Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. v. Acosta Jose Julian
Claim Number: FA1404001555476
Complainant is Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Acosta Jose Julian (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carrolwrightgifts.com>, registered with DYNADOT LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 23, 2014; the National Arbitration Forum received payment April 23, 2014.
On April 23, 2014, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <carrolwrightgifts.com> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the name. DYNADOT LLC verified that Respondent is bound by the DYNADOT LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2014, 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@carrolwrightgifts.com. Also on April 24, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
1. Complainant is the owner of the federal trademark registrations in the United States that consists of the words CAROL WRIGHT and CAROL WRIGHT GIFTS. See Complainant’s Exhibit E.
a. Complainant and its subsidiary is a direct-mail catalog and online retailer specializing in the retail sale of a wide variety of health products aimed at seniors, along with clothing, collectibles, exercise equipment, home furnishings, housewares, and shoes.
b. Respondent’s <carrolwrightgifts.com> domain name is confusingly similar to Complainant’s CAROL WRIGHT GIFTS mark.
i. Respondent adds an additional letter “r” to Complainant’s registered mark.
ii. Respondent removes the spaces in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights to or legitimate interests in the <carrolwrightgifts.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent has no trademark or intellectual property rights in the disputed domain name.
ii. Complainant has not licensed, authorized, or permitted Respondent to register the disputed domain name.
iii. Respondent registered the disputed domain name September 27, 2004, which is after Complainant’s registration of its mark in 1999.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s businesses.
ii. Respondent presumably receives advertising revenue from the displayed links. See Complainant’s Exhibit H.
c. Respondent’s disputed domain name is a typosquatted version of Complainant’s registered mark.
3. Respondent registered and is using the <carrolwrightgifts.com> domain name in bad faith.
a. Respondent listed the disputed domain name for sale. See Complainant’s Exhibit H.
b. Respondent is a serial cyber squatter as shown by the NAF and WIPO UDRP decision database.
c. Respondent’s use of the disputed domain name competes with Complainant’s business because Respondent displays links for third parties that compete with Complainant and offer similar products. Complainant claims that Respondent’s use diverts Internet users away from Complainant and to third-party websites.
d. Respondent uses the disputed domain name to resolve to a “click through” website where it provides links to the services and products offered by Complainant in order to gain revenue. Respondent displays content directly related to Complainant’s business, which Complainant contends removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant’s famous mark. See Complainant’s Exhibit H.
e. Respondent is engaged in bad faith typosquatting behavior.
1. The Panel notes that the WHOIS information for the disputed domain name lists “Acosta Jose Julian” as registrant for the <carrolwrightgifts.com> domain name.
The Panel finds that Complainant has rights to and legitimate interests in the mark contained in typosquatted form in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
The Respondent has no rights to or legitimate interests in the disputed domain name containing a typosquatted version of Complainant’s mark.
Respondent registered and used the disputed domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires Complainant to 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 to 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.
Given 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The Panel finds that Complainants established a sufficient nexus to permit the Panel to treat them as one entity in this proceeding and to proceed with a determination on the merits. Both entities will be referred to herein as “Complainant.”
Identical to or Confusingly Similar
Complainant alleges that, together with its subsidiary, it is a direct-mail catalog and online retailer specializing in the retail of a wide variety of health products aimed at seniors, along with clothing, collectibles, exercise equipment, home furnishings, housewares, and shoes. Complainant contends that it is the owner of the federal trademark registrations in the United States that consists of the words CAROL WRIGHT GIFTS. See Complainant’s Exhibit E United States Patent and Trademark Office (Reg. No. 2,290,178 registered November 2, 1999). Irrespective of the location of the parties, registration of a mark with a federal trademark authority is evidence of having rights in that mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant has rights in the CAROL WRIGHT GIFTS mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <carrolwrightgifts.com> domain name is confusingly similar to Complainant’s CAROL WRIGHT GIFTS mark. Complainant states that Respondent merely adds an additional letter “r” to Complainant’s registered mark. Additionally, Complainant states that Respondent removes the spaces in Complainant’s mark and adds the gTLD “.com.” Both Respondent’s addition of the letter “r,” and the gTLD, as well as the removal of spaces in the domain name, are irrelevant to a Policy 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights to or legitimate interests in the <carrolwrightgifts.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent has no trademark or intellectual property rights in the disputed domain name. Additionally, Complainant states that it has not licensed, authorized, or permitted Respondent to register the disputed domain name. The Panel notes that the WHOIS information lists “Acosta Jose Julian” as the registrant of record. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Therefore, the Panel finds here that Respondent is not commonly known by the <carrolwrightgifts.com> domain name.
