DECISION

Redenvelope, Inc. v. Oui!

Claim Number:  FA0303000149186

PARTIES

Complainant is Redevelope, Inc., San Fracisco, CA, USA (“Complainant”) represented by John C. Baum of Townsend and Townsend and Crew LLP. Respondent is Jose Penha Oui!, Lisbon, PORTUGAL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <redemvelope.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 12, 2003; the Forum received a hard copy of the Complaint on March 13, 2003.

On March 12, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <redemvelope.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. verified that Respondent is bound by the Tucows, Inc. registration agreement and 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 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 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@redemvelope.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 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <redemvelope.com>, is confusingly similar to Complainant’s RED ENVELOPE mark.

2. Respondent has no rights to or legitimate interests in the <redemvelope.com> domain name.

3. Respondent registered and used the <redemvelope.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, one of the most successful online gift retailers in the world, uses its RED ENVELOPE mark to identify its online and mail order catalog retail business.  Complainant’s business is generated mainly from the Internet at <redenvelope.com>.  Complainant has done business from this website since 1999.  Complainant actively promotes its RED ENVELOPE mark in the United States and abroad. 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 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 <redemvelope.com> domain name on April 1, 2002.  Respondent is using the domain name to redirect Internet users to a series of advertisements for credit card services.  Internet users who reach the domain name and attempt to close out of the initial advertisement that pops up are inundated with numerous other pop-up advertisements.  This technique is called “mousetrapping,” and prevents unwary Internet consumers from escaping the series of advertisements.

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 established that it has rights in the RED ENVELOPE mark through registration with the U.S. Patent and Trademark Office and use in relation to its online gift retail business since 1999.

Respondent’s <redemvelop.com> domain name is confusingly similar to Complainant’s mark because it is merely a misspelling of RED ENVELOPE.  Respondent has only replaced the “n” in “envelope” with an “m.”  The misspelling of another’s mark within a domain name does not create any distinguishable characteristics capable of overcoming a claim of confusing similarity.  See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established that it has rights to and interests in the mark in issue. Respondent 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”).

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, Respondent failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is engaging in typosquatting, by taking advantage of a common typographical error to redirect Internet users to a website unrelated to Complainant’s mark.  In this case, Respondent is using the <redemvelope.com> domain name to redirect Internet users to a website that features a series of pop-up advertisements.  This type of behavior 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 FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site”).

Moreover, Respondent is not commonly known as RED ENVELOPE, RED EMVELOPE or <redemvelope.com>.  There is no evidence in record or in Respondent’s WHOIS information that could establish that Respondent is known by the disputed domain name.  Thus, the Panel finds that Respondent has no rights or legitimate interests in the <redemvelope.com> 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)(iii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleged that Respondent acted in bad faith in using a misspelling of Complainant’s well-known mark in registering and using the domain name in issue.  Based on this fact the Panel infers that Respondent had actual knowledge of Complainant’s rights in the RED ENVELOPE mark when it registered the <redemvelope.com> domain name.  Registration of an infringing domain name despite actual knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent is using a domain name confusingly similar to Complainant’s mark to redirect Internet traffic to an advertising website.  The use of a confusingly similar domain name to direct Internet users interested in Complainant to an unconnected advertising website is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is creating a likelihood of confusion for its own commercial gain.  See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>. Presumably, Respondent received a portion of the advertising revenue from the site by directing Internet traffic to the site, thus using a domain name to attract Internet users for commercial gain); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

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 <redemvelope.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 9, 2003.

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