Charming Charlie LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1609001692517
Complainant is Charming Charlie LLC (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <charmingcharlies.com>, registered with Internet Domain Service BS Corp.
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 September 6, 2016; the Forum received payment on September 6, 2016.
On September 8, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <charmingcharlies.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 September 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@charmingcharlies.com. Also on September 9, 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 October 4, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a women’s contemporary clothing, jewelry and accessories
retailer that operates more than 350 stores worldwide with over $500 million in annual sales.
Complainant registered the domain name <charmingcharlie.com> in 2003, and its website at that address has been active since at least March 24, 2004.
Complainant has advertised its products and services extensively under the name and mark CHARMING CHARLIE from that time to the present.
Complainant has for years advertised its products in popular magazines such as Glamour, People, Redbook, InStyle, and Cosmopolitan.
As a consequence of its extensive marketing efforts under the CHARMING CHARLIE mark, Complainant has acquired common law rights in the mark dating from at least as early as October of 2004.
Complainant holds a registration for the CHARMING CHARLIE trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,708,495, registered on March 24, 2015.
Complainant’s application for trademark and service mark registration for the CHARMING CHARLIE mark was filed with the USPTO on October 27, 2010, and it reports that the mark’s first use in commerce occurred on an unspecified date in October of 2004.
Respondent registered the domain name <charmingcharlies.com> on or about December 16, 2004.
The domain name is confusingly similar to Complainant’s CHARMING CHARLIE trademark and service mark.
Respondent has not been commonly known by the domain name.
Respondent has not been authorized by Complainant to use its CHARMING CHARLIE mark.
Respondent fails to make a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it.
The website resolving from the domain name redirects Internet users to third-party websites and websites featuring sponsored-link advertisements directly competing with Complainant’s business.
Respondent’s use of the domain name is intended to and does attract Internet users to its resolving website for Respondent’s commercial gain.
Respondent lacks rights to or legitimate interests in the domain name.
The domain name is a typo-squatted version of the CHARMING CHARLIE mark.
Respondent offers the domain name for sale.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered the domain name while knowing of Complainant and its rights in the CHARMING CHARLIE mark.
Respondent registered the domain name by means of a privacy service in order to conceal its identity.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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 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 CHARMING CHARLIE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that a UDRP complainant had rights in its mark through its registration of that mark with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Bahamas). See, for example, 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.
It is also plain from the record that Complainant has acquired common law rights in its CHARMING CHARLIE mark, dating from at least as early as October of 2004, by virtue of its considerable marketing efforts under the mark from that time to the present. Common law rights in a mark enjoy the same standing as rights acquired by registration for purposes of satisfying the requirements of Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a UDRP complainant need not own a trademark registration for its mark in order to demonstrate its rights in that mark under Policy ¶ 4(a)(i)). See also Tuxedos By Rose v. Nunez, FA 95248 (Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Further, see Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Forum May 9, 2000) (finding that, while a UDRP complainant had registered its mark, thus satisfying the showing of rights requirement of Policy ¶ 4(a)(i), it also had common law rights in the mark which were independently adequate for purposes of that provision of the Policy, because it had developed brand name recognition for it).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <charmingcharlies.com> domain name is confusingly similar to Complainant’s CHARMING CHARLIE mark because it contains the mark in its entirety, less only the space between its terms, but with the addition of the letter “s” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007):
[S]paces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
See also Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (finding confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark, where the domain name contained the entire mark and merely inserting an additional letter “s”).
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 <charmingcharlies.com> domain name, and that Respondent has not been authorized by Complainant to use the CHARMING CHARLIE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Admin / Whois Privacy Corp.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (finding that a respondent was not commonly known by a disputed domain name as demonstrated by the relevant WHOIS information, and where a UDRP complainant had not licensed or otherwise authorized that respondent to use its mark).
We next observe that Complainant contends, without objection from Respondent, that Respondent fails to use the <charmingcharlies.com> domain name to provide a bona fide offering of goods or services or to make a legitimate noncommercial or fair use of it, in that the website resolving from the domain name redirects Internet users to third-party websites and websites featuring sponsored-link advertisements directly related to commercial competitors of Complainant’s business, and that Respondent seeks to profit commercially from the operation of its website. This employment of the domain name is neither a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the domain name so as to confirm in Respondent rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016), finding that:
[U]se of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
See also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015):
The Panel finds that Respondent’s use of the [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 <charmingcharlies.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015):
The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).
See also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the <charmingcharlies.com> domain name, which we have found is confusingly similar to Complainant’s CHARMING CHARLIE mark, is an attempt by Respondent to acquire financial gain by misleading Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain name. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015):
The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).
In addition, it is plain from the record that Respondent registered the disputed <charmingcharlies.com> domain name while knowing of Complainant and its rights in the CHARMING CHARLIE mark. This further demonstrates Respondent’s bad faith in registering the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014):
[A]s sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge [by Respondent of Complainant and its rights in its mark] through the name used for the domain and the use made of it.
Finally, under this head of the Policy, we conclude that the domain name <charmingcharlies.com> is an example of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name in order to take advantage of common errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business. Typo-squatting is further evidence of Respondent’s bad faith in registering and using the domain name. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that a respondent’s <unerarmour.com> domain name constituted typo-squatting of a UDRP complainant’s UNDER ARMOUR mark, which was evidence of that respondent’s bad faith under Policy ¶ 4(a)(iii)).
The Panel thus 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 <charmingcharlies.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 6, 2016
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