Personalizationmall.com v. WEIL, TM
Claim Number: FA1408001577355
Complainant is Personalizationmall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is WEIL, TM (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <personalizationall.com>, registered with Network Solutions, LLC.
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.
Mr. Maninder Singh 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.
On August 29, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <personalizationall.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 August 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@personalizationall.com. Also on August 29, 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.
A timely Response was received and determined to be complete on September 18, 2014.
An Additional Submission was received from Complainant on Sept. 24, 2014. The Additional Submission was not compliant with Supplemental Rule 7 as it was received after the last date for submission of Additional Submission by the Complainant.
Additional Submission was also received from Respondent on Sept. 25, 2014. The Additional Submission by Respondent was compliant with Supplemental Rule 7.
On September 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant in its Complaint has made the following contentions : -
· The Complaint claims that the Complainant-Company, PersonalizationMall.com, Inc. was established in 1998 in Woodridge, Illinois having its headquarters in Burr Ridge, Illinois, to serve its consumers in the United States and around the world by making shopping for personalized gifts, both quick and easy. Complainant claims that its revolutionary "preview technology" allows shoppers to see what their personalized gifts would look like before they buy it. Most of the designs offered by PersonalizationMall.com have been created by in-house by the company's team of talented artists and are exclusive to the Web site. It further claims that the Complainant company provides personalized gifts for all events and occasions such as Christmas, weddings, birthdays, babies and more, focusing on mechanized engraving and embroidering for approximately 4,000 gift products.
· Complainant claims that numerous news outlets and talk shows have featured Complainant's business in their shows and articles throughout the nation, such as Good Morning America, The Today Show, and Women's World. Every month about 1,354,423 visitors visit Complainant’s website www.personalizationmall.com, each of whom come back to the site 1.3 times. Complainant claims that since its launch in 1998, the Complainant’s website has been well received attracting significant online visitors in the United States each month. The company has clearly established itself in the business of online retail store services featuring personalized merchandise and gifts. In the fiscal year of 2011, the Complainant-company is claimed to have approx. 2 million customers and $85 million in revenue.
· Complainant claims to own the “Personalization Mall” & “personalizationmall.com” Marks with USPTO (Exhibit-E) none of which is claimed to have been abandoned, cancelled or revoked, thereby exhibiting clear rights to protect against any infringement. Complainant claims following USPTO registrations for the PersonalizationMall / PersonalizationMall.com : -
(i) U.S. Reg. No. 2,561,853 for PERSONALIZATION MALL for electronic retailing services via computer relating to products containing a person's name, initials or other identifier.
(ii) U.S. Reg. No. 3,491,562 for PERSONALIZATION MALL.COM for on-line retail store services featuring products containing a person's name, initials or other identifier.
(iii) U.S. Reg. No. 3,996,778 for PERSONALIZATIONMALL.COM for on-line retail store services featuring personalized merchandise and gifts, namely, greeting cards, blank cards, books, calendars, stationery, candles, works of art, vases, baskets, holiday and special occasion decorative goods, writing utensils, housewares, textiles, clothing, floor coverings, picture frames, holiday and special occasion ornaments, toys, sports equipment, games, jewelry, and hand tools, cookware, dishes, glassware, cutlery, furniture, luggage, leather goods, watches, clocks, bibs, dolls, and plush animals.
Contentions regarding Respondent’s disputed domain name <personalizationall.com> being identical to Complainant's "Personalization Mall” & "personalizationmall.com" marks and domain name.
· Complainant contends that by virtue of its federal trademark and/or service mark registration(s), Complainant is the owner of the Complainant's Mark(s). In this regard, it relies upon the following decisions : -
(i) United Way of America v. Alex Zingaus, FA 1036202 – holding that "Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)". As in other cases, it is also important to note that it is irrelevant for the purposes of Policy 4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides.
(ii) Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) - holding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction.
· Complainant contends that when comparing the disputed domain name(s) to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name(s) and the Complainant's Mark(s). In this regard, Complainant relies upon the following decisions : -
(i) Rollerblade, Inc. v. McCrady, D2000-0429 - holding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
(ii) Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 – holding that "the addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name."
· Complainant contends that “the disputed domain name(s) (is/are) confusingly similar to Complainant's Mark(s) bec7ause (it/they) differ(s) by only a single character from Complainant's Mark(s), or because it differs by only the juxtaposition of two characters when compared to Complainant's Mark(s). Complainant also contends that as compared to Complainant's Mark(s), the disputed domain name(s) contains either : -
(i) the addition of one extra character, or...
(ii) the removal of one character, or…
(iii) one character which is incorrect, or...
(iv) two juxtaposed characters”
· Complainant contends that the disputed domain name(s) (is/are), simply put, a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. In this regard, it relies upon the following decisions : -
(i) Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 - holding 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;
(ii) Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA 661437 – holding that "the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark".
(iii) Victoria's Secret v. Zuccarini, FA 95762 - holding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks.
Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name
· Complainant contends that Respondent has not been commonly known by the disputed domain name(s). It further contends that the at the time registration by Respondent of the disputed domain name(s), Respondent had no trademark or intellectual property rights in the Domain Name(s). While relying upon the WHOIS record for the disputed domain Name(s) (Exhibit-I), wherein Respondent is shown to have been known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," - meaning thereby that the Respondent is not commonly known by the Disputed Domain Name. In this regard, Complainant has relied upon the following decisions:-
(i) United Way of America v. Alex Zingaus, FA 1036202.
