WeddingChannel.com, Inc. v. WhoisGuard Protected
Claim Number: FA0603000662309
Complainant is WeddingChannel.com, Inc. (“Complainant”), represented by Monica Riva Talley, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is WhoisGuard Protected (“Respondent”), 8939 S. Sepulveda Blvd., Westchester, CA 90045.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wedddingchannel.com>, registered with RJG VENTURES, L.L.C.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 21, 2006.
On March 22, 2006, RJG VENTURES, L.L.C. confirmed by e-mail to the National Arbitration Forum that the <wedddingchannel.com> domain name is registered with RJG VENTURES, L.L.C. and that Respondent is the current registrant of the name. RJG VENTURES, L.L.C. has verified that Respondent is bound by the RJG VENTURES, L.L.C. 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 March 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 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@wedddingchannel.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <wedddingchannel.com> domain name is confusingly similar to Complainant’s WEDDING CHANNEL mark.
2. Respondent does not have any rights or legitimate interests in the <wedddingchannel.com> domain name.
3. Respondent registered and used the <wedddingchannel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WeddingChannel.com, Inc., offers wedding planning, gift registry, and communications services. Complainant has registered the WEDDING CHANNEL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,519,435 issued December 18, 2001), and has also registered the WEDDINGCHANNEL.COM mark with the USPTO (Reg. No. 2,564,964 issued July 9, 2002). Complainant began offering its services in 1997, and currently offers an extensive network of gift registry services, hosting over 1,300,000 bridal gift registries. In 2005, more than $130,000,000 worth of bridal registry gifts have been purchased through Complainant’s website at the <weddingchannel.com> domain name.
Respondent registered the <wedddingchannel.com> domain name on November 9, 2005. Internet users who access this domain name are directed to a generic search-engine website containing links to services in direct competition with Complainant.
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. 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, by registering the WEDDING CHANNEL mark with
the USPTO, has established rights in this mark pursuant to Policy ¶
4(a)(i). 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 Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <wedddingchannel.com> domain name
is confusingly similar to Complainant’s WEDDING CHANNEL mark, in that it merely
adds an extra letter “d” to the mark along with the top-level domain
“.com.” The addition of a top-level
domain to a mark is irrelevant to the analysis of whether a domain name is
confusingly similar to the mark. Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Moreover, Respondent’s domain name is an
example of “typosquatting,” designed to catch Internet users who inadvertently
make a typographical error, such as typing a double letter instead of a single
letter, when trying to type a domain name.
Because Respondent’s domain name only differs from Complainant’s mark in
such a way as to take advantage of typographical errors, Respondent’s domain
name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). Neiman
Marcus Group, Inc. v. Party Night, Inc.,
FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS mark and was a classic example of
typosquatting, which was evidence that the domain name was confusingly
similar to the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the name. 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); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Complainant has presented a prima facie case, and the Panel will consider whether the evaluation of the evidence on record demonstrates rights or legitimate interests under Policy ¶ 4(c).
Internet users who access Respondent’s domain name are
presented with links that redirect them to websites offering services in direct
competition with Complainant. Respondent
presumably receives payment in exchange for diverting Internet users to the
websites sponsoring these services and is, therefore, capitalizing on Internet
users’ typographical errors for its own financial benefit. Such use is not in connection with 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). Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Prudential Ins. Co. of Am. v.
Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding
no rights or legitimate interests in the disputed domain name where the
respondent was using the complainant’s mark to redirect Internet users to a
website offering credit card services unrelated to those services legitimately
offered under the complainant’s mark).
Complainant asserts that Respondent is not and has never been commonly known by the disputed domain name. Respondent has not come forth with any information that would support that it has rights or legitimate interests in the disputed domain name. The Panel infers that Respondent has no rights or legitimate interests in the name under Policy ¶ 4(c)(ii). RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel assumes that Respondent receives click-through
fees in exchange for diverting Internet users to other websites. Because Respondent’s <wedddingchannel.com>
domain name includes Complainant’s WEDDING CHANNEL mark and links to websites
offering competing products, Internet users may mistakenly believe that the
resulting websites are affiliated with Complainant. Use of the disputed domain name in this fashion constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain); see also Gardens
Alive, Inc. v. D&S Linx, FA 203126 (Nat.
Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”).
Moreover, Respondent’s addition of the letter “d” to Complainant’s mark is a clear attempt to capitalize on typographical errors made by Internet users attempting to reach Complainant’s website. Use of a typosquatted version of Complainant’s mark is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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)); see also 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.”).
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 <wedddingchannel.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 3, 2006
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