Lands’ End Direct Merchants, Inc. v. Pham Dinh Nhut
Claim Number: FA1502001603515
Complainant is Lands’ End Direct Merchants, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landsrnd.com>, registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically February 5, 2015; the Forum received payment February 5, 2015. The Complaint was submitted in both English and Vietnamese.
On February 6, 2015, APRIL SEA INFORMATION TECHNOLOGY CORPORATION confirmed by e-mail to the Forum that the <landsrnd.com> domain name is registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name. APRIL SEA INFORMATION TECHNOLOGY CORPORATION verified that Respondent is bound by the APRIL SEA INFORMATION TECHNOLOGY CORPORATION registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 13, 2015, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of March 5, 2015, 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@landsrnd.com. Also on February 13, 2015, the Vietnamese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 3015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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.
Complainant’s Contentions in this Proceeding:
Complainant owns the LANDS’ END mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,263,612, registered Jan. 10, 1984). Complainant uses the LANDS’ END mark in connection with its mail order, retail and on-line store services that feature its products, including luggage, home goods, clothing, outerwear, footwear, and accessories. The <landsrnd.com> domain name is confusingly similar to the LANDS’ END mark. The domain name differs by a single character, omits an apostrophe, and simply adds the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant never authorized Respondent to use the LANDS’ END trademark. Respondent’s lack of rights or legitimate interests in the <landsrnd.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <landsrnd.com> domain name to feature generic links to third-party websites. See Compl., at Attached Ex. H.
Respondent engaged in bad faith registration and use of the <landsrnd.com> domain name. Respondent is a “serial cybersquatter” and has engaged in a pattern of such behavior. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent engaged in typosquatting, which is evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent’s Contention in this Proceeding:
Respondent did not submit a Response.
The Panel notes that Respondent registered the <landsrnd.com> domain name December 4, 2007.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making Vietnamese the language of the proceedings. After reviewing the applicable rules regarding language of the proceedings under the UDRP, the Panel, pursuant to Rule 11(a), determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant has well-established rights and legitimate interests in its well-known mark contained in misspelled form within the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain name containing Complainant’s protected mark in misspelled form.
Respondent registered a confusingly similar domain name using Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to 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 such ights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar:
Complainant owns the LANDS’ END mark through its registration with the USPTO (e.g., Reg. No. 1,263,612, registered Jan. 10, 1984). Complainant uses the LANDS’ END mark in connection with its mail order, retail and on-line store services that feature its products, including luggage, home goods, clothing, outerwear, footwear, and accessories. Prior panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See 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)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant registered its trademark in the country of the respondent’s residence). Accordingly, although Respondent reportedly resides in Vietnam, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
Complainant argues the <landsrnd.com> domain name is confusingly similar to the LANDS’ END mark. The domain name differs by a single character, omits an apostrophe, and simply adds the generic top-level domain (“gTLD”) “.com” to the domain name. Prior panels have found that domain names that differ by only one character from a complainant’s trademark have a high probability of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (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). Further, past panels have held that the omission of a punctuation mark is irrelevant in the analysis of confusing similarity. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding that the domain name <chichis.com> was identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark). Finally, addition of a gTLD does not adequately distinguish the disputed domain name from the registered mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, this Panel finds that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name using Complainant’s mark in misspelled form; Complainant satisfied the elements of ICANN Policy Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Pham Dinh Nhut” as the registrant of record. See Compl., at Attached Ex. I. Further, Complainant has never authorized Respondent to use the LANDS’ END trademark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as 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).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <landsrnd.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. According to Complainant, Respondent uses the <landsrnd.com> domain name to feature generic links to third-party websites, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. H. The Panel notes that some of the hyperlinks reached through Respondent’s resolving website include “Swimsuits For All,” Lifeguard Clothing,” and “Women’s Clothing Stores.” Past panels have found that the use of hyperlinks to redirect Internet users to a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also argues that Respondent engaged in typosquatting, which further demonstrates Respondent’s lack of rights or legitimate interests in respect of the disputed domain name. Users might mistakenly reach Respondent’s website by misspelling Complainant’s actual website <landsend.com> and inadvertently type <landsrnd.com>, which varies by only one character. Taking advantage of Internet users’ typographical errors, known as typosquatting, has been found by prior panels to be illustrative of a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent engaged in bad faith registration and use of the <landsrnd.com> domain name according to Policy ¶ 4(a)(iii). Complainant argues that Respondent is a “serial cybersquatter” and has engaged in a pattern of such behavior, which demonstrates bad faith registration under Policy ¶ 4(b)(ii). According to Complainant, Respondent engaged in a pattern of cybersquatting and typosquatting and has been involved in numerous prior UDPR proceedings. See Compl., at Attached Ex. N. Prior panels have agreed that having multiple prior UDRP decisions that result in findings of bad faith or transfer indicate a respondent’s bad faith registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel finds that such evidence represents a pattern of behavior by Respondent, and the Panel finds that Respondent engaged in bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant alleges that Respondent’s pay-per-click links resolve to websites that feature products that compete with Complainant, such as <swimsuitoutlet.com> and <swimsuitsforall.com>. See Compl., at Attached Ex. H. These links divert potential customers away from Complainant to third-party websites, which is disruptive to Complainant’s business. Past panels have found such disruption to be evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As a result, the Panel finds that Respondent’s disruptive behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant asserts that Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant argues that, as Respondent’s website features pay-per-click hyperlinks, Respondent presumably receives revenue through click through fees. As such, Complainant argues that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by using the <landsrnd.com> domain name to mislead consumers for profit. Past panels have agreed that using a disputed domain name to feature competing hyperlinks on the resolving website demonstrates bad faith registration and use. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Thus, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent engaged in typosquatting, which is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii). Users here would merely need to mistype only one character to be mistakenly directed to Respondent’s website rather than Complainant’s. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). This Panel accordingly finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <landsrnd.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 26, 2015
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