(ii) RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) - (interpreting Policy, 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail".
(iii) Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) - holding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark.
· Complainant contends that the Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
· Complainant further contends that it has not given Respondent permission to use Complainant's Mark in a domain name. In this regard it relies upon the decision of WIPO in Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) - holding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark.
· Complainant contends that it had sent a "Cease and Desist" letter to the Respondent wherein, while informing the Respondent that it was infringing on Complainant's IP rights, Respondent was required to respond if it has any IP rights in the disputed domain names. The Respondent was also provided with the information of the Complainant's trademark(s), thereby substantiating that the Complainant has rights in the trademark and/or service mark PersonalizationMall / PersonalizationMall.com. The Respondent's failure to respond to the Cease and Desist notice allows all reasonable inferences of the fact in the allegations of the Complaint to be deemed true. Complainant in this regard relies upon the following decisions : -
(i) Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000 – holding that "In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
(ii) ACCOR v. Pham Manh Ha, D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
· Complainant further contends that the Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). In this regard it relies upon the following decisions of this Forum : -
(i) 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) - holding that Respondent's use of the 24hrsfitness.comgt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use);
(ii) Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names.
· Complainant contends that as specified in their relevant registration with the USPTO, the earliest date on which Respondent has registered the Disputed Domain Name(s) was July 7, 2009, which is significantly after Complainant's first use in commerce, June 22, 1999 and much after Complainant's registration of their relevant Marks with the USPTO on April, 16, 2002. The Complainant contends that as against the date of July 7, 2009, i.e. the date of Respondent’s registered the Disputed Domain Name(s), Complainant had registered its mark/domain name PERSONALIZATIONMALL.COM on March 23, 1998, i.e. much before the Respondent’s registration of the disputed domain name(s).
Contentions regarding Respondent registered and used the domain name in bad faith
· Complainant contends that the Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. To reiterate its contentions, Complainant has relied upon the following decisions of WIPO : -
(i) Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) - holding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'");
(ii) Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) – holding that "Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”
· Complainant contends that Respondent's bad faith is clear from the fact of Respondent’s usage of the Disputed Domain Name(s) website in connection with generating revenue as a "click through" website, by using the Complainant's registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain. In this regard, Complainant relies upon the following decisions : -
(i) AIDA Cruises German Branch of Societa di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / Belgium Domains (WIPO Decision D2008-1470,) – holding that "the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies' websites related to cruises and travels, in the form of a "clickthrough" website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a "click-through" website has to be considered as an evidence of bad faith.
(ii) Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation, WIPO Case No. D2007-0440;
(iii) Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812;
(iv) HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605).”
· With a view to further strengthen the above contentions, Complainant contends that Respondent has set up a “click through” website for which it likely receives revenue for each misdirected Internet user which clearly demonstrates Respondent’s bad faith. Complainant reiterates that the Respondent has registered and used the Disputed Domain Name(s) in bad faith pursuant to Policy 4(b)(iv) by using the Disputed Domain Name(s) in order to attract and mislead consumers for its own profit. In this regard, Complainant has relied upon the following decisions : -
(i) Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) – holding that “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).”
(ii) Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) - holding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant.
(iii) Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, FA 1419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy 4(b)(iv).
· Complainant further contends that in addition to the above, the Respondent has advertised pay-per-click links displayed on the resolving websites promotes products that compete with the Complainant. These links, therefore, divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business, which is a clear evidence of bad faith registration and use under Policy 4(b)(iii). In this regard, Complainant has relied upon the decision of this Forum in Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy 4(b)(iii).
· Complainant contends that the Respondent has caused the website(s) reachable by (some or all) the Disputed Domain Name(s) to display Complainant's Mark(s) spelled correctly, although the domain name(s) is a misspelled version of the same mark(s). This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s). Complainant in this regard placed reliance on the screenshot(s) of the website(s) reachable through the Disputed Domain Name(s) [Exhibit H], which show the usage of the correctly spelled Mark(s).
· Complainant alleges that Respondent has caused the websites reachable by the Disputed Domain Name(s) to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.
B. Respondent
The Respondent in its Response to the Complaint has made the following submissions : -
· Respondent contends that the Complaint presents meritless claims. Respondent is a good-faith registrant of the disputed domain name <personalizationall.com>, which was registered by it in good-faith in 2009 before the Complainant had even filed for two of its three trademarks. The Disputed Domain Name is merely descriptive of personalization products or services. Complainant has failed to comply with the Rules in not identifying the person responsible for filing the Complaint, as well as making unfounded and unsupported accusations in the Complaint.
· Respondent submits that the initiation of the present proceeding is procedurally deficient and should be dismissed for non-compliance with Rule 3(b)(iii) which requires that Complainant identify the “person” to be contacted on behalf of Complainant. Complainant’s authorized representative has not identified himself or herself, or anyone for communication purposes. Complaint has identified itself only as Citizen Hawk – not even a legal entity. The individual with Complainant’s authorized representative Citizen Hawk has failed to identify himself or herself so as to avoid liability for practicing law without a license as well as to avoid potential civil liability for a reverse domain name hijacking decision – a very common occurrence before the Forum when Citizen Hawk is an authorized representative. Citizen Hawk is known to bring bad faith occasions frequently before the Forum. Complainant’s certification as required by Rule 3(b)(xiv) and Rule 3(b)(ii) is, therefore, deficient as the certification cannot be attributed to any person or legal entity.
