CWC Direct LLC v. BLADIMIR BOYIKO
Claim Number: FA1606001678429
Complainant is CWC Direct LLC (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA. Respondent is BLADIMIR BOYIKO (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com>, registered with eNom, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2016; the Forum received payment on June 8, 2016.
On June 8, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 June 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@coldewatercreek.com, postmaster@coldwatercree.com, and postmaster@wwwcoldwatercreek.com. Also on June 8, 2016, 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 June 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant uses the COLDWATER CREEK mark in connection with its business as a clothing retailer. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,531,418, registered Mar. 21, 1989), which demonstrates rights in the mark. See Compl., at Attached Ex. C.
2. Respondent’s <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> are confusingly similar to the COLDWATER CREEK mark as they each incorporate the entire mark, less the space, and only changing the marks by creating intentional misspellings of COLDWATER CREEK or adding the prefix “www” and adding the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names. Respondent is not commonly known by the disputed domain names. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names. Rather, the domain names each resolve to websites containing hyperlinks that purport to redirect to the products of Complainant’s competitors. See Compl., at Attached Ex. F.
4. Respondent has a pattern of domain name misuse as evidenced by several prior UDRP decisions ordering the transfer of domain names from Respondent to the trademark owners, evincing a pattern of bad faith registrations as per Policy ¶ 4(b)(ii). See Compl., at Attached Ex. H. Further, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website under Policy ¶ 4(b)(iv). Respondent has at least constructive knowledge of Complainant's rights in the mark because Complainant’s trademark registrations for the COLDWATER CREEK mark existed well before the registration of the disputed domain names. Respondent further engaged in typosquatting by taking advantage of common misspellings and typographical mistakes in the registration of the <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in business of a clothing retailer.
2. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,531,418, registered Mar. 21, 1989), which demonstrates rights in the mark.
3.The <coldewatercreek.com> domain name was registered on October 1, 2002, the <coldwatercree.com> domain name was registered on May 7, 2002, and the <wwwcoldwatercreek.com> domain name was registered on February 9, 2000.
4. The disputed domain names each resolve to websites containing hyperlinks that purport to redirect internet users to the products of Complainant’s competitors.
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 (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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the COLDWATER CREEK mark in connection with its business as a clothing retailer. Complainant submits that it has registered the mark with the USPTO (e.g., Reg. No. 1,531,418, registered Mar. 21, 1989), which it contends demonstrates rights in the mark. See Compl., at Attached Ex. C. Panels have found registration with the USPTO to be sufficient to establish rights in a mark, even where the respondent operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Therefore, the Panel finds that Complainant has demonstrated trademark rights in the COLDWATER CREEK mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s COLDWATER CREEK mark. Complainant argues that Respondent’s <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names are confusingly similar to the COLDWATER CREEK mark as they each incorporate the entire mark, minus the space between terms, and only changing the marks by creating intentional misspellings of COLDWATER CREEK or adding the prefix “www” and adding the gTLD “.com.” Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar). The Panel therefore finds that Respondent’s <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names are confusingly similar to the COLDWATER CREEK mark under Policy ¶ 4(a)(i) as they amount to common typing errors of the mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s COLDWATER CREEK
mark and to use it in its domain names, making only minor spelling alterations;
(b) Respondent registered the <coldewatercreek.com> domain name on October 1, 2002, the <coldwatercree.com> domain name on May 7, 2002, and the <wwwcoldwatercreek.com> domain name on February 9, 2000;
(c) The disputed domain names each resolve to websites containing hyperlinks that purport to redirect internet users to the products of Complainant’s competitors;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names. Complainant submits that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information for each domain name lists “BLADIMIR BOYIKO” as registrant. Complainant also submits that it has not given Respondent permission to use its COLDWATER CREEK mark. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(f) Complainant also argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names. Rather, Complainant contends that the domain names each resolve to websites containing hyperlinks that purport to redirect to the products of Complainant’s competitors. See Compl., at Attached Ex. F. The link titles include “Petite Womens Clothing,” “Wholesale Clothing Jeans,” and “Clothing Store Locations.” See id. Complainant contends that Respondent receives pay-per-click revenue in connection with the links. Panels have found a respondent’s use of a complainant’s mark to operate a pay-per-click website containing links to competitors’ goods not to constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent’s <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.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) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has a pattern of domain name misuse as evidenced by several prior UDRP decisions ordering the transfer of domain names from Respondent to the trademark owners. See Compl., at Attached Ex. H. The Panel agrees with Complainant and holds that a history of adverse UDRP decisions shows a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Secondly, Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent registered the domain names to create a likelihood of confusion with Complainant and Complainant’s mark in order to profit from users looking for Complainant’s retail clothing website. The Panel agrees with Complainant and holds that Internet user confusion that results in redirection in competitor’s websites through pay-per-click advertising systems constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Thirdly, Complainant asserts that its trademark registrations for the COLDWATER CREEK mark existed well before the registration of the disputed domain names. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fourthly, Complainant further argues that Respondent took advantage of common misspellings and typographical mistakes in the registration of the <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names. The deliberate introduction of typographical errors or misspellings into a trademark for use in a domain name constitutes typosquatting, which panels have found to be evidence of bad faith registration and use. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Therefore, the Panel finds Respondent to have engaged in typosquatting, which provides evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the COLDWATER CREEK mark and in view of the conduct that Respondent engaged in when using the <coldewatercreek.com>, <coldwatercree.com> and the <wwwcoldwatercreek.com> domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coldewatercreek.com>, <coldwatercree.com>, and <wwwcoldwatercreek.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 4, 2016
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