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SmartBargains, Inc. v. Peter Carringtona/k/a Party Night, Inc. [2003] GENDND 458 (6 May 2003)


National Arbitration Forum

DECISION

SmartBargains, Inc. v. Peter Carrington a/k/a Party Night, Inc.

Claim Number:  FA0303000152123

PARTIES

Complainant is SmartBargains, Inc., Boston, MA, USA (“Complainant”) represented by Sean F. Heneghan. Respondent is Peter Carrington a/k/a Party Night Inc., Amsterdam, THE NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smartbargians.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 27, 2003; the Forum received a hard copy of the Complaint on March 31, 2003.

On March 28, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain name <smartbargians.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 April 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 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@smartbargians.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 May 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 <smartbargians.com> domain name is confusingly similar to Complainant’s SMARTBARGAINS family of marks.

2. Respondent does not have any rights or legitimate interests in the <smartbargians.com> domain name.

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

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

FINDINGS

Complainant, SmartBargains, Inc., holds a federal U.S. registration for the SMARTBARGAINS.COM mark (U.S. Reg. No. 2,606,658, registered on the Principal Register of the U.S. Patent and Trademark Office on August 13, 2002), claiming first use of the mark in July of 2000. Complainant also registered the SMARTBARGAINS mark in the European Union (E.U. Reg. No. 1,960,558, registered on May 6, 2002). Complainant operates under its SMARTBARGAINS family of marks as an on-line retail store service at the <smartbargains.com> domain name.

Respondent, Peter Carrington a/k/a Party Night, Inc., registered the <smartbargians.com> domain name on March 17, 2002, and is not licensed or authorized to use the SMARTBARGAINS.COM or SMARTBARGAINS mark for any purpose. Respondent links the disputed domain name to an adult-oriented website at the <hanky-panky-college.com> domain name, and uses pop-up advertising from sponsors such as <yes-yes-yes.com>.

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 rights in the SMARTBARGAINS family of marks via its registration of those marks with the U.S. Patent and Trademark Office and the E.U. Office for Harmonization in the Internal Market, as well as through use of the mark in commerce since 2000.

Respondent’s <smartbargians.com> domain name is confusingly similar to both Complainant’s SMARTBARGAINS and SMARTBARGAINS.COM marks.  Respondent’s transposition of the letters “a” and “i” in the disputed domain name, taking advantage of a common misspelling of the word “bargain,” creates a domain name that is confusingly similar to Complainant’s SMARTBARGAINS mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark).

Accordingly, the Panel finds that the <smartbargians.com> domain name is confusingly similar to Complainant’s SMARTBARGAINS family of marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Without a response to the Complaint to rely upon, Complainant’s burden of making a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name is met if Complainant can demonstrate that the “safe harbors” for domain name registrants listed in Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent registered a common misspelling of Complainant’s mark in order to redirect Internet users to an adult-oriented website.  At the same time, Internet users are subjected to a series of pop-up advertisements.  Using Complainant’s mark for these purposes 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 of the domain name pursuant to Policy ¶ 4(c)(iii). See 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); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).

Respondent, as either Peter Carrington or Party Night, Inc., is not “commonly known by” the name <smartbargians.com> or SMARTBARGIANS. As such, Policy ¶ 4(c)(ii) does not apply to Respondent. 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 MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <smartbargians.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s <smartbargians.com> domain name is nearly identical to Complainant’s SMARTBARGAINS.COM mark and <smartbargains.com> domain name.  This creates an immediate likelihood of confusion as to the source or sponsorship of Respondent’s website in the minds of Internet users who inadvertently misspell Complainant’s domain name when attempting to reach its webpage.  The inference is that Respondent created this likelihood of confusion for commercial gain via pop-up advertisements and referral fees from an adult-oriented website.  Thus, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).

The Panel thus finds that Respondent registered and used the <smartbargians.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <smartbargians.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 6, 2003


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