national arbitration forum

DECISION

Macy's Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. (collectively and with its parent "Macy's") v. QiYanjie / Qi Yanjie

Claim Number: FA1411001588143

PARTIES

Complainant is Macy's Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. (collectively and with its parent "Macy's") (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is QiYanjie / Qi Yanjie (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mactys.com>, <macuys.com>, <macvys.com>, <macyas.com>, <mascys.com>, <mavcys.com>, and <msacys.com>, registered with Ename Technology Co., Ltd.

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2014; the National Arbitration Forum received payment on November 3, 2014. The Complaint was received in both English and Chinese.

On November 3, 2014, Ename Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <mactys.com>, <macuys.com>, <macvys.com>, <macyas.com>, <mascys.com>, <mavcys.com>, and <msacys.com> domain names are registered with Ename Technology Co., Ltd. and that Respondent is the current registrant of the names. Ename Technology Co., Ltd. has verified that Respondent is bound by the Ename Technology Co., Ltd. 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 November 7, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mactys.com, postmaster@macuys.com, postmaster@macvys.com, postmaster@macyas.com, postmaster@mascys.com, postmaster@mavcys.com, and postmaster@msacys.com. Also on November 7, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes the remainder of the proceedings may be conducted in English.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant’s MACY’S Mark:

[i.] MACY'S men's [ youths' and boys' ] coats, vests, trousers and overcoats, [ straw, felt and textile hats and caps, outer shirts of all kinds, textile collars and cuffs, sweaters, overalls, men's women's and children's hosiery, bath robes and bathing suits, night shirts, pajamas, gloves of all kinds, knitted and woven underwear, ] ladies' [ ,misses' and children's coats, cloaks, raincoats, inner and outer suits, outer skirts, and trimmed hats, ] fur jackets [ , capes, muffs and scarfs, ladies' shirt waists, underskirts, corsets, corset waists, dresses, kimonos, wrappers, and men's women's and children's leather canvas and rubber boots, shoes and slippers ] (U.S. Reg. 0,078,333)

[ii.] MACY'S Department store services. (U.S. Reg. 0,922,972)

[iii.] MACYS.COM Electronic retail department stores services. (U.S. Reg. 2,478,842)

[iv.] MACY'S Retail department stores.(U.S. Reg. 3,129,938)

Complainant is the owner of federal trademarks in the United States that consists of the words
"MACY’S". This registrations are collectively referred to hereafter as the "Complainant's Mark."

5. FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds:

Complainant, MACY’S RETAIL HOLDINGS, INC., (“MRHI”) is one of the nation's premier retailers, with corporate offices in Cincinnati and New York. Publicly traded under the symbol "M" on the New York Stock Exchange, Macy's is one of the nation’s most successful and respected retail institutions.

MRHI operates more than 800 Macy's and Bloomingdale's department stores and furniture galleries in 45 states, the District of Columbia, Guam and Puerto Rico. Macy’s workforce includes over 100,000 employees. The company also operates MACYS.COM.

Macy’s adopted the MACY’S mark in 1858 and additionally owns the federal trademark registrations. The federal mark registrations have not been abandoned, cancelled or revoked. Each of these filings is incontestable through the filing of Section 8 and 15 affidavits in the USPTO.

MACY’S has spent millions of dollars in advertisement and promotion of the MACY’S marks (the “Marks”) on television, print media and the Internet. Based on its federal trademark registrations and extensive use, Macy's owns the exclusive right to use the Macy's Marks in connection with on-line department store services.

[a.]

The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.

i.	By virtue of its federal trademark and/or service mark registration(s), Complainant is the owner of the Complainant's Mark(s). See, e.g., 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. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding 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).
ii.	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). See Rollerblade, Inc. v. McCrady, WIPO Case No.D2000-0429 (finding 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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he 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.")
iii.	The Disputed Domain Name(s) (is/are) confusingly similar to Complainant's Mark(s) because (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). For clarification, the Disputed Domain Name(s) contain(s) 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 as compared to Complainant's Mark(s).
iv.	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. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding 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).

[b.]

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:

Respondent has not been commonly known by the Disputed Domain Name(s). Upon information and belief, at the time Respondent registered the Domain Name(s), it had no trademark or intellectual property rights in the Domain Name(s). See Policy, ¶4(c)(ii). See WHOIS record for the Disputed Domain Name(s). Where, as here, "the WHOIS information suggests Respondent is 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," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202. See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ,-r 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"); See also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).

ii.

Respondent is not sponsored by or legitimately affiliated with Complainant in any way.

iii.

Complainant has not given Respondent permission to use Complainant's Mark in a domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding 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).

iv.	A "Cease and Desist" letter was sent to the Respondent. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. 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.
v.	Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. Rave Club Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
vi.	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). See 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); see also 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).
vii.	The earliest date on which Respondent registered the Disputed Domain Name(s) was February 20, 2009, which is significantly after Complainant's first use in commerce, on January 1, 1858, as specified in their relevant registration with the USPTO.
viii.	The earliest date on which Respondent registered the Disputed Domain Name(s) was February 20, 2009, which is significantly after Complainant's registration of their relevant Marks with the USPTO on June 7, 1910.
ix.	The earliest date on which Respondent registered the Disputed Domain Name(s) was February 20, 2009, which is significantly after Complainant's registration of MACYS.COM on February 7, 1994.

