Cost Plus World Market v. To Thi Thanh Tam
Claim Number: FA1512001652564
Complainant is Cost Plus World Market (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is To Thi Thanh Tam (“Respondent”), Ho Chi Minh City, Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <woldmarket.com> and<wolrdmarket.com>, registered with April Sea Information Technology Company 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2015; the Forum received payment on December 15, 2015.
On December 16, 2015, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <woldmarket.com> and <wolrdmarket.com> domain names are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company 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 December 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2016 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@woldmarket.com, postmaster@wolrdmarket.com. Also on December 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 January 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the WORLD MARKET mark in support of its retail business selling home furniture, decor, curtains, rugs, gifts, apparel, coffee, wine, craft beer, home décor, and handcrafted case goods from global destinations. Complainant has rights in the WORLD MARKET trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,347,302, registered on May 2, 2000). Respondent’s domain names are confusingly similar to the WORLD MARKET mark because they remove the space separating the terms, while adding the generic top-level domain (“gTLD”) “.com” and are common misspellings of Complainant’s mark by omitting or transposing the letter “r” in the WORLD portion of the mark.
2. Respondent has no rights or legitimate interest in the <woldmarket.com> and <wolrdmarket.com> domain names, registered in August 2014 and September 2014, respectively. Respondent is not commonly known by the domain names.
3. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <woldmarket.com> and <wolrdmarket.com> domain names. Rather the domain names resolve to websites containing hyperlinks which ostensibly resolve to direct competitors of Complainant from which Respondent presumably receives pay-per-click profits.
4. Additionally, Respondent’s typosquatting behavior is further evidence of Respondent’s lack of rights or legitimate interests in the domain names.
5. Respondent is using the <woldmarket.com> and <wolrdmarket.com> domain names in bad faith. Respondent’s use of the resolving websites disrupts Complainant’s legitimate business purposes. Respondent has attempted to attract Internet users to its sites for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the resolving websites.
6. Further, Respondent’s behavior indicates typosquatting.
7. Finally, Respondent had actual and constructive notice of the WORLD MARKET mark and Complainant’s rights therein because of the mark’s fame, notoriety, and their connection to Complainant’s website through one of the available hyperlinks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WORLD MARKET mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <woldmarket.com> and <wolrdmarket.com> domain names, and that Respondent registered and uses the domain names 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:
(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(f), 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.”).
Complainant has established rights in the WORLD MARKET mark through its trademark registration with the USPTO (e.g., Reg. No 2,347,302 issued May 2, 2000). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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).”); 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel agrees and finds that Complainant has rights in the WORLD MARKET mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <woldmarket.com> and <wolrdmarket.com> domain names are confusingly similar to the WORLD MARKET mark. Complainant asserts that the <woldmarket.com> and <wolrdmarket.com> domain names are common misspellings of Complainant’s mark by omitting or transposing the letter “r” in the WORLD portion of the mark. Complainant points out that Respondent simply removed the space separating the terms and added the “.com” gTLD to the mark. The removal of a space from a mark, coupled with the transposing or removal of a letter and the addition of a gTLD fail to sufficiently distinguish a domain name from a complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark); Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Therefore, the Panel agrees that Respondent’s <woldmarket.com> and <wolrdmarket.com> domain names are confusingly similar to WORLD MARKET mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain names at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <woldmarket.com> and <wolrdmarket.com> domain names. In substantiating its claim, Complainant asserts that Respondent is not commonly known by the domain names, nor is Respondent in possession of licensing rights that would allow him to use the WORLD MARKET mark in domain names. The Panel notes that “To Thi Thanh Tam” is listed as the registrant of record for the <woldmarket.com> and <wolrdmarket.com> domain names.
Further, the record is devoid of any evidence to indicate that Respondent is either commonly known by the domain names or in possession of licensing rights. In such circumstances, Respondent is not commonly known by <woldmarket.com> and <wolrdmarket.com> domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Further, Complainant argues that Respondent is not using the <woldmarket.com> and <wolrdmarket.com> domain names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that the <woldmarket.com> and <wolrdmarket.com> domain names resolve to websites featuring hyperlinks to third-party websites, some of which directly compete with Complainant’s business. Such use by a respondent does not establish either a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel agrees that Respondent’s <woldmarket.com> and <wolrdmarket.com> domain names constitute neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) & (c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has demonstrated a pattern of bad faith registration of domains through registration of the two domains at issue here. The Panel agrees that Respondent has established a pattern of bad faith registration under Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark).
Complainant argues that Respondent’s use of the <woldmarket.com> and <wolrdmarket.com> domain names disrupts Complainant’s legitimate business purposes pursuant to Policy 4(b)(iii) because of the inclusion of competing hyperlinks. Where a respondent seeks to divert Internet users to competitors of a complainant via hyperlinks related to the complainant’s legitimate business, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent’s <woldmarket.com> and <wolrdmarket.com> domain names resolve to websites containing hyperlinks to unrelated third-party websites. Complainant asserts that Respondent presumably receives a click-through fee each time an Internet user clicks on the hyperlink. Complainant argues that Respondent is attempting to profit from the increased traffic to Respondent’s website due to Internet users’ confusion. Respondent’s use of the <woldmarket.com> and <wolrdmarket.com> domain names to attempt to profit from Internet user’s confusion demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant claims that Respondent registered the <woldmarket.com> and <wolrdmarket.com> domain names with actual knowledge of Complainant’s rights in the WORLD MARKET mark. Complainant urges that this actual knowledge is demonstrated by the manner in which Respondent uses the domains, with both resolving websites containing a hyperlink to <worldmarket.com>. The Panel agrees that Respondent registered the domains in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Complainant contends that Respondent’s use of the <woldmarket.com> and <wolrdmarket.com> domain names constitutes typosquatting and thus bad faith registration. The use of common misspelling of Complainant’s trademark in an effort to capitalize on Internet user error is typosquatting and evidence of bad faith registration under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied 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 <woldmarket.com> and <wolrdmarket.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 21, 2016
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