Lands' End Direct Merchants, Inc. v. WEB MASTER INTERNET SERVICES PRIVATE LIMITED
Claim Number: FA1502001604353
Complainant is Lands' End Direct Merchants, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is WEB MASTER INTERNET SERVICES PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landesend.com>, registered with Tirupati Domains and Hosting Private Limited.
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.
Paul M. DeCicco 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, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the Forum that the <landesend.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 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@landesend.com. Also on February 18, 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 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
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 contends as follows:
Complainant owns exclusive rights in the trademark LANDS’ END for multiple classes of goods and services. Such mark has been registered with the USPTO. The LANDS’ END mark has been continuously used since 1963.
Complainant operates a retailing facility online at www.landsend.com.
The disputed domain name is an example of “typosquatting.” The disputed domain name also is confusingly similar to Complainant’s mark because it eliminates the apostrophe.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has not been commonly known by the disputed domain name. Respondent has no trademark or intellectual property rights in the domain name and Respondent is not in any way authorized to use Complainant’s trademark. The WHOIS record does not indicate that Respondent is known by the domain name. Respondent is not affiliated with Complainant. Respondent is not using the domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The domain name directs Internet users to Complainant’s own website which violates and affiliate agreement between Complainant and Respondent. Complainant’s sent a “Cease and Desist” letter to Respondent informing Respondent of Complainant’s trademark rights which was never replied to.
Respondent registered the domain name after Complainant acquired rights in the LANDS’ END trademark.
The disputed domain name should be considered as having been registered and used in bad faith. Respondent’s typosquatting is evidence of bad faith in itself. Respondent uses the domain name to redirect traffic to Complainant’s website through Complainant’s affiliate program which is a violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant. Respondent intends to opportunistically benefit from its registration of the disputed domain name.
Since Respondent was a member of Complainant’s affiliate program, Respondent must have known of Complainant’s rights in the domain name.
The Respondent has listed the disputed domain name for sale.
Respondent is a serial cybersquatter/typosquatted and has been subject to multiple adverse UDRP decisions.
Respondent’s apparent falsified or incomplete WHOIS contact information is further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the LANDS’ END mark through its registration of such mark with the USPTO.
Respondent is not authorized to use Complainant’s trademark in a domain name.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent is a member of Complainant’s affiliate program.
Respondent uses the at-issue domain name to redirect Internet users to Complainant’s website.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the LANDS’ END trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue domain name Respondent removes the apostrophe from the LANDS’ END trademark, removes the space between its terms, inserts a letter “s” after the “d” in LANDS’ and appends the top-level domain name “.com” to the resulting string. These trivial alternations to Complainant’s trademark nevertheless leave the domain name confusingly similar to the LANDS’ END mark under the Policy. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)(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); see also, Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “WEB MASTER INTERNET SERVICES PRIVATE LIMITED” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <landesend.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s uses the at-issue domain name to redirect Internet traffic to Complainant’s website. Respondent is an affiliate of Complainant and Complainant has not given Respondent permission to use its trademark in a domain name. Using the confusingly similar domain name in this manner is 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). See Sports Auth. Mich., Inc. v Domhold Co., FA 135011 (Nat. Arb. Forum, Jan. 9, 2003) (finding that registering a domain name which differs by one letter from the complainant’s commercial website, and using that domain name to redirect Internet consumers to the complainant’s website as a part of the complainant’s affiliate program is not a bona fide offering of goods or services nor a noncommercial use of the domain name).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s <landesend.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence that may benefit the domain name’s registrant. Once there the visitors’ presence may be exploited through pay-per-click links or otherwise –such as improperly capitalizing on an affiliate program. Here, Respondent simply changes a few letters in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Additionally, Respondent registered the <landesend.com> domain name knowing that Complainant had trademark rights in the LANDS’ END mark. Respondent’s prior knowledge is evident from the fact that Respondent is an affiliate of Complainant and because the domain name directs Internet users to Complainant’s website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <landesend.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, the Panel rejects some of Complainant’s contentions regarding Respondent’s bad faith. First, Complainant claims that Respondent’s listing of the at-issue domain name “for sale” may suggest Respondent’s bad faith, however there is no indication that the general offer, listed on a third party WHOIS record’s webpage, is for any amount in excess of its out of pocket cost regarding the domain name as is required to demonstrate bad faith under Policy ¶4(b)(ii). Additionally, the “for sale” announcement is made only indirectly through the third-party provider of the WHOIS look-up service used by Complainant, thus there is some question as to whether or not such offer was actually make by the principal domain name registrant rather than by the WHOIS service on its own without authorization from the domain name’s registrant. This question cannot be resolved without the benefit of further inquiry into the circumstances surrounding the posted “for sale” offer. Second, although there may be multiple adverse decisions against the nominal Respondent -here WEB MASTER INTERNET SERVICES PRIVATE LIMITED- the registrant’s name as listed in the WHOIS record is obviously the name of the privacy service that cloaks Respondent’s real identity. Indeed, Complainant even claims that Respondent’s WHOIS information is falsified or incomplete. But, if Respondent’s name is unknown then there is no way to directly link Respondent and prior UDRP decisions. Therefore, Complainant’s notion that Respondent has suffered multiple adverse UDRP decisions suggesting bad faith under Policy ¶4(b)(ii) is baseless and appear at least offhanded, if not disingenuous.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <landesend.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 17, 2015
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