national arbitration forum

 

DECISION

 

Backcountry.com, LLC v. Belroots Pty Ltd c/o Luis de Carvalho a/k/a Chin-Hui Wu c/o Chin-Hui Wu a/k/a Domain Administrator a/k/a ZincFusion Limited c/o Vivian Cox

Claim Number: FA1007001337669

 

PARTIES

Complainant is Backcountry.com, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Belroots Pty Ltd c/o Luis de Carvalho a/k/a Chin-Hui Wu c/o Chin-Hui Wu a/k/a Domain Administrator a/k/a ZincFusion Limited c/o Vivian Cox (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com>, registered with GoDaddy.com.

 

PANEL

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2010.

 

On July 29, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 August 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2010 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@backckuntry.com, postmaster@backcoeuntry.com, postmaster@backcointry.com, postmaster@backcoujtry.com, postmaster@backcoundry.com, postmaster@backcountrg.com, postmaster@backcounttry.com, postmaster@backdountry.com, postmaster@bacocountry.com, postmaster@bavkcountry.com, postmaster@eackcountry.com, postmaster@abckcountry.com, postmaster@bacekcountry.com, postmaster@backc0untry.com, postmaster@backceountry.com, postmaster@backcounfry.com, postmaster@backcountdy.com, postmaster@backcountri.com, postmaster@backcoyntry.com, postmaster@badkcountry.com, postmaster@gackcountry.com, postmaster@bacicountry.com, postmaster@backcluntry.com, postmaster@backco8ntry.com, postmaster@backcoubtry.com, postmaster@backcountrh.com, postmaster@backcounyry.com, postmaster@backcouuntry.com, postmaster@backxountry.com, postmaster@bafkcountry.com, postmaster@hackcountry.com, postmaster@backc9untry.com, postmaster@backcojntry.com, postmaster@backcoungry.com, postmaster@backcountfy.com, postmaster@backcountru.com, postmaster@backcoyuntry.com, postmaster@backsountry.com, postmaster@bacmcountry.com, postmaster@baskcountry.com, and postmaster@beackcountry.com by e-mail.  Also on August 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a provider of online retail and e-commerce outdoor products for backcountry excursions, including backpacking, climbing, skiing, snowboarding, and trail running. 

 

Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its BACKCOUNTRY.COM mark (including Reg. No. 3,243,545, registration application filed September 27, 2004, registration issued May 22, 2007).

 

Respondent is not commonly known by the disputed domain names, and Complainant has not given Respondent permission to use its mark in any way. 

 

Respondent registered the disputed <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com> domain names on August 24, 2006. 

 

Respondent’s domain names resolve to websites that display links to the websites of Complainant’s commercial competitors as well as to unrelated websites, and Respondent receives click-through fees from the linked websites. 

 

Respondent’s disputed domain names are confusingly similar to Complainant’s mark BACKCOUNTRY.COM.

 

Respondent does not have any rights to or legitimate interests in any of the disputed domain names.

 

Respondent registered and uses the disputed domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)    the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain names; and

(3)   Each of the same domain names was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Preliminary Issue:  Multiple Respondents

 

Complainant alleges that the entities which control all of the domain names at issue are effectively the same person or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant has submitted sufficient evidence to show that Respondent is one entity operating under a variety of aliases. Therefore, we conclude that Respondent is a single entity that controls all of the domain names at issue, and we will proceed accordingly.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in its BACKCOUNTRY.COM mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of Policy ¶ 4(a)(i).

 

Further, although the disputed domain names were registered on August 24, 2006, which is before Complainant’s registration date with the USPTO, Complainant’s rights in its mark date from its original trademark registration application filing date of September 27, 2004.  See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that a complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate respondent’s registration”).

 

Moreover, it is of no consequence that Complainant’s rights derive from registration of its mark in the United States while Respondent apparently resides elsewhere. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).

