Popular Enterprises, LLC. v. Wan-Fu China, Ltd.
Claim Number: FA0701000892424
Complainant is Popular Enterprises, LLC. (“Complainant”), represented by Brett
A. August, of Pattishall, McAuliffe,
Newbury, Hilliard & Geraldson LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <netsster.com>, registered with Capitoldomains, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2007.
On January 18, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <netsster.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, 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 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2007 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@netsster.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 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <netsster.com> domain name is confusingly similar to Complainant’s NETSTER mark.
2. Respondent does not have any rights or legitimate interests in the <netsster.com> domain name.
3. Respondent registered and used the <netsster.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Popular
Enterprises, LLC., is a leading supplier of high-value Internet traffic to
advertisers. In November, 2001,
Complainant adopted the NETSTER mark and registered the <netster.com>
domain name to provide users with accurate and content-relevant searches from a
base of over eight billion websites.
Complainant currently holds a registered trademark with the United
States Patent and Trademark Office (“USPTO”) for the NETSTER mark (Reg. No.
2,769,891 issued September 30, 2003).
Respondent, Wan-Fu China, Ltd., registered the <netsster.com> domain name on January 15, 2007. Respondent is using the disputed domain name to display hyperlinks that advertise various sporting nets.
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’s registration of the NETSTER mark with the USPTO preceded Respondent’s registration of the <netsster.com> domain name by over three years. Under Policy ¶ 4(a)(i), registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark to Complainant. Thus, the Panel finds that Complainant has established rights in the NETSTER mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); 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 <netsster.com> domain name contains Complainant’s NETSTER with the addition of an extra ‘s.’ The addition of one extra letter renders a domain name confusingly similar to a complainant’s mark, and the addition of the generic top-level domain “.com” is without relevance to this analysis. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s NETSTER mark under Policy ¶ 4(a)(i). 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he 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 has alleged that Respondent does not have rights or legitimate interests in the <netsster.com> 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 rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <netsster.com> domain name. According to Complainant, Respondent is not licensed or authorized to use the NETSTER mark. The WHOIS information identifies Respondent as “Wan-Fu China, Ltd.,” and the Panel can find no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <netsster.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent is using the <netsster.com> domain name, which is confusingly similar to
Complainant’s NETSTER mark, to display hyperlinks that advertise various
sporting nets. This use of the disputed
domain name is unrelated to Complainant’s business, and therefore is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), or a noncommercial or
fair use under Policy ¶ 4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <netsster.com> domain name, which is confusingly similar to Complainant’s NETSTER mark, to display hyperlinks that advertise various sporting nets. Respondent likely commercially benefits from this confusing similarity by receiving click-through fees for each redirected Internet user. Respondent is taking advantage of the confusing similarity between Complainant’s NETSTER mark and Respondent’s <netsster.com> domain name in order to profit from the goodwill associated with Complainant’s mark, and such registration and use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent’s <netsster.com> domain name is confusingly similar to Complainant’s NETSTER mark because of the addition of the extra “s” in the disputed domain name. Complainant has alleged that this constitutes typosquatting, which should be recognized as bad faith registration and use pursuant to Policy ¶ 4(a)(iii). In Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003), the panel held 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). Similarly, in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel held that the respondent’s <zonelarm.com> domain name took advantage of a typographical error and was thus typosquatting, which “itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Like the domain names in Dermalogica and Zone Labs, Respondent’s <netsster.com> domain name can be characterized as typosquatting because Respondent is trying to benefit from a potential typographical error made by Internet users. Therefore, the Panel finds that Respondent registered and is using the <netsster.com> domain name in 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 <netsster.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 1, 2007
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