Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. v. ICS INC. / ORM Ltd.
Claim Number: FA1404001555844
Complainant is Amerimark Direct, LLC and its subsidiary Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS INC. / ORM Ltd. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are: <aamerimark.com>, <aerimark.com>, <carolwrighygifts.com>, and <drleomards.com>, registered with TUCOWS, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 24, 2014; the National Arbitration Forum received payment on April 24, 2014.
On April 25, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <aamerimark.com>, <aerimark.com>, <carolwrighygifts.com>, and <drleomards.com> domain names are registered with TUCOWS, INC. and that Respondent is the current registrant of the names. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration 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 May 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2014 by which Respondent could file a Response to the Complaint, via e-mail message addres-sed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@aamerimark.com, post-master@aerimark.com, postmaster@carolwrighygifts.com, and postmaster@dr-leomards.com. Also on May 13, 2014, the Written Notice of the Complaint, not-ifying Respondent of the e-mail addresses served and the deadline for a Re-sponse, 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 June 5, 2014, 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 Electronic and Written Not-ices, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a direct-mail catalog and online retailer specializing in the mark-eting of a variety of health products aimed at seniors, along with clothing, col-lectibles, exercise equipment, home furnishings, housewares and shoes.
Complainant holds registrations, which are on file with the United States Patent and Trademark Office (“USPTO”) for the AMERIMARK service mark (Registry No. 2,648,156, registered November 12, 2002); the CAROL WRIGHT GIFTS service mark (Registry No. 2,290,178, registered November 2, 1999); and the DR. LEONARD’S trademark and service mark (Registry No. 1,818,850, regis-tered February 1, 1994).
Respondent registered the following domain names on the dates indicated:
i. <aamerimark.com> on April 22, 2012;
ii. <aerimark.com> on April 22, 2012;
iii. <carolwrighygifts.com> on June 4, 2008;
iv. <drleomards.com> on September 30, 2012.
The domain names are confusingly similar to Complainant’s AMERIMARK, CAROL WRIGHT GIFTS and DR. LEONARD’S marks.
Respondent has not been commonly known by any of the domain names.
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Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant's AMERIMARK, CAROL WRIGHT GIFTS or DR. LEONARD’S marks in any domain name. |
Respondent uses the domain names to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business.
Respondent seeks to profit by the receipt of pay-per-click revenues from the operation of the links featured on the website resolving from the domain names.
Respondent has no rights to or legitimate interests in respect of any of the domain names.
Respondent has listed the domain names for sale.
Respondent is a serial cyber-squatter.
Each of the domain names is an instance of typo-squatting.
The domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names have been registered and are being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal 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 reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the AMERIMARK, CAROL WRIGHT GIFTS and DR. LEONARD’S marks for purposes of Policy ¶ 4(a)(i) by reason of its registrations of those marks with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark [under Policy
¶ 4(a)(i)] through registration of the mark with the USPTO.
This is true without regard to whether Complainant’s rights in its marks arise from their registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here the Grand Cayman Islands). See, for example, Renaissance Hotel Hldgs, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP 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).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <aamerimark.com> and <aerimark.com> domain names are confusingly similar to Complainant’s AMERIMARK mark. The domain names differ from the mark by only a single character, in one case add-ing a letter “a” and in the other removing the letter “m” from the mark. In each domain name the generic Top Level Domain (“gTLD”) “.com” is also added to the mark. These alterations of the mark, made in creating the domain names, do not save them from the realm of confusing similarity under the standards of the Pol-icy. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name confusingly similar to a UDRP complainant’s VALPAK mark under Policy ¶ 4(a)(i)); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (finding the domain name <pfzer.com> confusingly similar to a UDRP complainant’s PFIZER mark, where a respondent merely omitted the letter “i” from that mark).
As to the effect on a Policy ¶ 4(a)(i) analysis of including a gTLD in a domain name, see Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (finding that attaching a gTLD to the mark of another in creating a domain name is “unable to create a distinction capable of overcoming a finding of con-fusing similarity”).