Complainant next alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant explains that Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant states that Respondent presumably receives pay-per-click fees from the displayed links. See Exhibit H. The Panel notes that the website that resolves from the disputed domain name features links including, “Carol Wright Gifts,” “AmeriMark: Official Site,” “Overstock Clearance,” “Riviera Maya Resorts,” “Uline Shipping Supplies,” and “Fly Virgin America.” Id. Panels have found that using a confusingly similar domain name to display links in competition with the complainant’s services is not a use that falls within the protective realm of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Therefore, the Panel finds that Respondent’s use of the <carrolwrightgifts.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant further claims that Respondent’s disputed domain name is a typosquatted version of Complainant’s registered mark. The Panel notes that typosquatting is typically found to be present where a disputed domain name presents a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel therefore finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent registered and is using the <carrolwrightgifts.com> domain name in bad faith. Complainant claims that Respondent has listed the disputed domain name for sale. See Complainant’s Exhibits H–I. The Panel notes that Respondent’s resolving website states: “For Sale: Either Bid Online or Contact Sedo.” Id. Offering to sell a domain name that is confusingly similar to a complainant’s mark indicates bad faith use and registration. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel therefore finds that Respondent registered and is using the <carrolwrightgifts.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant next claims that Respondent is a serial cyber squatter as shown by the NAF and WIPO UDRP decision database. The Panel observes that Complainant’s Exhibit N includes previous decisions resulting in the transfer of Respondent’s domain name. See Balenciaga v. PrivacyProtect.org/n/a, Acosta Jose Julian/ Jeff Lander, D2009-1756 (WIPO April 21, 2010); see also The Coca-Cola Co. v. PrivacyProtect.org/ Acosta Jose Julian, WIPO Case No. D2010-0335 (April 26, 2010); see also Wells Fargo & Co. v. Acosta Jose Julian, FA 1413433 (Nat. Arb. Forum Dec. 1, 2011). Panels routinely find bad faith where a respondent was involved in prior UDRP proceedings resulting in the transfer of the disputed domain names. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s use of the disputed domain name competes with Complainant’s business because Respondent displays links for third parties that compete with Complainant and offer similar products. Complainant claims that Respondent’s use diverts Internet users away from Complainant and to third-party websites. The Panel notes that in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the Panel found bad faith registration and use pursuant to Policy 4(b)(iii) where a respondent used a confusingly similar domain names to resolve to websites that listed links to competitors of Complainant. Therefore, the Panel finds that Respondent’s registration and use of the <carrolwrightgifts.com> domain name is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Additionally, Complainant asserts that Respondent uses the disputed domain name to resolve to a “click through” website where it provides links to the services and products offered by Complainant in order to gain revenue. Complainant argues that Respondent displays content directly related to Complainant’s business, which Complainant contends removes any doubt as to whether or not the misspelling in the <carrolwrightgifts.com> domain name was intentionally designed to improperly capitalize on Complainant’s famous mark. See Complainant’s Exhibit H. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found 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. Similarly, the Panel here finds that the <carrolwrightgifts.com> domain name was registered with full knowledge of Complainant’s protected rights and constitutes bad faith under Policy ¶ 4(b)(iv).
As previously discussed, Complainant argues that Respondent is engaged in bad faith typosquatting behavior. Previously, panels have concluded that registering a domain name that takes advantage of the confusion caused by the similarity between respondent’s disputed domain name and complainant’s registered trademark indicates bad faith typosquatting behavior. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). The Panel finds that Respondent’s typosquatting behavior indicates bad faith use and registration under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <carrolwrightgifts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 3, 2014
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