[c.]

The Disputed Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:

Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding 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'"); see also 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.").

ii.

iii.

iv.

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 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 WIPO Decision D2008-1470, AIDA Cruises German Branch of Societa di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / Belgium Domains "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 (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)".

To further stress the above, Respondent’s setting up of a “click through” website for which it likely receives 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. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding 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). See also 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’s 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. The Panel should find that this effort to divert consumers and disrupt Complainant’s business is evidence of bad faith registration and use under Policy ¶4(b)(iii). See 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)).

Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Name(s) to display Complainant's Mark(s) spelled correctly (even though the domain name(s) (is/are) 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).

vi.

Respondent has caused the websites reachable by (some or all of) 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.

vii.

Respondent holds registrations on other domain names that appear to be
straightforward examples of typosquatting. Although those names are not
directly involved in this complaint, they serve as further evidence of bad faith
intent on the part of Respondent. See Policy, 4(b)(ii) and Time Warner Inc. v.
Zone MP3, NAF Claim No. FA0706001008035 (typosquatting combined with
registration of as few as four domain names that are identical or confusingly
similar to "protected marks" is sufficient to establish a pattern leading to bad
faith). See also Citigroup Inc. v. Digi Real Estate Foundation, NAF Claim No.
FA0704000964679.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

(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.

DISCUSSION

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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:

(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.”).

Identical and/or Confusingly Similar

Complainant claims to own the MACYS.COM mark through its registration with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,478,842, registered Aug. 21, 2001). Complainant uses the mark in connection with retail department store services. Complainant’s valid trademark registration with the USPTO adequately demonstrates Complainant’s rights in the mark for purposes of Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

Complainant claims the <mactys.com>, <macuys.com>, <macvys.com>, <macyas.com>, <mascys.com>, <mavcys.com>, and <msacys.com> domain names are confusingly similar to the MACYS.COM mark because they differ by a single added letter. Adding a single letter into Complainant’s mark does not prevent a finding of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). The disputed domain names are confusingly similar to the mark pursuant to Policy ¶4(a)(i). The addition of a gTLD or ccTLD is be disregarded for the purposes of Policy ¶4(a)(i) analysis because they are required by domain name syntax. See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).

The Panel finds Policy ¶4(a)(i) satisfied.

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding the complainant must first make a prima facie case 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 it has rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant claims Respondent lacks rights in the domain names because Respondent is not commonly known by any of the disputed domain names, nor is Respondent affiliated with Complainant in any way. The WHOIS record lists “QiYanjie” as registrant, which does not seem similar to any of the disputed domain names. In the absence of any contradictory evidence in the record, it seems evident Respondent not commonly known by the disputed domain names pursuant to Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

Complainant claims Respondent is using the disputed domain names to redirect users to dynamic parking pages of commercial links, some of which promote goods and services in competition with Complainant’s own retail offerings. Such use amounts to neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). The parking pages contain links to Complainant, as well as links to competitors such as “JCPenney Official Site,” “Zara Clothing Store,” and “TJ MAXX Clothing.” This means Respondent neither registered nor uses the disputed domain names 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), 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).”). Respondent’s promotion of parking page links related to Complainant and its competitors does not fall within the parameters of legitimate and protected use under Policy ¶4(a)(ii).

The Panel finds Policy ¶4(a)(ii) satisfied.

Registration and Use in Bad Faith

Complainant claims the disputed domain names resolve to dynamic parking pages offering links to Complainant’s competition, which disrupts Complainant business and warrants a finding of Policy ¶4(b)(iii) bad faith registration and use. The disputed domain names resolve parking pages featuring links to “JCPenney Official Site,” “Zara Clothing Store,” and “TJ MAXX Clothing,” all of which are direct competitors of Complainant’s department store retail services. This is sufficient evidence of bad faith pursuant to Policy ¶4(b)(iii) because Respondent uses the disputed domain names to promote Complainant’s competitors. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).

Complainant claims the promoted pay-per-click links displayed on the resolving pages allow Respondent to impermissibly benefit from user confusion in violation of Policy ¶4(b)(iv). Respondent uses the pay per click links to capitalize on the initial user confusion when they arrive at the disputed domain sites. This constitutes Policy ¶4(b)(iv) bad faith registration and use. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

The Panel finds Policy ¶4(a)(iii) satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

Accordingly, it is Ordered the <mactys.com>, <macuys.com>, <macvys.com>, <macyas.com>, <mascys.com>, <mavcys.com>, and <msacys.com> domain names be TRANSFERRED from Respondent to Complainant.

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, December 22, 2014