· Respondent further contends that the Complaint appears to be not more than a generic form submitted en masse on behalf of Citizen Hawk clients. As such, the Complaint contains numerous allegations of fact which are clearly erroneous or ambiguous, which include numerous references to the “Disputed Domain Name(s)”; a statement that “Respondent is using (some or all) of the Disputed Domain Name(s) to redirect…...”; a statement that the “the Disputed Domain Name(s) is/are.....” The Complainant alleges that the Disputed Domain contains either an additional character or a removed character, but specifies neither [Complaint, 5(a)iii]
· Respondent contends that the other allegations in the Complaint presume Complainant will win by default and that no response will be filed, and expects the panel to take Complainant’s allegations as true in its absence including false allegations that Complainant had sent Respondent a demand letter and that Respondent is deriving click through revenue from the Disputed Domain.
· With a view to prove its good faith registration and bona fide use, the Respondent contends that the Registrant/Respondent in the Complaint, Timothy Weil, is an individual residing in Texas who controls private equity positions in a number of hardware and software tech companies, and has ownership in a wide variety of online businesses. Respondent registered the disputed domain name only on July 7, 2009,underlying this action <personalizationall.com> for the purpose of eventually offering, inter alia, photography manipulation and personalization services. Respondent has held the Disputed Domain without action from Complainant and Complainant has forfeited its rights under the doctrine of laches.
· The Disputed Domain does not resolve to any website (only a landing page), much less any that contains links to third-party competitors of Complainant, or cost-per-click (CPC) links of any kind. The Respondent does not derive CPC revenue from the Disputed Domain. The Respondent has never offered the Disputed Domain to the Complainant for sale, and has always planned to use the Disputed Domain for a planned bona fide purpose. Even when the Respondent begins using the Disputed Domain, the Respondent will not offer services similar to those of Complainant. The Respondent in this regard relies upon the decision of WIPO in Credit Management Solutions, Inc. v. Collex Resource Management, D2000-0029 (WIPO Mar. 17 2000) - respondent’s use of the domain name in a business area different from the area in which Complainant was active was not direct competition and thus evidence of bona fide use.
· Respondent further contends that the expressions “personalization” and “all” are merely descriptive of the future purpose for which Respondent intends to use the Disputed Domain, to sell personalized photography services. The use of common words in a domain name related to the descriptive meaning of the website’s services constitutes use in connection with a bona fide offering of goods or services, pursuant to 4(a)(ii) of the UDRP. The Policy at 4(c)(i) provides that bona fide use can be demonstrated if a respondent has made “demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” In this regard, Respondent has placed reliance on the following decisions : -
(i) Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., No. D2001-0031 (WIPO Apr. 13, 2001) - holding that sweeps.com to Overture.com (then known as Goto.com) links related to sweepstakes established legitimate interest).
(ii) Williams, Babbitt & Weisman, Inc. v. Ultimate Search, No. 98813 (NAF Oct. 8, 2001) – holding that respondent registered numerous generic and descriptive terms to generate advertising revenue. In finding a legitimate interest, the panel noted that “[n]either the current UDRP nor current ICAAN registrar contracts preclude this type of domain name use.”);
(iii) Dial-a-Mattress Operating Corp. v. Ultimate Search, No.D2001-0764 (WIPO Sept. 26, 2001);
(iv) Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001);
(v) GLB Servicos Interativos S.A. v. Ultimate Search, No. D2002-0189 (WIPO May 29, 2002).
· With regard to the passive use of the disputed domain name, Respondent contends that its use of the Disputed Domain since 2009 has been passive, the Complainant misinterprets the Policy in submitting that this fact alone established bad faith registration. Passive use is proscribed by the Policy only when the withheld property could only be used with the trademark owner’s permission or cannot be used without creating confusion. Such is not the case here as the Disputed Domain is merely descriptive and could be used by anyone.
· Respondent contends that in Bronx Arts Ensemble, Inc. v. Vilma Morales, e:bOOm, S.A, D2004-0493 (WIPO August 30, 2004) – holding that “it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or tarnishing the Complainant’s marks.” This is not the case in present circumstances, as the Disputed Domain is not identical to the assumed Mark, nor is the Mark distinctive, nor is this a situation in which no “conceivable” contemplated use could have existed for the Disputed Domain.
· Respondent contends that in Vodafone Group, Plc v. Phone-Express, D2004-0505 (WIPO August 31, 2004), the Panel held that it “is necessary to note that not every kind of passive holding may be found as use in bad faith. Otherwise, the necessity to prove that a domain name was actually used would be illusory.” The Vodafone Panel held that “passive holding constitutes use of a domain name in bad faith when it can be established that the registrant is obstructing possibilities to use the domain name fairly and legitimately” and set forth the following test of such an obstruction : -
(i) taking into account all the circumstances of the case, it is not possible to conceive of any active use of the domain name in dispute by the registrant that would not be illegitimate, unless he receives permission from a trademark holder,
(ii) the registrant is aware of the trademark holder’s demand to transfer the disputed domain name,
(iii) the registrant denies taking any action that would enable the domain name to be legitimately used either by the trademark holder (by transferring the name to the holder) or by the registrant himself (e.g. obtaining any kind of license or other permission from the trademark holder).
