Barefoot Tess Ltd. v. Unasi Inc.
Claim Number: FA0601000624461
Complainant is Barefoot Tess Ltd. (“Complainant”), represented by Jonathan M. Holda, of Ober, Kaler, Grimes and Shriver, 120 East Baltimore Street, Baltimore, MD 21202-1643. Respondent is Unasi Inc. (“Respondent”), Galerias 3, Zona 5, Panama 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <barefootess.com>, registered with DomainDoorman, LLC.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 20, 2006.
On January 11, 2006, DomainDoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <barefootess.com> domain name is registered with DomainDoorman, LLC and that Respondent is the current registrant of the name. DomainDoorman, LLC has verified that Respondent is bound by the DomainDoorman, LLC 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 January 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2006 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@barefootess.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <barefootess.com> domain name is confusingly similar to Complainant’s BAREFOOT TESS mark.
2. Respondent does not have any rights or legitimate interests in the <barefootess.com> domain name.
3. Respondent registered and used the <barefootess.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Barefoot Tess Ltd., is a registered corporation in the state of Maryland. Complainant primarily offers popular shoes in larger sizes than other retailers. Complainant operates brick-and-mortar stores in Maryland and an online store at the <barefoottess.com> domain name. Complainant has spent a significant amount of time, money, and effort in advertising and marketing its stores.
Complainant has been using the BAREFOOT TESS mark since May 1, 2005. Complainant’s products are featured in several magazines, including the December 2005 issue of Baltimore magazine and the January 2006 issue of Style magazine. Other magazines featuring Complainant’s shoe products are In Style, Elle, Vogue, Star, and Real Simple. Complainant registered the <barefoottess.com> domain name on January 23, 2005. Complainant’s BAREFOOT TESS mark also appears in web directories and search engines listing shoe retailers, including <beautypluspower.com>, <eastbankhair.com>, <monkeybargains.com>, <lashoppe.com>, and <tallcouture.com>. In addition, Complainant filed a trademark application with the United States Patent and Trademark Office (“USPTO”) on August 1, 2005.
Respondent registered the <barefootess.com> domain name on October 3, 2005. Respondent is using the disputed domain name to operate a web directory containing sponsored links to Complainant’s direct competitors and pop-up advertisements.
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 is not required to own a trademark registration to establish rights in the BAREFOOT TESS mark under Policy ¶ 4(a)(i). See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has established rights in the BAREFOOT TESS mark
through continuous and extensive use of the mark in connection with its shoe
stores since January 2005. Complainant
has generated substantial goodwill, value, and recognition as a shoe retailer
and is featured in several international style magazines, including Style,
Elle ,and Vogue. Complainant
has also spent a substantial amount of money, time and effort advertising and
marketing the BAREFOOT TESS mark.
Therefore, Complainant asserts, and the Panel agrees, that it has
established common law rights to the BAREFOOT TESS mark. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of [KEPPEL BANK] in connection with
its banking business, it has acquired rights under the common law.”); see
also BroadcastAmerica.com, Inc. v.
Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has
common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to
identify the complainant as the source of broadcast services over the Internet,
and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
Respondent’s <barefootess.com> domain name is
confusingly similar to Complainant’s BAREFOOT TESS mark pursuant to Policy ¶
4(a)(i), because it incorporates Complainant’s entire mark but omits a
“t.” Panels have concluded that
misspelling or subtracting letters from words does not create a distinct mark. Moreover, the elimination of the space in
Complainant’s mark and the addition of a generic top-level domain (“.com”) are
both irrelevant in conducting a Policy ¶ 4(a)(i) analysis. See Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879
(Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com>
is confusingly similar to the complainant’s COMPAQ mark because the omission of
the letter “a” in the domain name does not significantly change the overall
impression of the mark); see also Nev. State Bank v. Modern Ltd. – Cayman
Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”); see also Daedong-USA, Inc.
v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29,
2003) (“Respondent's domain name, <kioti.com>, is identical to
Complainant's KIOTI mark because adding a top-level domain name is irrelevant
for purposes of Policy ¶ 4(a)(i).”); see also Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen
Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is
identical to the complainant's CROATIA AIRLINES trademark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <barefootess.com> domain name. Complainant has the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have a right or legitimate interest in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <barefootess.com>
domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all rights
and legitimate interests in the disputed domain name.”); see also
Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel
will now examine that record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
There is also no evidence in the record that Respondent is
commonly known by the <barefootess.com> domain name. Therefore, Respondent has not established
rights or legitimate interests in the <barefootess.com> domain
name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent is also using the <barefootess.com>
domain name, which is confusingly similar to Complainant’s BAREFOOT TESS mark,
to divert Internet users seeking Complainant’s products and services to a
website featuring links to Complainant’s direct competitors and pop-up
advertisements. Such use of the
disputed domain name for commercial gain does not constitute a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks); see
also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)
(finding that the respondent was not using the domain name within the
parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain
name to take advantage of the complainant's mark by diverting Internet users to
a competing commercial site); see also Wells Fargo & Co.
v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that
the respondent’s use of “confusingly similar
derivatives of Complainant’s WELLS FARGO mark to divert Internet users to
websites featuring pop-up advertisements” was not a bona fide offering
of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <barefootess.com> domain name, which is confusingly similar to Complainant’s BAREFOOT TESS mark, to divert Internet users who misspell Complainant’s domain name to third-party websites selling similar goods. Therefore, Respondent is taking advantage of consumers’ typographical errors and capitalizing on the goodwill of Complainant’s BAREFOOT TESS mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Furthermore, the misspelling of Complainant’s BAREFOOT TESS mark in Respondent’s <barefootess.com> domain name indicates that Respondent is typosquatting. Such use constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
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 <barefootess.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 28, 2006
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