Likewise Respondent’s <carolwrighygifts.com> domain name is confusingly simi-lar to Complainant’s CAROL WRIGHT GIFTS mark. Again the domain name differs from Complainant’s mark by only a single character, substituting the letter “t” for the letter “y” and by the deletion of the spaces between the terms of the mark and adding a gTLD. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a UDRP complainant's BELKIN mark where the domain name merely replaced the letter “i” in the mark with the letter “e”).
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 the terms of the mark of another and the addition to it of a gTLD do not establish distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
Respondent’s <drleomards.com> domain name is for the same reasons con-fusingly similar to Complainant’s DR. LEONARD’S mark, with but one departure, that being the elimination of the apostrophe from the mark, which does not change the outcome. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the question of confusing similarity as between a domain name and the mark from which it was derived); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <aamerimark.com>, <aerimark.com>, <carolwrighygifts.com>, and <drleomards.com> domain names, that Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use any of Complainant’s marks in any way. Moreover, the WHOIS record for the domain names identifies the registrant of each of them only as “ICS INC. / ORM Ltd.,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the compass of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLD-TRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by the <cigaraficionada.com> do-main name, and so failed to establish that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain names <aamerimark.com>, <aerimark.com>, <carolwrighygifts.com>, and <drleomards.com> to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business, and that Respondent seeks to profit by the receipt of pay-per-click fees from the operation of the linked website(s). This employment of the domain names is neither a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel there finding that, because “[r]espondent’s disputed do-main names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” respondent is not using the disput-ed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Accordingly, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
It is undisputed on the record that Respondent has offered for sale each of the contested domain names. In the circumstances here presented, this is evidence under Policy ¶ 4(b)(i) of Respondent’s bad faith in registering each of them. 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).
It is also plain from the record that Respondent is a serial cyber-squatter, having been found in other UDRP proceedings to have registered and used in bad faith domain names which were confusingly similar to the marks of various complain-ants. See, for example, Nationstar Mortgage LLC v. ICS INC., FA 1450756 (Nat. Arb. Forum Aug. 15, 2012); and Baylor University v. ICS INC., FA 1458525 (Nat. Arb. Forum Oct. 2, 2012). This pattern of cyber-squatting is itself evidence of bad faith in the registration and use of the instant domain names. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), the panel there finding, under Policy ¶ 4(b)(ii), that a record of multiple prior UDRP pro-ceedings in which the same respondent had been found to have registered and used domain names derived from the marks of others were sufficient evidence of bad faith registration in the case there under consideration.
We are also persuaded by the evidence that Respondent’s employment of the several domain names here in issue, as alleged in the Complaint, disrupts Com-plainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of bad faith in the registration and use of each of the contested domain names. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
Respondent currently utilizes the disputed domain name,…, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
We are, as well, convinced by the evidence that Respondent uses the disputed domain names, which are confusingly similar to Complainant’s AMERIMARK, CAROL WRIGHT GIFTS and DR. LEONARD’S marks, to seek profit by mis-leading Internet users as to the possibility of Complainant’s affiliation with the domain names and their resolving website(s). This stands as proof of bad faith in the registration and use of the domain names under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of domain names under Policy ¶ 4(b)(iv) by using them to operate a search engine with links to websites offering the products of a UDRP complainant’s commercial competitors).
Finally under this head of the Policy, it is plain that each of the disputed domain names (<aamerimark.com>, <aerimark.com>, <carolwrighygifts.com>, and <drleomards.com>) is an instance of typo-squatting, i.e.: the formation of a domain name by taking advantage of common spelling mistakes made by Inter-net users in entering into a web browser the marks of enterprises with which they wish to do business. Typo-squatting is independent evidence of bad faith in the registration of a domain name. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Respondent’s registration and use of [the domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <aamerimark.com>, <aerimark.com>, <carolwrighygifts.com>, and <drleomards.com> domain names be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 9, 2014
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