Mervyns, LLC v. Tam, M
Claim Number: FA0509000568483
Complainant is Mervyns, LLC (“Complainant”), represented by Thomas H. Zellerbach, of Orrick, Herrington & Sutcliffe LLP, 1000 Marsh Road, Menlo Park, CA 94025-1021. Respondent is Tam, M (“Respondent”), 6017 Christie Ave., Emeryville, CA 94608.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mervins.com>, registered with 007Names, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 30, 2005.
On October 3, 2005, 007Names, Inc. confirmed by e-mail to the National Arbitration Forum that the <mervins.com> domain name is registered with 007Names, Inc. and that Respondent is the current registrant of the name. 007Names, Inc. has verified that Respondent is bound by the 007Names, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mervins.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <mervins.com> domain name is confusingly similar to Complainant’s MERVYN’S mark.
2. Respondent does not have any rights or legitimate interests in the <mervins.com> domain name.
3. Respondent registered and used the <mervins.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mervyns, LLC, a California corporation operates over 250 department stores in thirteen states. Complainant sells both national brands and it own house brands and has been in business for over fifty-five years.
Complainant owns numerous trademark registrations for the MERVYN’S mark. Complainant has registered the MERVYN’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,063,553 issued April 12, 1977).
Complainant also owns and operates a website at <www.mervyns.com> in which it markets and sells its products and services. Complainant has owned and operated this website since 1994.
Respondent registered the <mervins.com> domain name on March 10, 2000. Respondent’s domain resolves to a website that claims to be the official website of Complainant. Respondent’s website allows solicits account numbers and passwords from Internet users who mistakenly believe that they have reached Complainant’s official website. Respondent’s website also invites Complainant’s customers to apply for credit online by submitting confidential information.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant established with extrinsic proof in this
proceeding that it has rights in the MERVYN’S mark based on its registration of
the mark with the USPTO. It is
established under the Policy that a complainant’s registration of a mark with a
federal authority establishes a prima facie case of the complainant’s
rights. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Additionally,
Respondent’s <mervins.com>
domain name is confusingly similar to Complainant’s MERVYN’S mark because the
disputed domain name is phonetically identical to Complainant’s mark. Respondent’s <mervins.com> domain name merely misspells Complainant’s
MERVYN’S mark by replacing the “y” in Complainant’s mark with an “i.” Such a change is not enough to overcome a finding of
confusing similarity pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the
UDRP); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb.
Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in
sound and, thus,
that the respondent’s <mapcrest.com> domain name and the complainant’s
MAP QUEST mark are confusingly similar).
Furthermore, the addition of the top-level domain “.com” is irrelevant in determining whether the <mervins.com> domain name is confusingly similar to Complainant’s mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <mervins.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that, once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent is not commonly known by the <mervins.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Moreover, Respondent is using the <mervins.com> domain name to pass itself off as Complainant. Respondent’s domain name resolves to a website that appears to be the official website of Complainant. Furthermore, the website that Respondent’s domain name resolves to solicits account numbers and passwords from customers who mistakenly believe that they have reached Complainant’s official website. Such use is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(a)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Additionally, the Panel interprets
Respondent’s use of a typosquatted domain name as further evidence that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ (4)(a)ii). See IndyMac
Bank F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”); see also LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb.
Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
ltdcommmodities.com>, and <ltdcommodaties.com> domain names were
intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’
is evidence that Respondent lacks rights or legitimate interests in the
disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the <mervins.com> domain name to operate a website that appears to be Complainant's official home page, but instead is part of a "phishing" scam designed to trick Internet users into submitting account information to Respondent. The Panel concludes that such use is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (defining “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent”); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”).
The Panel finds that Respondent registered and used the
disputed domain name in bad faith because Respondent’s domain name is merely a
typosquatted variation of Complainant’s MERVYN’S mark. See
Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting is the intentional misspelling of words with 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”); see also
Zone Labs, Inc. v. Zuccarini, FA
190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and
use of [the <zonelarm.com> domain name] that capitalizes on the
typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).”); see also Black
& Decker Corp. v. Khan, FA
137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain
name was registered to “ensnare those individuals who forget to type the period
after the ‘www’ portion of [a] web-address,” which was evidence that the domain
name was registered and used in bad faith).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mervins.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 21, 2005
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