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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Redenvelope, Inc. v. Peter Carrington
a/k/a Party Night, Inc.
Claim Number: FA0303000150486
PARTIES
Complainant is Redenvelope, Inc., San
Francisco, CA, USA (“Complainant”) represented
by John C. Baum, of Townsend and Townsend and Crew LLP.
Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam,
NETHERLANDS (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <redenvlope.com>, registered with
Key-Systems Gmbh.
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.
Honorable Paul A. Dorf (Ret.) as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the "Forum") electronically on March 18,
2003; the
Forum received a hard copy of the Complaint on March 20, 2003.
On March 22, 2003, Key-Systems Gmbh
confirmed by e-mail to the Forum that the domain name <redenvlope.com> is registered with Key-Systems Gmbh and that
Respondent is the current registrant of the name. Key-Systems Gmbh has verified
that
Respondent is bound by the Key-Systems Gmbh 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 March 25, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"),
setting a deadline of April 14, 2003 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@redenvlope.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 April 21, 2003, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
Forum appointed Honorable
Paul A. Dorf (Ret.) 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 makes the following assertions:
1. Respondent’s
<redenvlope.com> domain name
is confusingly similar to Complainant’s RED ENVELOPE mark.
2. Respondent
does not have any rights or legitimate interests in the <redenvlope.com> domain name.
3. Respondent
registered and used the <redenvlope.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant uses its RED ENVELOPE mark to
identify its online and mail-order catalog retail business. Complainant’s business is generated mostly
from the Internet at <redenvelope.com>.
Complainant has done business from this website since 1999. Complainant holds numerous trademark
registrations for its RED ENVELOPE mark in the United States and throughout the
world, including
Registration Numbers 2,461,506 and 2,474,275 with the U.S.
Patent and Trademark Office.
Complainant has also registered its RED ENVELOPE mark in Australia (Reg.
No. 832,179), Canada (Reg. No. 555,832), China (Reg. No.
1,699,726), Japan (Reg.
No. 4,551,718), and the European Community (Reg. No. 1,601,327).
Respondent registered the <redenvlope.com> domain name on March
21, 2002. Respondent, Peter Carrington
a/k/a Party Night Inc., is a notorious cybersquatter that has registered
numerous misspellings of famous
marks as domain names. Respondent is using <redenvlope.com> to divert Internet users to
<hanky-panky-college.com>, an adult content 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 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 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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the RED ENVELOPE mark through registration in the United States and
throughout the
world.
Respondent’s <redenvlope.com> domain name is confusingly similar to
Complainant’s mark because it merely omits the “e” in “envelope.” The omission of one letter from a famous
mark does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i)
analysis. 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 State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to the Complainant’s
STATE FARM mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to
submit a Response in this proceeding.
Thus, the Panel is permitted to accept all reasonable allegations and
inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant
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”).
Moreover, Respondent has failed
to invoke any circumstances that could demonstrate rights and legitimate
interests in the domain name. When
Complainant asserts a prima facie
case against Respondent, the burden of proof shifts to Respondent to show that
it has rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with
respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance
that could demonstrate any
rights or legitimate interests in the domain name).
Respondent is using the <redenvlope.com> domain name, a
misspelling of Complainant’s well-known mark and domain name, to divert
Internet users to a pornographic website.
This type of use is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor is it a legitimate, noncommercial
or fair use
pursuant to Policy ¶ 4(c)(iii). See MatchNet plc v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial
gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material, where such use is calculated
to mislead consumers and tarnish the
Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic
site is not a legitimate or
fair use).
Respondent is known to this
Panel as Party Night Inc. and John Carrington.
There is no evidence on record that Respondent is commonly known as RED
EVNLOPE or <redenvlope.com>. Thus, the Panel finds that Respondent does
not have rights or legitimate interests in the disputed domain name pursuant to
Policy
¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly
known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail").
Accordingly, the Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad
Faith
Respondent is making a profit
from each Internet user it diverts to <hanky-panky-college.com>. Thus, Respondent is using a domain name
confusingly similar to Complainant’s RED ENVELOPE mark for Respondent’s own
commercial gain. This behavior
evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site
to its own website for commercial gain); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract
users to a website sponsored by Respondent).
Respondent is engaging in
typosquatting, the misspelling of well-known marks in domain names to take
advantage of common spelling
errors by Internet users and to divert Internet
traffic for profit. Typosquatting gives
rise to a presumption of bad faith registration and use. See
Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with 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”); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8,
2000) (finding that the Respondent’s registration of names of famous people,
with slight typographical
errors, was evidence of bad faith).
Thus, the Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three
elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered
that the <redenvlope.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: April 28, 2003
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