DECISION

Pacific Sunwear of California, LLC v. JEAN LUCAS / DOMCHARME GROUP

Claim Number: FA1704001728631

PARTIES

Complainant is Pacific Sunwear of California, LLC (“Complainant”), represented byCitizenHawk, Inc., California, USA. Respondent is JEAN LUCAS / DOMCHARME GROUP (“Respondent”), Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <paacsun.com>, <pacaun.com>, <pacsunn.com>, and<pacsuun.com> (‘the Domain Names’) registered with eNom, LLC.

PANEL

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.

Dawn Osborne of Palmer Biggs Legal as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 24, 2017; the Forum received payment on April 24, 2017.

On April 25, 2017, eNom, LLC confirmed by e-mail to the Forum that the<paacsun.com>, <pacaun.com>, <pacsunn.com>, and <pacsuun.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, LLCregistration agreement and has 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 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2017 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@paacsun.com, postmaster@pacaun.com, postmaster@pacsunn.com, and postmaster@pacsuun.com. Also on April 26, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.

On May 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 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

Complainant’s contentions can be summarized as follows:

Complainant owns the registered trade mark PAC SUN for clothing registered in the US with first use in commerce recorded as 1987. It is a leading retailer offering a cross section of brands. It sells its merchandise online at pacsun.com.

The Domain Names are confusingly similar to Complainant’s PACSUN mark, the relevant comparison to be made being between only the second level portion of the Domain Name and Complainant’s PACSUN mark. The Domain Names differ by only a single character, consisting of either an addition, a subtraction or one incorrect letter. These are classic examples of typosquatting, confusingly similar by design.

Respondent has not been commonly known by the Domain Names and has no intellectual property rights in the Domain Names. It is not legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s mark in a domain name.

Respondent did not reply to a cease and desist letter.

The Domain Names, the earliest of which was registered in 2003, have been used to redirect Internet links to commercial links to third party businesses, some of which directly compete with Complainant’s business. This is not bona fide offering of goods or services or a legitimate non commercial or fair use. Respondent redirects Internet users to Complainant’s own web site in violation of Complainant’s affiliate program, a violation of the affiliate agreement between Complainant and Respondent.

Respondent has no rights or legitimate interests in the Domain Names.

The Domain Names have been registered and used in bad faith.

Respondent has offered the Domain Names for sale.

Using the Domain Names for commercial links is obvious bad faith and disruptive to Complainant’s business. Some of the links display content and/or keywords directly related to Complainant’s business showing that the misspelling of the Domain Names was intentionally designed to improperly capitalize on Complainant’s famous marks.

Typosquatting, is, in itself, obvious bad faith.

As a member of Complainant’s affiliate program acting in breach of the affiliate agreement, Respondent was aware of Complainant’s rights and had actual notice of them when registering the Domain Names. In registering similar domain names to Complainant’s trade marks while a member of the affiliate program, Respondent has attempted to opportunistically benefit from registration and use of the Domain Names at Complainant’s expense.

Respondent is a serial typosquatter, including registrations of names similar to Capital One, Molson, and Days Inn.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The Domain Names registered in 2003 have been offered for sale and used in relation to competing third party commercial links.

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."

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.

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(f), 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 (Forum July 31, 2000) (holding that 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.”).

Identical and/or Confusingly Similar

The Domain Names consist of signs highly similar to Complainant's mark PAC SUN (with one character difference in each case) and the gTLD .com. Accordingly the Domain Names appear to be typosquatted versions of Complainant’s registered mark PAC SUN.

Panels have commonly held that the changing of one letter in a mark to result in a misspelled domain name is not a change sufficient to remove a domain name from confusing similarity (See Omaha Steaks International Inc. v DN Manager/ Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015)(finding that alterations of the mark by one letter do not save the domain name from confusing similarity).

The gTLD .com does not serve to distinguish the Domain Names from the PAC SUN mark, which is confusingly similar to the Domain Names. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

Rights or Legitimate Interests

Complainant has not given Respondent permission to use the Domain Names. The Panel notes there is no actual evidence that Respondent and Complainant entered into the standard affiliate agreement provided as evidence, but even if it was entered into between the parties it prohibits infringing use of intellectual property. Respondent does not appear to be commonly known by the Domain Names, is not using them to offer bona fide goods and services since they point to competing commercial links or Complainant’s site itself which is misleading and is not making a legitimate non commercial or fair use of the Domain Names. The sites attached to the Domain Names appear to be set up for commercial benefit to compete with Complainant using the latter's intellectual property rights by pointing to third party links competing with Complainant's goods or to connect to Complainant’s site for Respondent’s commercial benefit. See ALPITOUR SpA v Albloushi FA 888651 (Forum Feb 26, 2007) (rejecting Respondent's contentions of rights and legitimate interests because Respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy). See also Sports Auth. Mich. Inc v Domhold Co, FA 135011 (Forum Jan 9, 2003)(using a domain name different by one letter from Complainant’s domain name for its web site and redirecting Internet users to Complainant’s site is not a bona fide offering of goods or services or a legitimate non commercial or fair use).

Additionally the Domain Names appear to be a typosquatted version of Complainant's domain name chosen in the hope that a customer might mistakenly reach Respondent's web site by mistakenly typing one incorrect character when intending to access Complainant’s site. See Amazon.com, Inc v JJ Domains, FA 514939 (Forum Sept 2, 2005)(respondent lacks rights and legitimate interests in the www-amazon.com domain name because it is typosquatting)

As such the Panellists find that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

Complainant has provided evidence that Respondent has attempted to disrupt Complainant’s business by its use of the Domain Names providing links that resolve to third party commercial sites that compete directly with Complainant which is bad faith under s4 (b)(iii) of the Policy. See Univ. of Texas SYs. v Smith (finding that using the resolving web site to divert Internet users to Complainant's competitors constitutes bad faith registration and use under the Policy).

Complainant also alleges that Respondent's use of the site is commercial and he is using it to make a profit from linking to third party web sites that compete with Complainant in a confusing manner. The use is confusing in that visitors to the site might reasonably believe it is connected to or approved by Complainant offering clothing under Domain Names which are a typosquatted version of Complainant’s Domain Name. The use of several typosquatted versions of Complainant’s PAC SUN mark used to link to competing clothing sites shows Respondent is aware of Complainant and its goods and business even if there is no evidence that Respondent entered into an affiliate agreement with Complainant as Complainant contends. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites pursuant to para 4 (b)(iv) of the Policy. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that Respondent's use of the disputed domain name to advertise car dealerships that competed with Complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).

Finally, typosquatting itself is evidence of relevant bad faith registration and use. See Vanguard Group Inc. v IQ Mgmt. Corp FA 328127 (Forum Oct 28, 2004)(By engaging in typosquatting respondent has registered and used the vangard.com domain name in bad faith pursuant to Policy 4(a) (iii)).

Finally, the Panel notes that the Domain Names have been generally offered for sale on their Who Is records and on Sedo.com which indicates bad faith under Policy 4 (a)(i). See CBS Broad Inc. v Worldwide Webs Inc, D2000-0834 (WIPO Sept 4, 2000).

In view of the circumstances of registration and use of these Domain Names constituting bad faith registration and use as set out above, it is unnecessary to consider Complainant’s allegations about further typosquatting in relation to other brands by Respondent.

As such, the Panel holds that Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <paacsun.com>, <pacaun.com>, <pacsunn.com>,and <pacsuun.com>

domain names be TRANSFERRED from Respondent to Complainant.

Dawn Osborne, Panelist

Dated: June 1, 2017