· Respondent contends that under this test, a registration is in bad faith only when the circumstances indicate that any active use of the domain name in the future would interfere with Complainant’s rights. Critical to this assessment is the quality of the trademark, which is non-existent in present circumstances.
· Respondent contends that the registration of a famous well-known mark as a domain name “qualifies as bad faith if the domain name owner's conduct creates the impression that the name is for sale,”. In this regard, Respondent relies upon WIPO’s decision in Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises, (D2000-0715) (WIPO September 6, 2000) – holding that Registration of generic and descriptive domain names that are identical or confusingly similar to a trademark are legitimate when the domain not used to compete with the complainant. If the domain is being held for sale without justifiable excuse, if there is evidence of targeting for example, the Respondent's argument is less persuasive. Echelon Corporation, supra. “The problem in the instant proceeding is that the disputed domain name is identical to a trademark registered in twelve countries”. The Panel will determine whether the Respondent had knowledge of or was aware of the Complainant or its mark. The “essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant,” The Way International Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (U.S. parties, involving an unregistered mark.
· Respondent contends that none of the above factors weigh in favor of the Complainant. It further alleges that Complainant’s mark was not well-known, and there is no way that the Respondent did not know who the Complainant was. Respondent was not offering the Disputed Domain for sale, nor was the Respondent targeting Complainant. The Disputed Domain is not one which would infringe the rights of the Complainant under “any use,” nor does it prevent the Complainant from reflecting its own Mark in Disputed Domain as the Disputed Domain is not identical to the Complainant’s Mark.
· Respondent reiterates that it is a bona fide user of the Disputed Domain. Complainant has failed to meet the burden of proof of bad-faith registration and use under Policy 4(a)(iii) in this action. The Respondent, in this regard, places relies upon the following decisions : -
(i) Interep Nat'l Radio Sales,Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) – holding that no bad faith where the respondent registered the domain prior to the complainant’s use of the mark.
(ii) Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) - holding that the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark.
· Respondent contends that in a very recent WIPO case of Cheri Lane Bowes v. lawspeak.com, D2010-0742 (WIPO July 13, 2010), the Panel explained the applicable standard in the present case:
“Complainant has failed to show that Respondent has registered the Disputed Domain Name in bad faith. Respondent registered the Disputed Domain Name on June 19, 1998, whereas Complainant did not apply for its Mark until March 15, 2000. Numerous decisions have held that this fact alone renders the registration incapable of being in bad faith, unless “the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.” Paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; see also Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, WIPO Case No. D2008-0641; John Ode d/b/a ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074 (citing others).”
· Respondent contends that in the present case, as in Cheri Lane Bowes case, the domain registration predates the Complainant’s application for trademark rights. Thus, the Complainant’s evidence must establish both - that the Respondent in this case was “clearly aware of the Complainant”, and that the “clear aim” of Oceanside’s registration “was to take advantage of the confusion between the Disputed Domain and the Complainant’s rights.
· Complainant has not established either of its burdens under this bipartite standard of proof for bad faith registration, nor has the Complainant met its broader tripartite burden under the Policy. Complainant has submitted no evidence that Respondent “was clearly aware of” the Complainant, nor that the Complainant was trying to “take advantage” of the Complainant’s IP for monetary gain. Indeed, Respondent has never used the Disputed Domain for any purpose, much less the purpose of creating confusion with the Complainant.
· The Complainant has done no more than make the unsubstantiated allegation that the Disputed Domain was registered in bad-faith, without any supporting evidence. In this regard the Respondent relies upon the following decisions : -
(i) Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum January 16, 2003) - holding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith);
(ii) Nike, Inc. v. Crystal International, D2002-0352 (WIPO August 2, 2002) holding that “Assertions that any use of the Domain Name by another party would likely mislead or deceive the Complainant’s customers, without evidence, is not of much use.”
· Respondent further contends that it is not enough for the Complainant to establish that it has a present right to a trademark under 4(a)(i). The Complainant must prove it had trademark rights when the Disputed Domain was registered, and also prove that Respondent has no rights or legitimate interest in the Disputed Domain, which the Complainant has not, and cannot, prove. As shown above, Respondent has registered the Disputed Domain in good-faith for a legitimate commercial purpose. The UDRP 4(c) provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of 4(a)(ii): … (iii) you are making a legitimate noncommercial or fair use of the domain name.”
· The Respondent did not register the Disputed Domain for the purpose of capitalizing on the Complainant’s good will, nor does the Respondent have “a pattern of engaging” in preventing “the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” nor could the Respondent have intended to create a likelihood of confusion or disrupt the Complainant’s business. (UDRP 4(b). In short, the Respondent is a good-faith registrant and user of the Disputed Domain.
· Respondent contends that the Complainant’s Mark is descriptive at best and probably generic. The Complainant’s Mark does not fall into any of the four types of trademark categories traditionally afforded protection in trademark infringement actions (suggestive, arbitrary, fanciful and coined).
· Respondent contends that even a registered trademark provides no rights under the Policy, if it is deemed to be descriptive or generic by a panel. In this regard, it places reliance upon the following decisions : -
(i) Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) – while citing Windsurfing International, Inc. v. AMF, Inc., 613 F .Supp 933 (S.D.N.Y. 1985), held that aff’d in part and reversed in part 782 F.2d 995 (Fed. Cir. 1986). “Indeed, genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration.”
