Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry- [2005] GENDND 498 (9 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Specialty Store Services, Inc. v. Horoshiy, Inc., & LaPorte Holdings, Inc.

Case No. D2005-0015

1. The Parties

The Complainant is Specialty Store Services, Inc., of Illinois, United States of America, represented by Levin Ginsburg, United States of America.

The Respondent is Horoshiy, Inc., of Los Angeles, California, United States of America; Mr. Henry Chan, of F.D. Rooseveltweg, Curacao, Netherlands Antilles, LaPorte Holdings, Inc., United States of America.

2. The Domain Names and Registrars

The disputed domain names <specialitystoreservices.com> is registered with NameKing.com and <specialtystoresservices.com> is registered with Domain Bank, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2005. On January 6, 2005, the Center transmitted by email to NameKing.com and to Domain Bank, Inc. a request for registrar verification in connection with the domain names at issue. On January 12, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <specialitystoreservices.com>, and providing the contact details for the administrative, billing, and technical contact. On January 15, 2005, Domain Bank, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <specialtystoresservices.com>, and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 20, 2005. 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 the Respondent of the Complaint, and the proceedings commenced on January 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2005.

The Center appointed Sandra Franklin as the sole panelist in this matter on February 28, 2005. 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

Complainant is the owner of the SPECIALTY STORE SERVICES service mark and has used it continuously since 1986, to sell DVD cases, display cases, shelving, bags, signs, security cameras, and video store supplies. Complainant has also operated a website at specialtystoreservices.com since May 5, 1997.

5. Parties’ Contentions

A. Complainant makes the following assertions:

1. Respondent’s <specialitystoreservices.com> and <specialtystoresservices.com> domain names are confusingly similar to Complainant’s SPECIALTY STORE SERVICES mark.

2. Respondent does not have any rights or legitimate interests in the <specialitystoreservices.com> and <specialtystoresservices.com> domain names.

3. Respondent registered and used the <specialitystoreservices.com> and <specialtystoresservices.com> domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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.

A. Identical or Confusingly Similar

Except for a difference of one letter in each of Respondent’s domain names, Complainant’s registered trademark and those of Respondent are identical. In Superior Windmill, Inc. v. JL Company/John Longenecker, WIPO Case No. D2004-0295, the Panel held that “suffixes such as the use of plural word or a country designation do not alter the fact that the domain names are essentially the same as the trademarks.” In Playboy Enterprises International, Inc. v. SAND WebNames-For Sale, WIPO Case No. D2001-0094, the Panel determined that where an infringing name is only one letter different from the Complainant’s mark that it constitutes as “typical case of typosquatting”. Similarly, it is not uncommon for consumers, such as Complainant’s customers, to mistype a domain name or use an alternate spelling. In September 2004, Complainant was contacted by its customer inquiring about one of Respondent’s websites. The customer had mistakenly typed “specialitystoreservices.com” and, as a result, accessed Respondent’s website, which directed customer to products, and services that compete with Complainant’s products.

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

B. Rights or Legitimate Interests

Respondent apparently admitted no legitimate interest in the domain names when it agreed to transfer the disputed domain names to Complainant, though Respondent did not follow though.

Respondent has a history of using domain names in which it has no legitimate interest. This conclusion is supported by numerous WIPO Administrative Panel Decisions including the following Panel decisions where Henry Chan, a principal in Horoshiy, Inc. (or LaPorte Holdings d/b/a Horoshiy) was the Respondent: Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan WIPO Case No. D2004-0430; Deloitte Touche Tohmatsu v. Henry Chan WIPO Case No. D2003-0584; Cancer Treatment Centers of America, Inc. v. Henry Chan WIPO Case No. D2003-0611; Lillian Vernon Corporation v. Horoshiy, Inc. WIPO Case No. D2004-0611; Wal-Mart Stores, Inc. v. Horoshiy, Inc. WIPO Case No. D2004-0620; Medco Health Solutions, Inc. v. Horoshiy, Inc. WIPO Case No. D2004-0625; Européenne de Traitement de l’Information v. Horoshiy, Inc. WIPO Case No. D2004-0706; Dell Inc. v. Horoshiy, Inc. WIPO Case No. D2004-0721; Hyatt Legal Plans, Inc. v. La Porte Holdings d/b/a Horoshiy Claim Number: FA0410000340736; MB Financial Bank, N.A. v. LaPorte Holdings, Inc. Claim Number: FA04110000362110.

Paragraph 4(c) of the Policy provides a list of possible circumstances under which the Respondent could have rights or legitimate interests in the disputed domain names. However, none of these circumstances apply to Respondent in using either of the disputed domain names in connection with a bona fide offering of goods or services, as Respondent is not commonly known by the domain name and is not making any legitimate non-commercial use of the domain names.

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

C. Registered and Used in Bad Faith

The Panel agrees with Complainant that Respondent has purposefully selected and registered the slightly misspelled domain names to divert consumers who are attempting to locate Complainant’s website. See Pfizer Inc. v. Mark Catroppa WIPO Case No. D2002-1100, where the Panel concluded that in “using a common typo—the substitution of the letter “a” for the letter “i”—the Respondent intended to take advantage of any confusion created by misspelling in order to divert potential customers” to its own website, an indication that Respondent has acted in bad faith.

The Panel infers that Respondent is profiting from the unauthorized use of Complainant’s registered mark in its domain name. Such infringement is what the Policy was intended to remedy and is bad faith registration and use under Policy paragraph 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum November 21, 2002) finding that the Respondent registered and used the domain name in bad faith pursuant to Policy paragraph 4(b)(iv) because the Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum November 22, 2002) finding that if a Respondent profits from its diversionary use of a complainant’s mark when the domain name resolves to commercial websites and the Respondent fails to contest the Complaint, it may be concluded that the Respondent is using the domain name in bad faith pursuant to Policy paragraph 4(b)(iv).

The list of cases above demonstrate that Respondent routinely misappropriates marks owned by others. As noted in Microcourt Limited v. Henry Chan, WIPO Case No. D2004-0075 the unusually high number of WIPO and other UDRP decisions against Mr. Henry Chan and the entity of which he is a principal, Horoshiy, Inc., is demonstrative of a flagrant pattern of bad faith conduct. See Royal Bank of Canada v. Henry Chan WIPO Case No. D2003-0031; Federated Western Properties, Inc. v. Henry Chan WIPO Case No. D2003-0472; Yahoo, Inc, GeoCities, HotJobs.com Ltd., and Launch v. Henry Chan, NAF Case No. FA00162050.

The Panel finds that Policy paragraph 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 <specialitystoreservices.com> and <specialtystoresservices.com> be transferred to the Complainant.

Date: March 8, 2005