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Generic Top Level Domain Name (gTLD) Decisions |
SmartBargains.com, L.P. v. Ling Shun
Shing
Claim
Number: FA0408000313588
Complainant is SmartBargains.com, L.P. (“Complainant”),
represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA
02176. Respondent is Ling Shun Shing (“Respondent”), 138 Yi
Xue Yuan Road, Shanghai 200032, P.R. China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <smartbargan.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 14, 2004; the
Forum received a hard copy of the
Complaint on August 16, 2004.
On
August 17, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <smartbargan.com> is registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the
current registrant of the name. Iholdings.com,
Inc. d/b/a Dotregistrar.com has
verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com
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 19, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
September 8, 2004 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@smartbargan.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
September 17, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
Tyrus R. Atkinson, Jr.,
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <smartbargan.com>
domain name is confusingly similar to Complainant’s SMARTBARGAINS mark.
2. Respondent does not have any rights or
legitimate interests in the <smartbargan.com> domain name.
3. Respondent registered and used the <smartbargan.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
SmartBargains.com, L.P., is a wholly owned subsidiary of SmartBargains, Inc.
Complainant uses the SMARTBARGAINS mark
in connection with a wide range of
products, from apparel and accessories to fine jewelry, electronics and home
furnishings. Complainant is the owner
of the SMARTBARGAINS mark by and through assignment from its predecessor in
interest, SmartBargains, Inc.
(Reg. No. 2,606,658, issued August 13,
2002). Complainant also owns a
trademark registration for its SMARTBARGAINS mark in the European Union (Reg.
No. 1,960,558, issued May 6,
2002).
Respondent
registered the <smartbargan.com> domain name on October 4, 2002
and is using it to redirect Internet users to the pay-per-click search engine,
<domainsponsor.com>,
featuring links and pop-up advertisements for
websites offering products similar to those offered by Complainant.
Respondent has
also registered and is using various domain names that incorporate the
trademarks of others, including TRANSUNION,
BED BATH AND BEYOND, BANANA
REPUBLIC and WEBMD.
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.
Complainant’s
registration of the SMARTBARGAINS mark with the USPTO and the European Union
demonstrates Complainant’s rights in the
mark under Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently
distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that 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. Respondent has the burden of refuting this
assumption).
The <smartbargan.com>
domain name is confusingly similar to Complainant’s SMARTBARGAINS mark because
the domain name simply omits the second letter “s”
from SMARTBARGAINS and
misspells the word “bargain” with the omission of the letter “i.” These typographical errors do not
sufficiently differentiate the domain name from the mark pursuant to Policy ¶
(4)(a)(i). See Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change
the
overall impression of the mark and thus made the disputed domain name confusingly
similar to it); 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 Complainant’s
STATE FARM mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (finding that the domain names,
<davemathewsband.com> and <davemattewsband.com>,
are common
misspellings and therefore confusingly similar); see also Am.
Airlines, Inc. v. Data Art Corp.,
FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com>
"effectively identical and certainly confusingly
similar" to
Complainant's AMERICAN AIRLINES registered marks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Furthermore,
Respondent’s <smartbargan.com> resolves to a search engine
containing advertising for a variety of goods and links to connect users to
websites that offer the same
type of goods that Complainant offers. Respondent’s use of a domain name that is
confusingly similar to Complainant’s SMARTBARGAINS mark to divert Internet
users to a commercial
website that offers a search engine and products similar
to those offered by Complainant is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶
4(c)(iii). See Bank of America Corp. v. Out Island Props., Inc.,
FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of
infringing domain names to direct Internet traffic to
a search engine website
that hosted pop-up advertisements was evidence that it lacked rights or
legitimate interests in the domain
name); see also Geoffrey, Inc. v.
Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s
mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide
offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name).
Additionally,
the record is absent of any proof that Respondent is commonly known by the <smartbargan.com>
domain name. Respondent has failed
to established rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark
and never applied for a license or permission from
Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is 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.
Respondent’s <smartbargan.com>
domain name resolves to a search engine and provides links to other
entities, which offer similar products as Complainant. Respondent’s practice of diversion,
demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a
bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Additionally, Respondent
has registered and is using various domain names incorporating misspellings of
trademarks belonging to third parties such
as TRANSUNION, BED BATH AND BEYOND,
BANANA REPUBLIC and WEBMD. The Panel finds Respondent’s history of
typosquatting evidences bad faith registration and use under Policy ¶
4(a)(iii). See L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum
Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a
pattern of registering misspellings
of famous trademarks and names); see
also 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.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <smartbargan.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
October 1, 2004
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