Southern Marsh Collection, L.L.C. v. ICS Inc
Claim Number: FA1703001720503
Complainant is Southern Marsh Collection, L.L.C. (“Complainant”), represented by Rob LeBlanc, Texas, USA. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southermarsh.com>, registered with Tucows Domains Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically March 7, 2017; the Forum received payment March 7, 2017.
On March 8, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <southermarsh.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. verified that Respondent is bound by the Tucows Domains Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2017, 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@southermarsh.com. Also on March 9, 2017, 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 April 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Allegations in this Proceeding:
Complainant, Southern Marsh Collection, L.L.C., is an apparel manufacturer based in Baton Rouge, Louisiana. In connection with this business, Complainant uses the SOUTHERN MARSH mark to promote its goods and services. Complainant has rights in the SOUTHERN MARSH mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,358,000, registered June 25, 2013). See Compl., at Attached Ex. C. Respondent’s domain name, <southermarsh.com>, is confusingly similar to Complainant’s SOUTHERN MARSH mark as it contains the mark in its entirety, only removing the space and the letter “n,” and adds the gTLD “.com.”
Respondent has no rights or legitimate interests in the <southermarsh.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant did not authorize Respondent to use SOUTHERN MARSH in any way. Further, Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the domain name resolves to a link farm that diverts Internet users seeking Complainant’s business for Respondent’s own commercial gain. See Compl., at Attached Ex. H. Respondent’s registration of Complainant’s misspelled mark constitutes typosquatting.
Respondent registered and used the domain name in bad faith by using typosquatting to catch the Internet user’s misspelling of Complainant’s mark. Respondent intentionally diverts consumers from Complainant’s legitimate sites for Respondent’s own commercial gain or to disrupt Complainant’s business. Complainant also urges that Respondent registered the disputed domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant. Respondent’s use of a WHOIS privacy service also supports findings of bad faith registration and use of the domain name.
Respondent’s Contentions in Response in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent created the disputed domain name February 7, 2012. See Compl., at Attached Ex. B.
Complainant showed rights and legitimate interests in the protected mark that Respondent used to create a confusingly similar domain name.
Respondent has no such rights or legitimate interests in the mark or the disputed domain name containing it.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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
Identical or Confusingly Similar:
Complainant has rights in the SOUTHERN MARSH mark based upon registration with the USPTO (e.g., Reg. No. 4,358,000, registered June 25, 2013). See Compl., at Attached Ex. C. Registration with the USPTO is sufficient to establish rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel finds that Complainant has rights in the SOUTHERN MARSH mark based upon its registration with the USPTO pursuant to Policy ¶ 4(a)(i). Application for registration was made November 1, 2012, and first use in commerce was shown as January 1, 2008. Rights date back to the date of filing November 1, 2012, and common law rights would date back to the first use in commerce, when shown with proof of secondary meaning. These dates suggest Respondent’s prior knowledge of Complainant’s business operations, because Respondent allegedly created the disputed domain name with its typosquatted spelling February 7, 2012, a date that is after first use but before the filing date and the registration. Further the Whois Information carries the banner: This Domain is for Sale.
Next, Complainant contends that <southermarsh.com> is confusingly similar to Complainant’s mark as it contains the mark in its entirety—less the space and the “n”—and merely adds the gTLD “.com.” Such omissions and additions of a gTLD do not sufficiently differentiate a mark from a domain name pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). The Panel therefore finds that <southermarsh.com> is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name using Complainant’s protected mark in misspelled typosquatted form; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant argues that Respondent has no rights or legitimate interests in <southermarsh.com> as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the SOUTHERN MARSH mark in any way. Where no response or an inadequate response is filed, WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). The WHOIS information of record identifies Respondent as “ICS Inc.” See Compl., at Attached Ex. B. Further, a lack of evidence in the record to indicate that a respondent had been authorized to register a domain name using a complainant’s mark supports a finding that a respondent does not have rights or legitimate interests in a disputed domain name. 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). The Panel therefore finds under a Policy ¶ 4(c)(ii) evaluation that Respondent does not have rights or legitimate interests in the disputed domain name.
Finally, Complainant contends Respondent’s failure to use <southermarsh.com> in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use further evidences the lack of rights or legitimate interests in the disputed domain name. The domain name resolves to either one of two unrelated websites, or a link farm containing third-party links that allegedly compete with Complainant’s business for Respondent’s benefit. See Compl., at Attached Exs. G–H. Use of a domain name to redirect Internet users to websites unrelated to a complainant’s business, or in direct competition with Complainant’s business, is not a use that establishes rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under 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 <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency 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 under Policy ¶¶ 4(c)(i) or (iii) that Respondent has not used the disputed domain name for a bona fide offering of goods or services or for any legitimate noncommercial or fair use, and thus Respondent has no rights or legitimate interests in <southermarsh.com>.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark in typosquatted format; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and used <southermarsh.com> in bad faith through Respondent’s general offer to sell the domain. See Compl., at Attached Exs. G–H. The offer of a domain name for sale can be evidence of bad faith pursuant to Policy ¶ 4(b)(i). See 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”). Therefore, the Panel finds evidence that Respondent registered and used <southermarsh.com> in bad faith pursuant to Policy ¶ 4(b)(i).
Next, Complainant contends that Respondent uses the domain name in bad faith by intentionally diverting consumers from Complainant’s legitimate sites for the alleged commercial gain of Respondent, or to disrupt Complainant’s business, or both. Use of a resolving website to divert Internet consumers and compete with a complainant’s business can be evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”). The Panel recalls that <southermarsh.com> resolves to a webpage that offers links to competitors of Complainant. See Compl., at Attached Exs. G–H. Further, the domain was registered using a WHOIS privacy service. The Panel thus finds that Respondent registered and used <southermarsh.com> in bad faith pursuant to Policy ¶ 4(b)(iii).
Finally, Complainant argues that Respondent engaged in typosquatting through registration of <southermarsh.com> in a format that contains a common misspelling of Complainant’s SOUTHERN MARSH marks. The deliberate misspelling of a complainant’s mark to take advantage of common spelling errors evidences that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Finish Line, Inc. and its subsidiary Spike’s Holdings, Inc. v. XU SHUAI WEI / XUSHUAIWEI, FA1409001577968 (Forum Oct. 9, 2014) (“The <finishlne.com> domain name is a typosquatted version of the FINISH LINE mark, which further supports a finding of bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant alleges Respondent takes advantage of a common typographical error in removing the “n” from the SOUTHERN MARSH mark. The Panel agrees and finds further evidence of Respondent’s bad faith registration and use of <southermarsh.com> pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <southermarsh.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 21, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page