PersonalizationMall.com v. Private Registration / WhoisGuardService.com
Claim Number: FA1608001686794
Complainant is PersonalizationMall.com (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <personializationmall.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2016; the Forum received payment on August 3, 2016. The Complaint was submitted in both Chinese and English.
On August 3, 2016, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the Forum that the <personializationmall.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. 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 August 8, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 29, 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@personializationmall.com. Also on August 8, 2016, the Chinese language 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 September 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that its goal is to serve consumers in the United States and around the world by making shopping for personalized gifts both quick and easy. Its revolutionary “preview technology” allows shoppers to see what their personalized gifts will look like before they buy. Most of the designs offered by Complainant have been created in-house by the company's team of talented artists and are exclusive to its web site. Complainant provides personalized gifts for all events and occasions such as Christmas, weddings, birthdays, babies and more. It focuses on mechanized engraving and embroidering for approximately 4,000 gift products. Numerous news outlets and talk shows have featured Complainant's business in their shows and articles throughout the nation, such as Good Morning America, The Today Show, and Women's World. Since its launch in 1998, the website has been well received attracting significant online visitors in the United States each month. Complainant has established itself in the business of on-line retail store services featuring personalized merchandise and gifts. In its 2014 fiscal, Complainant had approximately 2 million customers and $86.8 million in revenue. Complainant owns the PERSONALIZATION MALL mark through trademark registrations with the United States Patent and Trademark Office dating back to 2002.
According to Complainant, the disputed domain name is confusingly similar to the mark because it differs from the mark only by the addition of a single letter. In fact, the disputed domain name is a classic case of typosquatting.
Complainant alleges that Respondent has no rights or legitimate interests in or to the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain. Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a parked page promoting links to third-parties, some of which compete with Complainant in the realm of personalized goods and gifts. Respondent presumably generates click-through revenue via these promoted links.
Further, says Complainant, Respondent registered and used the disputed domain in bad faith. First, Respondent uses the disputed domain name to promote links in competition with Complainant, which serves to disrupt Complainant’s own operations. Second, Respondent generates revenue from the competing links, which implicates Policy ¶ 4(b)(iv). Third, the disputed domain name is a typosquatted version of the PERSONALIZATION MALL mark. Fourth, Respondent offered the disputed domain sale for sale to the public.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark PERSONALIZATION MALL dating back to 2002.
The disputed domain name was registered in 2007.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent uses the disputed domain name to promote links to products and services that compete with those of Complainant; and Respondent offered the disputed domain name for sale to the public.
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.”).
Before considering the three elements of the Policy, the Panel must rule on a procedural issue: the language of the proceedings.
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese.
Complainant requests that this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Factors which previous panels have seen as relevant include evidence of Respondent’s understanding of the language of the Complaint. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
The web site at the disputed domain name is in English and contains links to English-language web sites. This shows that Respondent has command of the English language.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The disputed domain name is confusingly similar to the PERSONALIZATION MALL mark. The Panel notes that the mark is incorporated fully, and the domain differs in that an “i" is added, the space in the mark is eliminated, and the generic top-level domain (“gTLD”) “.com” is fixed to the end. Panels have seen such alterations insufficient to overcome a finding of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent has no rights or legitimate interests in or to the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain. The Panel notes that the WHOIS lists “Private Registration / WhoisGuardService.com” as registrant. When respondents are in default, panelists have looked to the WHOIS information when determining Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a parked page promoting links to third parties, some of which compete with Complainant in the realm of personalized goods and gifts. Respondent presumably generates click-through revenue via these promoted links. Panels have examined such use and have concluded that it does not evince any bona fide offering of goods or services, or for a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Forum May 18, 2007). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Respondent offered the disputed domain name for sale to the public. Thus the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Indeed, as already noted, Respondent uses the disputed domain name to promote links to products and services which compete with those of Complainant. This serves to disrupt Complainant’s own operations. Prior panels have found bad faith where the respondent features competing hyperlinks via the confusingly similar domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that the disputed domain name is being used in bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant presumably generates revenue from the competing links, in violation of Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Thus the Panel finds that the competing hyperlinks violate Policy ¶ 4(b)(iv).
Finally, the disputed domain name is a typosquatted version of Complainant’s mark. This is sufficient in and of itself to find bad faith registration and use. See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”). Here, the disputed domain name differs from the mark by the addition of a single letter “i” to the mark. Thus the Panel finds that Respondent has engaged in typosquatting, and therefore finds evidence of bad faith pursuant to 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 <personializationmall.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 13, 2016
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