(ii) Goldberg & Osborne v. The Advisory Board Forum, Inc., Case No. D2001-0711 (WIPO Oct. 4, 2001) (“Serious question as to whether the [registered] mark [the personal injury lawyers] is enforceable” under the Policy because it “appears to be descriptive, if not generic.”.
· Complainant’s Marks are not enforceable with respect to descriptive variations of an otherwise distinctive mark. Because the expressions “personalization” and “all” is merely descriptive of the prints that the Respondent intends to retail online, Complainant has no unenforceable rights under the Policy with respect to the Dispute Domain under present circumstances. "Even a registered mark can be found to be generic." (FM 103.1, Inc. v. Universal Broadcasting of N.Y, Inc., 929 F. Supp. 187, 194 (D.N.J. 1996).) The English language is available for all to use. "To grant a trademark to a generic name would be tantamount to granting the owner of the mark a monopoly" since it would prevent competitors from an accurate description of their products. (E. T Browne Drug. Co., Inc. v. Cococare Products, Inc., 2006 U.S. Dist. LEXIS 6615 *10 (Dist. N.J. 2006).). In Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093 (“Trade Me”), the panel stated, “where a respondent registers a domain name consisting of a ‘dictionary’ term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest.”
· The fact that the mark is generic and/or descriptive in and of itself, further establishes Respondent’s legitimate interest in the Disputed Domain. Energy Source Inc. v. Your Energy Source, Case No. 96364 (NAF Feb. 19, 2001) (YOURENERGYSOURCE.COM) (finding that Respondent has rights and legitimate interests in the domain name where “[r]espondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Cream Holdings Limited v. National Internet Source, Inc., D-2001-0964 (WIPO Sept. 28, 2001). In ruling in favor of Respondent, the registrant of the domain name <cream.com>, the Panel explained that : "….Cream" is merely a common generic word in which the Complainant cannot have exclusive rights. Thus the Respondent has rights and a legitimate interest in the disputed domain by virtue of having been the first to register it….”
· Respondent further contends that as several ICANN panels have observed : “…Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of “cybersquatting” and “cyberpiracy,” not every dispute that might arise over a domain name. (Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999); see also Ultrafem, Inc. v. Royal, 97682 (NAF Aug. 2, 2001).
· Respondent contends that "A generic mark is not protected because the mark is the common descriptive name of a product class." Financial Sys., 85 F. Supp. 2d at 487 (internal quotations omitted).) The test is "whether the primary significance of a term in the minds of the consuming public is the product or the producer." (AJ Canfield Co. v. Honickman, 808 F.2d 291,292-93 (3d Cir. 1986).
· In this case, the weakness of Complainant's mark and lack of rights in 2009 overcome other considerations. In this regard, Respondent relies upon the decision in Johnson & Johnson v. Colgate-Palmolive Co., 345 F. Supp. 1216, 1224 (D.N.J. 1972) "A weak mark which is suggestive of the qualities of the product, or is generally laudatory, is given a relatively narrow range of protection." “Personalization All” is generic or descriptive and not protectable.
Contentions with regard to Reverse Domain Name Hijacking
· The Complainant had no bona fide basis for commencing this proceeding under the UDRP, and is culpable for reverse domain name hijacking under 15(c) of the UDRP. The Complainant is attempting to stomp on the rights of the Respondent to this action in hopes that Respondent will be unable to muster the resources necessary to defend itself.
· Reverse domain name hijacking occurs where, as here, a complainant knows there is no plausible basis for a complaint, even when the “complaint’s allegations are veiled in official sounding legal sophistry and pronouncements of public acclaim.” In this regard Respondent relies upon the following decisions : -
(i) Prom Software, Inc. v. Reflex Publishing, Inc., Case No. D2001-1154 (NAF Mar. 4, 2002) - holding that “Complainant’s knowingly flimsy claim not only wholly fails to meet the threshold showing for transfer of the domain name at issue, but also constitutes reverse domain name hijacking.”
(ii) Maine Bait Company v. Robin Brooks, No.98246 (NAF Aug. 28, 2001) – holding that “it is troubling when a Complainant attempts to use this forum to take away a domain name where any reasonable review of the ICANN Policies and Rules would show that the Complainant’s case is extremely weak.”
(iii) Supremo n.v./s.a. v. Rao Tella, No.D2001-1357 (WIPO Feb. 15, 2002) – holding that “The name was a generic one used in many trademarks and websites that it should have been apparent to the Complainant that it could not prove all the elements required by the Policy.”
· Respondent alleges that the Complainant carefully prepared the Complaint initiating this proceeding to try and seize the Disputed Domain Name, and included numerous misrepresentations in hopes of wrongfully realizing its unlawful goals. The Complainant knew, or should have known, that these actions would constitute reverse domain hijacking from the precedent available at the click of a button across the Internet. The Respondent submits that reverse domain name hijacking is an appropriate finding in this case.
C. Additional Submissions :
Response to Respondent’s Good Faith Registration & Bona Fide Use Submissions
· Respondent claims the Disputed Domain does not resolve to any website (only a landing page), much less any that contain links to third-party competitors of Complainant, or cost-per-click (CPC) links of any kind.
