DECISION

Powell's Books, Inc. v. Dotsan

Claim Number: FA0202000104943

PARTIES

Complainant is Powell's Books, Inc., Portland, OR (“Complainant”) represented by Devon J. Zastrow, of Klarquist Sparkman, LLP.  Respondent is Dotsan, Mumbai, INDIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <powels.com>, registered with BulkRegister.com, Inc.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 19, 2002; the Forum received a hard copy of the Complaint on February 20, 2002.

On February 20, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <powels.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, 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 February 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2002 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@powels.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.”  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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <powels.com> domain name is confusingly similar to Complainant’s POWELL’S mark.

Respondent does not have any rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant operates a nationally known bookstore business based in Portland, Oregon.  Complainant has used the POWELL’S name since at least 1971 and owns a service mark registration for POWELL’S registered on the Principal Register of the United States Patent and trademark Office on June 6, 2000, Reg. No. 2,355,077.  Complainant registered the POWELL’S mark in connection with retail and online retail store services featuring new and used books, books on recorded media, maps, calendars, and magazines.

Respondent registered the disputed domain name on July 28, 2001.  Respondent has linked the disputed domain name to online casino advertisements and an advertisement for an online business unrelated to Complainant or Respondent.  Respondent has a history of registering infringing domain names in which it linked them to online casino websites.  See Tony Orlando v. Dotsan, FA 100246 (Nat. Arb. Forum Nov. 16, 2001) (transferring <tonyorlando.com> to Complainant and finding Respondent’s use of Complaiannt’s name to link to a gambling website to be in bad faith); see also Orbitz, LLC v. Dotsan and Iskra Serv., D2001-1359 (WIPO Jan. 20, 2002) ( finding bad faith due to Respondent’s use of Complainant’s name to link to a gambling website).

  

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 the 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.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

Identical and/or Confusingly Similar

Complainant has established legal rights in its POWELL’S mark due to its federal registration of the mark.

Respondent’s <powels.com> domain name is confusingly similar to Complainant’s POWELL’S mark because it merely ommits the “l” and apostrophe from Complainant’s mark and adds “.com.”  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters to words does not create a distinct mark but nevertheless renders it confusingly similar with Complainant’s mark); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

 

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

            Rights or Legitimate Interests

Respondent’s use of the confusingly similar domain name to divert Internet users to unconnected businesses indicates that it does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Respondent, known as Dotsan, does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) because it is not commonly known by the disputed domain name.  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent was not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use)

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

Registration and Use in Bad Faith

Respondent’s <powels.com> domain name has created a likelihood of confusion as to the source, sponsorship, and affiliation of its website.  This is evidence of bad faith.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Respondent’s deliberate misspelling of Complainant’s trade name, otherwise known as “typosquatting,” is considered bad faith use under Policy ¶ 4(b)(iv).  See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

Respondent’s pattern of registering infringing domain names is evidence that it registered and used the confusingly similar domain name now at issue in bad faith pursuant to Policy ¶ 4(b)(ii).    See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks)

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

DECISION

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <powels.com> be transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: March 26, 2002

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