo Frames,” and “Xmas Gift Ideas,” which compete with Complainant in the arena of personalized gifts. See Compl., at Attached Ex. H. Accordingly, the Panel finds evidence of bad faith disruption 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).”).
Further, Respondent’s use of click-through fees in connection with these competing hyperlinks amounts to bad faith. See Compl., at Attached Ex. H. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the Panel wrote, “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).” The circumstances at present are comparable. The Panel agrees that Respondent’s use of the confusingly similar domain name to promote commercial hyperlinks in competition with Complainant amounts to Policy ¶ 4(b)(iv) bad faith.
Lastly, Complainant argues Respondent has engaged in typosquatting, which is further evidence of Respondent’s bad faith. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel explained, “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).” At present, the Panel recalls that the <personlizationmall.com> domain name differs from the PERSONALIZATION MALL mark by the omission of the first letter “a” in “PERSONALIZATION.” The Panel agrees that Respondent’s behavior amounts to typosquatting, and the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED..
Accordingly, it is Ordered that the <personlizationmall.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch
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