Cost Plus Management Services, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1607001682821
Complainant is Cost Plus Management Services, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue, both registered with PDR Ltd. d/b/a PublicDomainRegistry.com., are <wwwworldmarket.com> and <worldmaket.com>.
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 July 7, 2016; the Forum received payment on July 7, 2016.
On July 9, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <worldmaket.com> and <wwwworldmarket.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@worldmaket.com, postmaster@wwwworldmarket.com. Also on July 13, 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 August 10, 2016, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a retailer selling a wide range of home furnishings and food products, including furniture, curtains, rugs, gifts, apparel, coffee, wine, craft beer, home décor and handcrafted goods from more than 50 global locations.
Complainant holds a registration for the WORLD MARKET trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,347,302, registered on May 2, 2000).
Respondent registered the domain name <wwwworldmarket.com> on January 14, 2004, and the domain name <worldmaket.com> on January 16, 2006.
Both of the domain names are confusingly similar to Complainant’s WORLD MARKET mark.
Respondent is not commonly known by either of the domain names.
Respondent has not been authorized by Complainant to use the WORLD MARKET mark.
Respondent fails to provide a bona fide offering of goods or services by means of the domain names or to employ them in a legitimate noncommercial or fair use.
The websites resolving from each of the domain names feature pay-per-click links to the websites of enterprises operating in competition with the business of Complainant.
Respondent employs the domain names in this manner for commercial gain.
Respondent has neither any rights to nor any legitimate interest in either of the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent registered the domain names with knowledge of Complainant and its rights in the WORLD MARKET mark.
Each of the domain names is an instance of typo-squatting.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names have been registered and are 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 will—pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules—decide this proceeding on the basis of Complainant's undisputed representations, and—pursuant to paragraph 14(b) of the Rules—draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (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 WORLD MARKET trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (finding that a UDRP complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Saint Vincent and the Grenadines). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s contested <worldmaket.com> and <wwwworldmarket.com> domain names are confusingly similar to the WORLD MARKET mark. The domain names contain the entire mark but for elimination of the space between its terms, and, in the case of <worldmaket.com>, elimination of the letter “r” in “market.” Each also contains the required generic Top Level Domain (“gTLD”) “.com,” and, in the case of <wwwworldmarket.com>, the prefix “www,” the universal abbreviation for “World Wide Web.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a UDRP complainant’s mark in creating a domain name, and the addition to it of a gTLD, do not establish distinctiveness from the mark under Policy ¶ 4(a)(i)).
See also Shoebuy.com, Inc. v. Domain Administrator, FA 1497256 (Forum June 25, 2013) (finding that the addition of the prefix “www” to the mark of another in forming a domain name does not differentiate the domain name from that mark).
Further, see Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (finding, under Policy ¶ 4(a)(i), that the <pfzer.com> domain name was confusingly similar to a UDRP complainant’s PFIZER mark, where a respondent merely omitted from it the letter “i”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a 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 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or 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 (Forum Sept. 25, 2006):
Complainant must … 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, … 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 contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the <worldmaket.com> and <wwwworldmarket.com> domain names, and that Complainant has not authorized Respondent to use the WORLD MARKET mark. Moreover, the pertinent WHOIS information identifies the registrant of each of the domain names only as “Domain Admin,” which does not resemble the domain names. On this record, we conclude that Respondent has not been commonly known by either of the domain names so as to have acquired rights to or legitimate interests in either of them within the purview of Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so failed to demonstrate that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to use its NAVISTAR mark in any domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to use the <worldmaket.com> and <wwwworldmarket.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use in that the websites resolving from them feature links to pay-per-click websites of enterprises that compete with the business of Complainant, and that Respondent profits commercially from the operation of those resolving websites. This employment of the domain names is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015):
The Panel finds that Respondent’s use of the … [disputed domain] name to promote links in competition with Complainant’s … services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <worldmaket.com> and <wwwworldmarket.com> domain names as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondents bad faith in the registration and use of the domain names. See, for example, Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015):
Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent uses the contested <worldmaket.com> and <wwwworldmarket.com> domain names, which are confusingly similar to Complainant’s WORLD MARKET trademark, to attempt to profit commercially from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain names and their resolving websites. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s registration and use of the domain names in bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
In addition, it is evident from the record that Respondent registered the <worldmaket.com> and <wwwworldmarket.com> domain names while knowing of Complainant and its rights in the WORLD MARKET mark. This further demonstrates Respondent’s bad faith in registering the domain names. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014):
The Panel …[finds]… bad faith …[from Respondent’s] … knowledge through the name used … and the use made of it.
Finally, under this head of the Policy, we conclude that the <worldmaket.com> and <wwwworldmarket.com> domain names are instances of typo-squatting, i.e.: the misspelling of the mark of another in a domain name in order to take advantage of common typing errors made by Internet users in entering into web browsers the names of enterprises with which they wish to do business online. Typo-squatting is further proof of Respondent’s bad faith in registering and using the domain names. See, for example, Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that a respondent’s domain name constituted typo-squatting of a UDRP complainant’s mark, which evidenced bad faith registration and use under Policy ¶ 4(a)(iii)).
For all of 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 domain names <worldmaket.com> and <wwwworldmarket.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 22, 2016
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