PersonalizationMall.com v. teresa martin / Personalize your items
Claim Number: FA1408001577360
Complainant is PersonalizationMall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is teresa martin / Personalize your items (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <personalizationmalls.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2014; the National Arbitration Forum received payment on August 28, 2014.
On September 18, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <personalizationmalls.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 8, 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@personalizationmalls.com. Also on September 18, 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 October 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns the PERSONALIZATION MALL mark through trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,561,853, registered April 22, 2002). The PERSONALIZATION MALL mark is used in connection with online retail services relating to products containing a person’s name or other identifiers. The <personalizationmalls.com> domain name is confusingly similar to the PERSONALIZATION MALL mark as the name utilizes the full mark with the additions of a single letter “s” at end of the mark, as well as the generic top-level domain “.com.”
Respondent lacks rights in the disputed domain name. The WHOIS record suggests that Respondent is not commonly known by the <personalizationmalls.com> name. Further, Complainant is not affiliated with Respondent. Respondent is not using the <personalizationmalls.com> domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a parked page promoting links to third-parties, some of which compete with Complainant in the realm of personalized goods and gifts. Respondent presumably generates click-through revenue via these promoted links.
Respondent has engaged in bad faith registration and use as demonstrated on four grounds. First, Respondent uses the disputed domain name to promote links in competition with Complainant, which serves to disrupt Complainant’s own operations. Second, Respondent generates revenue from the competing links, which implicates Policy ¶ 4(b)(iv). Third, Respondent had knowledge of Complainant’s mark and rights therein as demonstrated by the promoted links on the resolving page directing users to Complainant’s correctly spelled website. Lastly, the <personalizationmalls.com> domain name is a typosquatted version of the PERSONALZIATION MALL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the FORUM received an e-mail from Respondent on September 20, 2014, in which Respondent indicated that this domain name was registered without her knowledge by her webmaster. Respondent further indicated that she contacted the registrar last year in an attempt to cancel the domain name.
1.Complainant is a United States company engaged in the provision of online retail services relating to products containing a person’s name or other identifiers.
2.Complainant owns the PERSONALIZATION MALL mark through trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,561,853, registered April 22, 2002).
3.The disputed domain name was registered February 9, 2011.
4.The disputed domain name resolves to a parked page promoting links to third-parties, some of which compete with Complainant in the realm of personalized goods and gifts.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark Complainant uses the PERSONALIZATION MALL mark in connection with online retail services relating to products containing a person’s name or other identifiers. Complainant claims to own the PERSONALIZATION MALL mark through trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,561,853, registered April 22, 2002). The Panel finds that Complainant’s valid USPTO registrations satisfy the initial requirements of Policy ¶ 4(a)(i). Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PERSONALIZATION MALL trademark. Complainant claims the <personalizationmalls.com> domain name is confusingly similar to the PERSONALIZATION MALL mark as the name utilizes the full mark with the additions of a single letter “s” at end of the mark, as well as the generic top-level domain (“gTLD”) “.com.” The Panel also notes that the domain name omits the space between two-word mark. Prior panels have found that the omission of spacing and the affixation of gTLDs are irrelevant to the Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Notably, in Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001), the panel found that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark. The Panel agrees that the added letter “s” does little to negate confusion from the full incorporated mark, and that the alterations in spacing plus the gTLD are inconsequential. Accordingly, the Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s PERSONALIZATION MALL trademark and used it in its domain name, making only one minor spelling alteration, implying that the domain name is an official domain name of Complainant leading to an official website of Complainant;
(b) The disputed domain name resolves to a parked page promoting links to third-parties, some of which compete with Complainant in the realm of personalized goods and gifts;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) In demonstrate its prima facie case, Complainant points to the WHOIS record to suggest that Respondent is not commonly known by the <personalizationmalls.com> name. The Pane lnotes that the WHOIS record identifies “teresa martin / Personalize your items” as the named registrant. Further, Complainant urges it is not affiliated with Respondent. The Panel agrees that there is insufficient evidence to demonstrate Respondent is commonly known by the <personalizationmalls.com> name, and therefore finds Policy ¶ 4(c)(ii) satisfied by Complainant. See Skyline Displays, Inc. v. Hangzhou Skyi Display Equip. Co., FA 187706 (Nat. Arb. Forum Oct. 14, 2003) (“Despite the fact that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in its WHOIS contact information, there is no evidence presented to the Panel showing that Respondent is commonly known by the <skyidisplay.com> domain name prior to registering the domain name.”);
(e) Complainant claims Respondent is not using the <personalizationmalls.com> domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Complainant argues the disputed domain name resolves to a parked page promoting links to third-parties, some of which compete with Complainant in the realm of personalized goods and gifts. Complainant presumes Respondent generates click-through revenue via these promoted links. The Panel observes that the disputed domain name resolves to promote links such as “Personalized Gifts,” Promotional Gift Items,” and “Anniversary gifts + More.” See Compl., at Attached Ex. H. The Panel agrees that such links compete with Complainant in the area of personalized goods and gifts, and therefore finds Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. As has been noted above, the FORUM received an e-mail from Respondent on September 20, 2014, in which Respondent indicated that the domain name was registered without her knowledge by her webmaster. Respondent further indicated that she contacted the registrar last year in an attempt to cancel the domain name. However, neither of those matters shows that Respondent has a right or legitimate interest in the domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complaint invokes Policy ¶ 4(b)(iii) claiming Respondent uses the disputed domain name to promote links in competition with Complainant, which serves to disrupt Complainant’s own operations. The Panel recalls the disputed domain name resolves to promote links including “Personalized Gifts,” Promotional Gift Items,” and “Anniversary gifts + More.” See Compl., at Attached Ex. H. Prior panels have found bad faith where the respondent features competing hyperlinks via the confusingly similar domain name. For example, in Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel wrote, “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).” Here, the Panel agrees that the featured hyperlinks contain the requisite level of competition envisioned by Policy ¶ 4(b)(iii), and therefore finds evidence of Respondent’s bad faith use and registration.
Secondly, Complainant argues that Respondent presumably generates revenue from the competing links, which implicates Policy ¶ 4(b)(iv). 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).” Here, the Panel agrees that the competing hyperlinks depicted in Complainant’s Exhibit H give rise to Policy ¶ 4(b)(iv) concerns as Respondent likely generates income from the linked pages.
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s mark and rights therein as demonstrated by the promoted links on the resolving page directing users to Complainant’s correctly spelled website. The Panel sees the disputed domain name resolves to promote the link “Personalization Gifts,” which redirects through Complainant’s <personalizationmall.com> domain name. In Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), the panel stated that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith. Here, the Panel infers actual knowledge based on these facts and circumstances, and therefore finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that the <personalizationmalls.com> domain name is a typosquatted version of the PERSONALZIATION MALL mark. As explained by the panel in Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), “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.” Here, the Panel recalls that the disputed domain name differs from the mark by the addition of a single letter “s” to the end of the mark. As the Panel agrees that Respondent’s deviation from the PERSONALIZATION MALL mark by the inclusion of a single letter “s” at the end of the mark amounts to typosquatting, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s PERSONALIZATION MALL trademark and its subsequent use of the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
As has been noted above, the FORUM received an e-mail from Respondent on September 20, 2014, in which Respondent indicated that the domain name was registered without her knowledge by her webmaster. Respondent further indicated that she contacted the registrar last year in an attempt to cancel the domain name. However, neither of those matters negates the strong case showing that Respondent registered and has used the domain name in bad faith.
Complainant has thus made out the second of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <personalizationmalls.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 16, 2014
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