· Respondent is not using the Disputed Domain in a bona fide offering as allowed under Policy 4(c)(i). Respondent is using the Disputed Domain Name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy 4(c)(iii). In this regard, Complainant relies upon the following decisions of this Forum : -
(i) 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) - holding that Respondent's use of the 24hrsfitness.comgt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use);
(ii) Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) - holding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names.
· While referring to Exhibits-I & H of the Annex to original Complaint, for screenshot of the website reachable through the Disputed Domain Name, the Complainant contends that the words “Redirects to landing page shown below”, have been added, which were not included in the original exhibit. Similarly, Exhibit-2, for an additional screenshot showing that when the links are clicked, a new landing page appears showing the Complainant’s website and its competitors.
· Respondent’s bad faith is further shown by the Respondent using the Disputed Domain Name’s website in connection with generating revenue as a “click through” website (see Exhibit 1, Exhibit H of the Annex to original complaint), by using the Complainant’s registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain.
· Complainant contends that in WIPO Decision D2008-1470, AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains “the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies’ websites related to cruises and travels, in the form of a “clickthrough” website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a “click-through” website has to be considered as an evidence of bad faith. Complainant has also placed reliance on the following decisions in this regard : -
(i) Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440;
(ii) Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812;
(iii) HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)”.
· To further reiterate the above contentions, Complainant contends that Respondent’s setting up of a “click through” website for which it is likely receive revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith. The Respondent has registered and used the Disputed Domain Name(s) in bad faith pursuant to Policy 4(b)(iv) by using the Disputed Domain Name(s) to attract and mislead consumers for its own profit. Complainant relies upon the following decisions in this regard : -
(i) Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) – holding that “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).”
(ii) Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) - holding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant.
(iii) Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy 4(b)(iv).
· In addition to the above, the Respondent has advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. In this regard, Complainant relies upon the decision of this Forum in Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) - holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy 4(b)(iii).
· The Respondent has claimed they plan on eventually offering, inter alia, photography manipulation and personalization services. The Respondent has failed to show any press, business plan/ model/ budget, mock-ups of the planned website, company registration name, etc. The Respondent has not clearly demonstrated a plan to engage in a bona fide business, but in the business of pay-per-click website.
· The doctrine of laches does not apply as a defense, and correspondingly the Panel should choose to disregard Respondent’s assertions. In this regard, Complainant relies upon the following decisions : -
(i) Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) – holding that “The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”
(ii) Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) - holding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value;
(iii) Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) – holding that “Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desire requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”
Response to Respondent’s Passive Use of the Disputed Domain Name Submissions
· Respondent claims the use of the Disputed Domain since 2009 has been passive. Respondent’s use is not passive, but is a parked page with infringing redirect links. Respondent’s bad faith is shown in connection with generating revenue as a “click through” website, by using the Complainant’s registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain.
· Complainant contends that in WIPO Decision D2008-1470, AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains “the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies’ websites related to cruises and travels, in the form of a “clickthrough” website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a “click-through” website has to be considered as an evidence of bad faith. The Complainant further relies upon the following decisions : -
(i) Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440;
(ii) Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812;
(iii) HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)”.
· The Disputed Domain Name is typographical error of Complainant’s registered trademark. Respondent claims that Complainant has submitted no evidence showing Respondent was clearly aware of the Complainant. Complainant refers to its trademark registrations, screenshot of GOOGLE search for the term “PERSONALIZATION MALL” showing over 1 million results, many results referencing the Complainant’s mark, and press releases / historical screenshots of Complainant’s website from 1999 – 2008, are prior to the registration of the Disputed Domain Date. If Respondent has conducted a simple Google search and/or a trademark search he would have been made aware of Complainant’s mark prior to registering the Disputed Domain.
· Respondent’s resolving websites offering the same types of services offered by Complainant indicates that Respondent had actual knowledge of Complainant and its rights. The Complainant contends that the Respondent had actual knowledge, and concludes that Respondent has registered the Disputed Domain Names in bad faith according to Policy 4(a)(iii). In this regard, it relies upon the decision of this Forum in Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) - rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name.
· Respondent claims that Complaint includes the false allegation such as that Complainant sent a demand letter. Complainant in this regard refers to Exhibit 7, Exhibit L from the Annex of the original Complaint, which is a copy of the Demand letter that was sent by it to Respondent on July 18, 2014 to state that the Respondent did receive the original email and chose to ignore it.
Response to Respondent’s Trademark Rights & Confusingly Similarity Submissions
· The Respondent claims Complainant’s Marks are not enforceable with respect to descriptive variations of an otherwise distinctive mark. The expressions “Personalization” and “All” are generic or descriptive and not protectable. USPTO has granted the trademarks registration for trademarks “PERSONALIZATION MALL” and “PERSONALIZATIONMALL.COM”. None of these federal mark registrations have been abandoned, cancelled or revoked and have become incontestable through the filing of Section 8 and 15 affidavits with the USPTO. In addition, Complainant is the only owner of the mark(s). Complainant’s PERSONALIZATION MALL mark was first used in commerce in connection with products containing a person's name, initials or other identifier as early as 1999, and has been used continuously since that time. Complainant relies upon the following decisions : -
(i) Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) - holding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy 4(a)(i).
(ii) David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) – holding that “Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
(iii) The Knot, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1350443.
