The Orvis Company Inc. v. Forum LLC
Claim Number: FA0607000751222
Complainant is The Orvis Company Inc. (“Complainant”), represented by Sandra M. Koenig, of Fay, Sharpe, Fagan, Minnich & McKee, LLP, 1100 Superior Avenue, Seventh Floor, Cleveland, OH 44114-2579. Respondent is Forum LLC (“Respondent”), P.O. Box 2331, Roseau, Roseau 00152, DM.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <orivs.com>, registered with Moniker Online Services, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2006.
On July 26, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <orivs.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 24, 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@orivs.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <orivs.com> domain name is confusingly similar to Complainant’s ORVIS mark.
2. Respondent does not have any rights or legitimate interests in the <orivs.com> domain name.
3. Respondent registered and used the <orivs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Orvis Company Inc., offers a variety of goods and services including clothing, fishing equipment, mail order and online retail services, travel guide services and gunsmithing. Complainant holds registrations with the United States Patent and Trademark Office for the ORVIS mark (eg. Reg. No. 1,023,535 issued October 28, 1975). Complainant utilizes the ORVIS mark in connection with all of its goods and services. Complainant has registered the <orvis.com> domain name for use in connection with offering its goods and services to online consumers.
Respondent registered the <orivs.com> domain name on February 28, 2002. Respondent is using the disputed domain name to redirect Internet users to respondent’s website, populated with links to third-party websites, many of which offer goods and services in direct competition with Complainant, such as “Fly Fishing Equipment,” “Outdoor Clothing” and “Flyfishing gear.”
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 1975 registration of the ORVIS mark with the
USPTO established Complainant’s rights in the ORVIS mark and predated Respondent’s
registration of the <orivs.com> domain name by many years. The Panel finds that Complainant has
established rights in the ORVIS mark sufficient to meet the requirements of
Policy ¶ 4(a)(i). See 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 Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Respondent’s <orivs.com> domain
name is confusingly similar to Complainant’s ORVIS mark. The disputed domain name transposes the
letters “i” and “v” from Complainant’s mark, creating a common typing error or
misspelling of Complainant’s mark. In Google Inc. v. Jon G., FA
106084 (Nat. Arb. Forum Apr. 26, 2002), the panel found that the
<googel.com> domain name was confusingly similar to the complainant’s
GOOGLE mark, saying that, “[t]he transposition of two letters does not create a
distinct mark capable of overcoming a claim of confusing similarity, as the
result reflects a very probable typographical error.” The panel in Pier 1 Imps.,
Inc. v. Success Work, D2001-0419
(WIPO May 16, 2001), came to a similar conclusion, holding that the
<peir1.com> domain name was confusingly similar to the complainant’s PIER
1 mark. Further, the panel in Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002), found that
the common misspelling used to create the respondent’s <neimanmacus.com>
domain name was a classic example of typosquatting,
and was evidence of confusing similarity.
Thus, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights or legitimate interests in the <orivs.com> domain name. According to the panels in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), and G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), the complainant’s assertion that the respondent lacks rights or legitimate interests constitutes a prima facie case for purposes of the Policy, and shifts the burden to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent has the opportunity to submit a Response in order to demonstrate that it does have rights or legitimate interests, and the failure to do so leads the Panel to certain adverse conclusions. For example, the panel in, Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), stated that, “based on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” Similarly, in Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003), the panel found that “a respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.” Thus, the Panel will examine the available evidence, keeping in mind Respondent’s failure to submit a Response, to determine whether or not Respondent has rights or legitimate interests in the disputed domain name as outlined in Policy ¶ 4(c).
Respondent’s <orivs.com> domain name resolves to Respondent’s website, which is composed entirely of links to third-party websites. Many of the links appear to lead to commercial third-party websites offering goods and services in direct competition with Complainant. Presumably, Respondent receives pay-per-click referral fees from these links. In Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000), the panel found no legitimate rights or interests where the disputed domain name resolved to a website composed entirely of links. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found that links to the complainant’s competitors could not be considered a bona fide offering of goods or services. Similarly, in Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003), the panel said that the disputed domain name was not being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use where the respondent’s website featured links to third-party websites, from which the respondent presumably received compensation. Thus, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is not using the domain name in connection with a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).
Further, Respondent’s domain name is composed of a misspelling of Complainant’s mark, which is evidence of typosquatting. In Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003), the panel found that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain. Similarly, in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), the panel held that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’.” Thus, the Panel finds that Respondent’s typosquatting is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Finally, there is no available evidence that Respondent is commonly known by the <orivs.com> domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel used the respondent’s WHOIS information as evidence that the respondent was not commonly known by the disputed domain name. In the case at hand, Respondent’s WHOIS information identifies Respondent as “Forum LLC,” which has no obvious relationship to the disputed domain name. Additionally, in Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003), the panel found that the < wwwmedline.com> domain name, which suggested typosquatting, was a nonsensical phrase, and thus, the respondent could not be known by the disputed domain name. The situation is similar in this case, where the <orivs.com> domain name does not spell an actual word, and suggests that Respondent could not be commonly known by the disputed domain name. Furthermore, Complainant asserts that Respondent is not affiliated with Complainant and does not have permission from Complainant to reflect Complainant’s mark in a domain name. The panel in Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), found that the respondent was not commonly known by the disputed domain name where there was no pre-existing relationship between the respondent and the complainant and the respondent did not have the complainant’s permission to use the complainant’s mark in a domain name. Thus, the Panel finds that Respondent is not commonly known by the <orivs.com> domain name and lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <orivs.com> domain name is confusingly similar to Complainant’s ORVIS mark. Because the disputed domain name is a common misspelling of Complainant’s mark, Internet users seeking Complainant’s genuine website at <orvis.com> may easily be redirected to Respondent’s website by accidentally mistyping Complainant’s mark into a web browser or Internet search engine. Because of the confusing similarity between the disputed domain name and Complainant’s mark, and because Respondent’s website features links to third-party websites offering the types of goods and services Internet users may expect to find at Complainant’s genuine website, Internet users may mistakenly believe that Respondent’s website is sponsored by Complainant. Respondent is profiting from Internet users’confusion, presumably collecting pay-per-click referral fees from the links. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel stated that “respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” Similarly, in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith registration and use pursuant to 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. Thus, the Panel finds that Respondent's use of the disputed domain name to attract Internet users to Respondent's website in order to generate fees from links is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Not only does the Respondent benefit from the use of the <orivs.com> domain name by collecting pay-per-click referral fees, Respondent’s use also harms Complainant’s business. When Internet users are redirected to Respondent’s website and confronted with links to the commercial websites of Complainant’s competitors, those Internet users may do business with Complainant’s competitors instead of with Complainant. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel found evidence of bad faith pursuant to Policy ¶ 4(b)(iii) based on the respondent’s use of a confusingly similar domain name to divert business away from the complainant. Similarly, in Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), the panel found bad faith based on the respondent’s diversionary use of the disputed domain name. Thus, the Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to links to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel is not limited to the circumstances outlined in Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and use. As the panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), stated, “the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” The panel in CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000), echoed that sentiment, stating that “the Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” One circumstance that the Panel may interpret as evidence of bad faith registration and use is typosquatting. The panel in Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003), found that “in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing [<wwwmedline.com>] domain name.” Similarly, in Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), the panel held that “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.” Thus, the Panel finds that Respondent’s <orivs.com> domain name is an intentional misspelling of Complainant’s mark and thus, constitutes typosquatting, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <orivs.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 13, 2006
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