 

The <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com> domain names are confusingly similar to Complainant’s BACKCOUNTRY.COM mark.  Each domain name contains a misspelled version of Complainant’s BACKCOUNTRY.COM mark.  Misspelling a mark in forming a domain name does not render the domain name distinct from the mark under Policy ¶ 4(a)(i).  See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s domain names were confusingly similar to a complainant’s mark because the disputed domain names were common misspellings of the mark); see also 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 a complainant’s NEIMAN MARCUS mark, which was evidence that the domain name was confusingly similar to the mark).

    

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights to or legitimate interests in the disputed domain names.  Complainant is required to make out a prima facie case in support of these allegations.  Once Complainant has produced such a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:

 

complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.

 

See also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). 

 

Complainant has produced a prima facie case under this head of the Policy.  And, owing to Respondent’s failure to respond to the Complaint filed in this proceeding, the Panel may presume that Respondent does not have rights to or legitimate interests in the disputed domain names.  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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent failed to respond to  a complaint filed under the Policy). 

 

Nonetheless, we will review the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.

 

We begin by observing that Complainant argues, and Respondent does not deny, that Respondent is not commonly known by the disputed domain names, and that Complainant has not given Respondent permission to use its mark in any way.  Moreover, the WHOIS information for the disputed domain names does not indicate that Respondent is commonly known by any of the domain names.  0n this record, we must conclude that Respondent is not commonly known by the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in any of the contested domain names under Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, where there was no evidence in the record showing that that respondent was commonly known by the domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).

 

Complainant also contends, without objection from Respondent, that Respondent is using the disputed domain names to redirect Internet users to websites that feature links to the websites of businesses that compete with Complainant, and that Respondent receives click-through fees from the linked websites.  Such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair used under Policy ¶ 4(c)(iii).  See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that a respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to a complainant’s commercial competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which is blank but for links to other websites, is not a legitimate use of contested domain names).

 

Finally, it is evident that Respondent is taking advantage of Internet users who are trying to reach Complainant’s official <backcountry.com> website by using common misspellings of Complainant’s BACKCOUNTRY.COM mark in forming the disputed domain names, thus redirecting Internet users to competing businesses.  This is typo-squatting, which is evidence that Respondent lacks rights to or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had engaged in:

 

typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

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 a complainant's LTD COMMODITIES mark, and that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

Therefore, the Panel finds that Respondent has no rights to or legitimate interests in any of the disputed domain name pursuant to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain names to redirect Internet users to websites for the businesses of Complainant’s competitors, thus disrupting Complainant’s business.  This use of the disputed domain names is evidence that Respondent registered and uses the domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a disputed domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used it to operate a search engine with links to the websites of a complainant’s commercial competitors).

 

Respondent receives click-through fees from the businesses and websites that are advertised on and linked to Respondent’s website.  This is evidence of Respondent’s bad faith registration and use of the contested domain names under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):

 

Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a domain name that was confusingly similar to a complainant’s mark was used to host links to third-party websites featuring services similar to those offered by a complainant). 

 

We have already concluded that Respondent’s registration and use of the contested domain names constitutes typosquatting.  This is also evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii).  See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typosquatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that each of the <backckuntry.com>, <backcoeuntry.com>, <backcointry.com>, <backcoujtry.com>, <backcoundry.com>, <backcountrg.com>, <backcounttry.com>, <backdountry.com>, <bacocountry.com>, <bavkcountry.com>, <eackcountry.com>, <abckcountry.com>, <bacekcountry.com>, <backc0untry.com>, <backceountry.com>, <backcounfry.com>, <backcountdy.com>, <backcountri.com>, <backcoyntry.com>, <badkcountry.com>, <gackcountry.com>, <bacicountry.com>, <backcluntry.com>, <backco8ntry.com>, <backcoubtry.com>, <backcountrh.com>, <backcounyry.com>, <backcouuntry.com>, <backxountry.com>, <bafkcountry.com>, <hackcountry.com>, <backc9untry.com>, <backcojntry.com>, <backcoungry.com>, <backcountfy.com>, <backcountru.com>, <backcoyuntry.com>, <backsountry.com>, <bacmcountry.com>, <baskcountry.com>, and <beackcountry.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  September 7, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum