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Ross-Simons, Inc. v. Domain Administration [2004] GENDND 427 (26 April 2004)

1. The Parties

The Complainant is Ross-Simons, Inc., Cranston, Rhode Island, United States of America, represented by Hinckley, Allen & Snyder, LLP, Boston, MA, 02109, United States of America.

The Respondent is Domain Administration, North Carolina, United States of America.

2. The Domain Names and Registrar

The disputed domain names are <ros-simons.com> and <ross-simonss.com> (the "Domain Names."). They are registered with ENOM, Inc. of Bellevue, Washington.

3. Procedural History

The Complaint was electronically filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2003, identifying Unified Names, Inc. (Registerfly.com) as the registrar of the Domain Names. However, the Center on its own obtained information that the registrar of the Domain Names is Enom, Inc. ("eNom"). In accordance with Center procedures, on December 9, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. The Center confirmed that the Respondent is listed as the registrant and the contact details for the administrative, billing, and technical contact. On December 18, 2003, the Center notified Complainant that the registrar identified in the Complaint was incorrect and requested that Complainant file a short amendment correcting the registrar and making any necessary amendments to the Complaint related thereto. In response, the Complainant electronically filed an amendment to the Complaint on December 23, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 23, 2003. Respondent was obligated to respond to the Complaint by January 12, 2004. Pursuant to requests from Complainant to suspend the proceedings to "complete the transfer [of, sic] the disputed domain name from Respondent to Complainant," and to extend the suspension, the Center granted both. Consequently, Respondent's deadline for filing a response was changed to March 27, 2004, however Respondent failed to submit a response. Thus, the Center notified the Respondent's default on March 30, 2004.

The Center appointed Harrie R. Samaras as the Sole Panelist in this matter on April 15, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

For over fifty years Complainant, Ross-Simons, Inc. ("Ross-Simons") has sold fine jewelry, tableware, gifts, collectables, home decor and related items. Ross-Simons sells those items through its well-known retail and outlet stores ROSS-SIMONS and its mail order and on-line catalogs of the same name. Today, Ross-Simons mails more than 60 million ROSS-SIMONS catalogs to consumers each year. In addition, Complainant's ROSS-SIMONS on-line catalog, which is located at "www.ross-simons.com" operates 24 hours a day and reaches millions of consumers. Since 1952, Complainant has substantially, continuously and exclusively used the mark ROSS-SIMONS in connection with its business.

Complainant owns U. S. Registration Number 1,317,429 for the mark ROSS-SIMONS (the "Registered Mark") as used on "retail store and mail order services specializing in jewelry, china, silver and gift items." As a result of its continuous and exclusive use of the Registered Mark since at least as early as 1954, and by spending considerable sums of money on advertising and promotional activities, Ross-Simons has built up substantial value and goodwill in the Registered Mark. Also, Complainant has established a strong customer base and is known throughout its trading area as a provider of quality products and services.

Complainant registered its <ross-simons.com> domain name on May 16, 1996, and has operated a website and on-line catalog at this Internet address since at least December 1996. The Registered Mark is prominently featured on its website and has been featured there since it went live in December 1996. Complainant uses its website to advertise, promote and sell its products. The website operates 24 hours a day and permits consumers to browse and order merchandise from the ROSS-SIMONS on-line catalog, purchase gift certificates and track orders. In addition, Complainant's website communicates special events and promotions to its customers and provides customer service information. Ross-Simons' customers can also create and edit wedding and other special occasion registries and search for the registries of others on the ROSS-SIMONS website.

To increase its presence on the Internet and its on-line sales, Ross-Simons has established and implemented an affiliate program. In general terms, the program is an agreement between two e-commerce websites whereby the owner of one site (the "Affiliate") advertises and provides a link to another site. The Affiliate is paid a commission for every sale that is made by someone the Affiliate refers to the other e-commerce website. Ross-Simons' affiliate program permits owners of e-commerce websites to provide a link to ROSS-SIMONS on-line catalog in the form of a banner ad or text link. If a customer of the e-commerce site clicks on the link to Complainant's website and then purchases a product from ROSS-SIMONS on-line catalog, the Affiliate can earn up to 7% of the merchandise value of the sale.

On or about February 18, 2003, and May 25, 2003, long after Complainant's first use and registration of its Registered Mark and domain name, establishment of its ROSS-SIMONS on-line catalog at that domain, and without the consent of Complainant, Respondent registered the Domain Names. Sometime thereafter, Respondent became an Affiliate of Ross-Simons and began using the Domain Names fraudulently to obtain commissions from Complainant's affiliate program. Respondent accomplished this by instantaneously redirecting consumers who mis-spell or mis-type Complainant's domain name through a series of websites, to the ROSS-SIMONS on-line catalog. To consumers, it appears that they typed in the correct domain name to immediately reach the ROSS-SIMONS website. To the manager of the ROSS-SIMONS affiliate program however, it appears that the consumer was referred to the ROSS-SIMONS website by Respondent from links on Respondent's e-commerce website.

5. Parties' Contentions

A. Complainant

Complainant contends that the Domain Names are confusingly similar to the Registered Mark because they are merely common mis-spellings of Complainant's Registered Marks and domain name. Furthermore, Complainant contends Respondent has no rights or legitimate interest with respect to the Registered Mark or its domain name. Lastly, Complainant asserts that Respondent has registered and is using the Domain Names in bad faith primarily for the purpose of intentionally attracting for commercial gain Internet users to Respondent's website by creating a likelihood of confusion with the Registered Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of a product or service on the Respondent's website.

B. Respondent

Respondent did not file a response to Complainant's contentions. It is noted that Richard Seale who is listed as the contact for Respondent sent an e-mail to the Center attaching e-mail correspondence between him and counsel for Complainant relating to the transfer of the Domain Names. As the Center correctly informed Mr. Seale, such correspondence does not constitute the required response.

6. Discussion and Findings

Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, 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:

(i) 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

(ii) the 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.

A. Identical or Confusingly Similar

It is undisputed that Complainant has established rights in its ROSS-SIMONS mark and <ross-simons.com> domain name.

Respondent's <ross-simonss.com> and <ros-simons.com> domain names are merely common mis-spellings of Respondent's registered ROSS-SIMONS mark and <ross-simons.com> domain name. The only difference between the Domain Names and Complainant's Registered Mark and domain name is the insertion or deletion of the letter "s." Numerous Panels have characterized as "typo-squatting," situations where the domain name at issue is one letter or character less than or different from the Complainant's mark and have found such domain names to be confusingly similar to the Complainant's trademark. See, e.g., Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035 (October 24, 2001) (finding <redbul.com> confusingly similar to RED BULL); Playboy Enterprises Int'l, Inc. v. SAND Web Names For Sale, WIPO Case No. D2001-0094 (April 3, 2001) (finding <plaboy.com> confusingly similar to PLAYBOY). That is the case here.

Furthermore, the addition of a generic top-level domain to the end of the Domain Name does not prevent a finding of confusingly similarity to Complainant's mark. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (June 25, 2000).

For the foregoing reasons, the Panel finds that Policy 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the Domain Names by stating that the Respondent has never been known by Ross-Simons or the Domain Names, and is not making legitimate non-commercial or fair use of the Domain Names. Respondent has not submitted a response to the Complaint. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. See America Online, Inc. and AOL International, WIPO Case No. D2000-0654 (August 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond and the Complainant had made out a prima facie case).

Moreover, Respondent has been using the Domain Names to divert Internet traffic to its website that instantaneously re-directs unknowing and unsuspecting consumers to Complainant's website. As an Affiliate of Complainant, Respondent does not maintain a website that contains a link to or advertisement for Complainant's ROSS-SIMONS on-line catalog. Notwithstanding that, Respondent collects commissions each time a consumer mis-spells or mistypes the Complainant's domain name. Use of a confusingly similar domain name to redirect Internet traffic to Complainant's website to receive a commission as part of Complainant's affiliate program is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

In a similar case holding that the Respondent did not have any rights or legitimate interests in the Domain Name at issue, the panel in The Paragon Gifts, Inc. v. Govs, WIPO Case No. D2003-0892 (December 27, 2003) found: "As shown by the Complainant, the use of the Domain Name in Dispute by the Respondent is to act as an unsolicited affiliant [sic] of Complainant to divert internet users who have made a mistake in attempting to reach the Complainant at its own website, do reach Respondent through the Domain Name in Dispute and thereafter said internet users are diverted back to Complainant whereby the Respondent is being paid in a commission for such unsolicited services. In so doing the Respondent uses in the Domain Name in Dispute the Trademarks of Complainant and such use is made without the authorization or license of the Complainant. This is a classic trademark infringement." See also, The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Claim No. 124516 (November 4, 2002) (Affiliate's use of <wwwsportsauthority.com> and <wwwthesportsauhtorty.com> domain names to re-direct internet users to complainant's website to receive commissions was not a bona fide offering of goods or services or a legitimate non-commercial or fair use.); Deluxe Corp. v. Dallas Internet, NAF Claim No. 105216 (April 10, 2002) (finding Respondent has no rights or legitimate interests pursuant to <deluxforms.com> domain name and to receive a commission from Complainant through its affiliate program).

In addition, it would be extremely difficult for Respondent to show that it has rights or legitimate interests in the Domain Names because they are confusingly similar to Complainant's well-known mark. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria's Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum February 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant's VICTORIA'S SECRET mark because of Complainant's well-established use of the mark).

For the foregoing reasons, the Panel finds that Policy 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood or confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Domain Names contain common mis-spellings of Complainant's Registered Mark and domain name (the home of ROSS-SIMONS on-line catalog). As discussed above, Respondent is using its confusingly similar domain names to re-direct unsuspecting Internet users, who inadvertently mis-spell or mis-type Complainant's name, to Respondent's website then immediately to Complainant's website. Under Complainant's affiliate program Respondent has been profiting from every Internet user it re-directs that purchases a product from Complainant. Thus, pursuant to 4(b)(iv) of the Policy, Respondent has clearly registered and is using the Domain Names in bad faith primarily for the purpose of intentionally attracting for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's Registered mark and domain name. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. Staple.com, WIPO Case No. D2003-1028 (March 17, 2004) (Respondent's use of the disputed domain name to intercept traffic intended for Complainants' website but mis-typed by omitting the final `s' was found to be evidence of bad faith use and registration. Panel held Respondent stood to gain from this siphoning of profits as long as it remained an Affiliate of Complainants.); see also The Paragon Gifts, Inc. v. Govs, WIPO Case No. D2003-0892 (December 27, 2003); and The Sports Authority Michigan, Inc. v. Internet Hosting, NAF Claim No. 124516 (November 4, 2002).

Indeed, the mere act of "typosquatting" or registering domain names that are common mis-spellings of a mark in which a party has rights, has often been recognized as evidence of bad faith registration and use. See National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011 (January 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, The Paragon Gifts, Inc. v. Govs, WIPO Case No. D2003-0892 (December 27, 2003); Register.com, Inc. v. Mike Torres, et al., NAF Claim No. 145209 (March 11, 2003).

Further evidence of Respondent's bad faith is based on the fact that Respondent is a member of Complainant's affiliate program, thus it can be inferred that Respondent had actual knowledge of Complainant's rights in its Registered Mark and domain name when it registered the Domain Names. The Sports Authority Michigan, Inc. v. Domhold Co. a/k/a D'Vaul L., NAF Claim No. 135011 (January 9, 2003). Registration of a domain name that infringes on Complainant's rights, despite actual knowledge of Complainant's mark, is evidence of bad faith. Id.; see also Digi Int'l v. DDI Sys., NAF Claim No. 124506 (October 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).

For the foregoing reasons, the Panel finds that Policy 4(a)(iii) has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <ros-simons.com> and <ross-simonss.com> be transferred to the Complainant.

Harrie R. Samaras
Sole Panelist

Dated: April 26, 2004