· Complainant contends that the Respondent claims that Complaint lacks rights in 2009. The Complainant’s trademark PERSONALIZATION MALL & PERSONALIZATIONMALL.COM were registered before the registration of the Disputed Domain Name <personalizationall.com>. By virtue of its federal trademark and/or service mark registrations, Complainant is the owner of the Complainant's Mark(s). In this regard, Complainant places reliance on the following decisions : -
(i) United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 - "Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)". As in other cases, it is also important to note that it is irrelevant for the purposes of Policy 4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides.
(ii) See Koninklijke KPN N.V. v. Telepathy Inc.,D2001-0217 (WIPO May 7, 2001) - holding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction.
· Respondent has failed to show or prove that he has a legitimate right or interest in the domain name. The Respondent has registered and is using the Disputed Domain Name, <personalizationall.com> in bad faith and the Complainant has a bona fide basis for commencing the UDRP.
Respondent’s Additional Submissions :
· The landing page at the Disputed Domain is a page generated by Respondent’s Registrar and not by respondent, and that respondent does not derive “click through revenue” from the landing page. The links put on the page do not direct traffic to Complainant’s competitors, but rather to search engine results. As such, Respondent’s use is passive. Complainant has not provided any examples of objectionable links.
· Complainant contends that individuals with Citizen Hawk are responsible for this proceeding but they still refuse to identify themselves. Complainant has not made any argument rebutting Respondent’s claim that the Disputed Domain Name is descriptive, rather Complainant has simply reattached copies of its marks already annexed to the Complaint.
· Complainant contends that it has rights in the disputed domain name <personalizationall.com> through its use and various registrations with the USPTO. Complainant claims that it has used and registered its PERSONALIZATION MALL and PERSONALIZATIONMALL.COM trademarks for making shopping for personalized gifts, both quick and easy for various occasions.
· Respondent contends that the disputed domain name <personalizationall.com> is comprised of common and generic terms and thus cannot be deemed confusingly similar to Complainant’s mark. Registration and use of disputed domain name comprising such common terms cannot be said to be done in bad faith.
· The Panel finds that the use of the domain name <personalizationall.com> by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
· The Panel also finds that the domain name <personalizationall.com> deserves to be transferred to the Complainant and the Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
Complainant asserts that it has rights in the PERSONALIZATION MALL and PERSONALIZATION MALL.COM marks under Policy 4(a)(i). Complainant explains that it uses the PERSONALIZATION MALL mark and the <personalizationmall.com> domain name to serve customers in the United States and around the world by making shopping for personalized gifts easily accessible. Complainant’s business uses “preview technology” to allow customers to see what their personalized gifts will look like before their purchase. Various media outlets including Good Morning America, The Today Show, and Women’s World, have featured Complainant’s business on their shows. Complainant provides evidence that it owns registrations with the USPTO for the PERSONALIZATION MALL mark (Reg. No. 2,561,853 registered April 16, 2002) as well as for the PERSONALIZATION MALL.COM mark (Reg. No. 3,491,562 registered August 26, 2008). See Complainant’s Exhibit-E.
The Panel observes that previous panels have concluded that providing evidence of a registration with the USPTO is sufficient to establish rights in a given mark under Policy 4(a)(i). The Panel relies upon decision of this Forum in Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) – holding that “Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.” Accordingly, the Panel finds that Complainant’s USPTO registration of the PERSONALIZATION MALL and PERSONALIZATION MALL.COM marks establishes rights for Complainant pursuant to Policy 4(a)(i).
Complainant further states that Respondent’s <personalizationall.com> domain name is confusingly similar to Complainant’s PERSONALIZATION MALL and PERSONALIZATION MALL.COM marks. Complainant states that Respondent merely removes the letter “m” from “mall.” In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) the panel concluded 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. The Panel thus concludes that Respondent’s <personalizationall.com> domain name is confusingly similar to Complainant’s PERSONALIZATION MALL and PERSONALIZATION MALL.COM marks under Policy 4(a)(i).
Therefore, the Panel concludes that Respondent’s <Personalizationall.com> domain name is confusingly similar to Complainant’s “PERSONALIZATION MALL” and “PERSONALIZATIONMALL.COM” pursuant to Policy 4(a)(i).
The attention of the Panel is drawn towards that a 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. In this regard, the following decisions are brought to the notice of the Panel :
(i) 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);
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that “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 observes that the Respondent claims that its current use of the disputed domain name for hyperlinks is not necessarily indicative of no rights or legitimate interests. Respondent urges that the landing page does not contain links to third-party competitors of Complainant, and that Respondent does not derive pay-per-click revenue from the disputed domain.
The Panel also observes that Respondent contends that it registered the disputed domain name in good faith on July 7, 2009 and is making a bona fide use. Respondent states that it registered the disputed domain name for the purpose of offering photography manipulation and personalization services. Respondent explains that its <personalizationall.com> domain name uses the terms “personalization” and “all” which merely describe the future purpose for Respondent’s intended use of the disputed domain name. Namely, to sell personalized photography services. The Panel, however, observes that Respondent has not provided much evidence as far as its intended or planned use of the disputed domain name is concerned.
