Lands' End Direct Merchants, Inc. v. Above.com Legal
Claim Number: FA1502001604347
Complainant is Lands' End Direct Merchants, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lanssend.com>, registered with Above.Com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2015; the Forum received payment on February 10, 2015.
On February 13, 2015, Above.Com Pty Ltd. confirmed by e-mail to the Forum that the <lanssend.com> domain name is registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the name. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty 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 February 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@lanssend.com. Also on February 19, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 has exclusive rights to the trademark LANDS’ END, which it uses to market casual clothing, footwear, accessories, luggage and home furnishings.
Complainant holds a registration for the LANDS’ END trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,263,612, registered January 10, 1984.
Since 1995 Complainant has used the domain name at <www.landsend.com> to facilitate the conduct of its business online.
Respondent registered the domain name <lanssend.com> on or about January 6, 2009.
The domain name is confusingly similar to Complainant’s LANDS’ END mark.
Respondent has not been commonly known by the domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use its LANDS’ END mark in a domain name.
Respondent uses the domain name to redirect to its own website unsuspecting Internet users looking for Complainant’s website.
Respondent’s website features links to third-party websites which compete with the business of Complainant.
Respondent receives pay-per-click revenues from the operation of the links residing on the resolving website.
Respondent has no rights to or legitimate interests in the domain name.
The domain name is an instance of typo-squatting.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the LANDS’ END trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See United Way of America v. Alex Zingaus, FA 036202, Nat. Arb. Forum:
Panels have long recognized Complainant’s registration of the mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Australia). 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). See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under Policy ¶ 4(a)(i) whether a complainant has registered its trademark in the country of a respondent’s residence).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <lanssend.com> domain name is confusingly similar to Complainant’s LANDS’ END trademark. The domain name contains the mark in its entirety, with only the deletion of an apostrophe and the substitution of the letter “s” for the letter “d,” plus the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Kohl’s Illinois, Inc. v. Zadar Volanic, FA 1473632, Nat. Arb. Forum Nov. 30, 2012:
The removal of apostrophes and addition of a gTLD such as “.com” does not distinguish Respondent’s disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i).
See also Caterpillar Inc. v. Center for Ban on Drugs, FA 0661437, Nat. Arb. Forum May 2, 2006.
[T]he omission of a single letter from Complainant’s mark does not adequately distinguish the Disputed Domain Name from the mark.
Likewise see Victoria’s Secret v. Zuccarini, FA 0095762, Nat. Arb. Forum Nov. 18, 2000, finding that by misspelling the mark of another and adding letters to it a respondent did not create a distinct mark but only rendered the resulting domain name confusingly similar to a UDRP complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the <lanssend.com> domain name, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use its LANDS’ END mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Above.com Legal,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Compagnie de Saint Goban v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), finding, under Policy ¶ 4(c)(ii), that a respondent had no rights to or legitimate interests in a disputed domain name where it was not commonly known by the domain name and had never received permission from a UDRP complainant to use its mark.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <lanssend.com> domain name to redirect to its own website unsuspecting Internet users looking for Complainant’s website, which resolving website features links to third-party websites that compete with the business of Complainant, and that Respondent receives pay-per-click revenues from the operation of the links residing on the resolving website. This use of the domain name is neither a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the domain name. See 24 Hour Fitness USA v. 24HourNames.com, FA 95396 (Nat. Arb. Forum Sep. 26, 2003), finding that a respondent’s use of domain names to redirect Internet users to a website featuring links to the websites of a UDRP complainant’s commercial competitors was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under ¶ 4(c)(iii). See also Computer Doctor Franchise Sys. V. Computer Doctor, FA 95396 (Nat. Arb. Forum Sep. 8, 2000), finding that a UDRP respondent’s website, which was blank except for links to other websites, was not a legitimate use of a contested domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the <lanssend.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Amer. Airlines v. Texas Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007), finding, under Policy ¶ 4(b)(iii), that where a website resolving from a contested domain name carried links to the websites of a UDRP complainant’s commercial competitors, such use demonstrated bad faith disruption of that complainant’s business.
We are also convinced by the evidence that the <lanssend.com> domain name is an instance of typo-squatting, i.e.: the employment of domain name which is a deliberately misspelled version of the mark of another that seeks to take advantage of common typing errors made by Internet users in entering into their web browsers the names of mark holders with which they wish to do business. Typo-squatting is, without more, proof of Respondent’s bad faith in the registration and use of the contested domain name. See Nat. Assoc. of Prof. Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typo[-]squatting … is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typo[-]squatting is inherently parasitic and of itself evidence of bad faith.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <lanssend.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 20, 2015
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