The Panel further observes that the Complainant asserts that Respondent has no rights or legitimate interests in the <personalizationall.com> domain name under Policy 4(a)(ii). Complainant contends that Respondent is not commonly known by the disputed domain name or sponsored by or affiliated with Complainant in any way. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name because the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. At present, the circumstances are comparable. The Panel observes that Respondent has not submitted any exhibits or annex’s displaying plans of its intended use for the disputed domain name in correlation with Respondent’s alleged business. The Panel also observes that the WHOIS information for Respondent’s disputed domain name lists “Weil, Tm” as registrant. In light of the available evidence in the record as well as Respondent’s failure to show otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy 4(c)(ii).
The Panel observes that with regard to use of the dispute domain name, Complainant argues that Respondent is neither making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Specifically, Complainant urges that Respondent is using the disputed domain name to redirect Internet users to a website that features third-party links, some of which compete with Complainant. The Panel notes Complainant’s Exhibit H to see that some of the displayed links include, “Engraved Baby Gifts,” “Personalized Gifts,” “Photo Gifts,” “www.personalizationmall.com” and “Valentines Gifts.” Presumably, Respondent also receives pay-per-click fees from the links present on the website.
The previous panels in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) – the panel reasoned, “[t]he disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).” This Panel, therefore, agrees that Respondent 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).
Complainant contends that Respondent’s typosquatting behavior is further indication that it lacks rights and legitimate interests in the disputed domain name. Previous panels have found that intentional misspellings of a complainant’s mark evidence that the respondent lacks rights or legitimate interests in the disputed domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel observes that the disputed domain name is <personalizationall.com> and that the Complainant promotes its operation online through use of the domain name <personalizationmall.com>. The Panel finds that Respondent’s behavior amounts to typosquatting and therefore, Respondent lacks rights and legitimate interests pursuant to Policy 4(a)(ii).
Having regard to the totality of the relevant facts on this aspect, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name <personalizationall.com> pursuant to Policy 4(a)(ii).
The Complainant contends that Respondent’s bad faith is demonstrated by the use of the disputed domain name in connection with a website promoting products that compete with Complainant in the personalized gift industry. The Complainant urges that such use disrupts Complainant’s own operations as potential customers are diverted. The Panel observes that the Complainant has provided screenshots (Exhibit-H) of the disputed landing page and that the page promotes links related to gift engraving and other types of personalized gifts. As such, the Panel finds that Respondent indulges in bad faith disruption of Complainant’s operations, pursuant to Policy 4(b)(iii). In this regard, the Panel finds strength from the decision of this Forum in Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) - holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy 4(b)(iii).
The Panel further finds merit in the plea of the Complainant that Respondent uses the disputed domain name to attract and mislead Internet users and seeks to profit from the resulting confusion. Complainant asserts that Respondent is likely to gain click-through revenue from the linked pages. The Panel notes that previous panels have found evidence of bad faith where the disputed domain name resolves to a page promoting links that appear to compete with Complainant in their field, and Respondent likely profits from the promote links. The Panel also observes that a panel of this Forum in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) held that “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).” Consistent with past decisions, the Panel finds that the Respondent’s use of the disputed domain name demonstrates bad faith pursuant to Policy 4(b)(iv).
The Panel observes that the Respondent had actual knowledge of Complainant’s rights in the mark, as demonstrated by Respondent’s use of the disputed domain name. Complainant points out that Respondent displays Complainant’s marks spelled correctly on Respondent’s resolving website. While previous panels have determined that constructive knowledge is insufficient to support a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the PERSONALIZATION MALL marks given the use of the mark on the disputed landing page; and therefore find evidence of bad faith registration pursuant to Policy 4(a)(iii). In this regard, the Panel finds strength from the decision of this Forum in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) – holding that “The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”
The Panel finds merit in the argument of the complainant that Respondent’s typosquatting is further evidence of bad faith. Previous panels have found that typosquatting exists when a domain name merely embodies common spelling errors that Internet users may make when pursuing the complainant’s business on the Internet. The Panel relies upon the decision of a panel of this Forum in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) – holding that “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).” The Panel observes that the <personalizationall.com> domain name amounts to typosquatting based on the mere elimination of the letter “m,” the hence the Panel finds further evidence of bad faith pursuant to Policy 4(a)(iii).
Therefore, the Panel finds that Respondent has violated Policy 4(a)(iii) because Respondent is currently not making in active use of the <ancestry.pro> domain name.
The Panel rejects the argument of the Respondent that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent’s contention that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <personalizationall.com> domain name, of its rights to use the disputed domain name is without any sustainable basis and does not merit acceptance. Even when there are words which are generic in nature, however, they are capable of being distinct when put in a particular order or a combination etc. In the present case, the word ‘personalizationmall’ being a combination of two different words – ostensibly, is a distinct description and which cannot be described as generic. Respondent’s insistence that the Complainant is no more than a generic form submitted by Citizen Hawk, that presumes Complainant will win by default, deserves to be rejected. Similarly, the assertion by the Respondent that Complainant prepared the Complaint to include numerous misrepresentations hoping that a panel would wrongfully find in favor of Complainant is entirely misconceived. The claim made by the Respondent that Complainant has no bona fide basis for this proceeding and is culpable for reverse domain name hijacking is without any merit and is rejected.
The Panel notes that Complainant has satisfied Policy 4(a)(i). The Panel finds that Complainant has not engaged in reverse domain name hijacking. In this regard, the Panel finds strength from the following decisions : -
(i) World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) – holding that “Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”.
(ii) Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) - holding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <personalizationall.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated : October 4, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page