DECISION

Web House USA, Inc. v. eDollarShop Hostmaster a/k/a eDollarShop.com

Claim Number:  FA0304000155180

PARTIES

Complainant is Web House USA, Inc., Pleasant Grove, UT (“Complainant”) represented by Jon D. Corey. Respondent is eDollarShop.com Hostmaster, Provo, UT (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <edollarshop.com>, registered with Go Daddy Software, Inc.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 22, 2003; the Forum received a hard copy of the Complaint on April 23, 2003.

On April 22, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <edollarshop.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 20, 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@edollarshop.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 June 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <edollarshop.com> domain name is confusingly similar to Complainant’s MYDOLLARSHOP common law mark.

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

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

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

FINDINGS

In 2002, Complainant, Web House USA Inc., “conceived of the idea of selling [I]nternet store fronts to customers and providing hosting services, inventory services and shipping services for those customers.” Integral to the development of Complainant’s Internet storefront idea was its registration of the <mydollarshop.com> domain name, which occurred on July 8, 2002. Complainant has made continuous use of the MYDOLLARSHOP mark in commerce from the date of registration to the present.

On September 3, 2002, Complainant’s <mydollarshop.com> domain name and corresponding website “went live.” Between the July 8, 2002 registration date and the September premier of its services, Complainant directed the development of the MYDOLLARSHOP website and creation of the related web interface. Once the <mydollarshop.com> website was operational, Complainant immediately began marketing and selling online stores using the MYDOLLARSHOP mark through a variety of channels. Complainant acquired its first customer on September 14, 2002. On October 8, 2002, Complainant had its one hundredth customer. Currently, Complainant’s MYDOLLARSHOP entity has over 17,000 customers.

Respondent, eDollarShop.com, registered the contested <edollarshop.com> domain name on October 11, 2002. Complainant’s investigation of Respondent reveals that Respondent copied the content from Complainant’s <mydollarshop.com> website and posted it on <edollarshop.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 common law rights in the MYDOLLARSHOP mark pursuant to Policy ¶ 4(a)(i).

Under the Policy, a complainant must fulfill its initial burden to prove, by a preponderance of the credible, relevant and admissible evidence, that the domain name is identical or confusingly similar to a mark in which it has rights. Although discussed infra, the language used in the Policy is misleading because, while it uses the present tense, it has been interpreted as meaning “identical or confusingly similar to a mark” in which Complainant had rights when Respondent registered the infringing domain name. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”).

Complainant is correct in its assertion that “The UDRP does not require that Complainant have a registered trademark or service mark” and that the dispute resolution policy is broad in scope. Complainant’s submission is thorough in attempting to establish common law rights in the MYDOLLARSHOP mark. However, the established timeline of events makes it difficult to conclude that Complainant had common law rights in the MYDOLLARSHOP mark at the relevant time. Specifically, Complainant registered its <mydollarshop.com> domain name on July 8, 2002 and started promoting products and related services under the MYDOLLARSHOP mark in September 2002. About a month later, Respondent registered the disputed <edollarshop.com> domain name.

Numerous decisions have determined that the relevant point in time when Complainant must evidence rights in the MYDOLLARSHOP mark is prior to Respondent’s registration of the domain name. The panel in Transpark LLC v. Network Administrator, FA 135602 (Nat. Arb. Forum Jan. 21, 2003), articulated this position in stating:

Without establishing rights in a mark that predates a disputed domain name registration the outcome would allow junior trademark users to contest a prior domain name registration. Such an outcome is contrary to the Policy, which was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant’s rights must predate Respondent’s domain name registration, which numerous, previous decisions have held. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that the Complainant’s rights predate the Respondent’s registration . . . of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).

Transpark LLC v. Network Adm’r, supra; see also Djr Holdings, LLC v. Gordon a/k/a IQ Mgmt. Corp., FA 141813 (Nat. Arb. Forum Mar. 4, 2003) (“This Panel is satisfied that for purposes of the UDRP, Complainant has established common law rights in the DEF JAM SOUTH prior to Respondent’s registration” (emphasis added)).

Therefore, given the above, in order to succeed Complainant must show common law rights in the mark prior to Respondent’s registration of the domain name.

                                         

Complainant’s burden to demonstrate common law rights in the mark is measured from the time Complainant made actual use of the MYDOLLARSHOP designation. See McCarthy on Trademarks and Unfair Competition, § 16:1, “Priority at Common Law” (4^th ed. 2002). Complainant’s MYDOLLARSHOP mark is descriptive, and describes Complainant’s product and related services. Marks categorized as “descriptive” cannot be protected unless secondary meaning is proven, whereas fanciful and suggestive marks are regarded as being “inherently distinctive” and are protectable immediately upon use. McCarthy, supra at § 11:25 and §11:4; see also Two Pesos, Inc. v. Taco Cabana, Inc., [1992] USSC 108; 505 U.S. 763 (1992). Therefore, because Complainant’s MYDOLLARSHOP mark is descriptive, Complainant must show that the consuming public related Complainant and its mark with the goods produced under that mark, and that there was some secondary meaning associated with the mark at the time Respondent registered the domain name. See Front Range Internet, Inc. v. Murphy a/k/a This Domain For Sale, FA 145231 (Nat. Arb. Forum Apr. 4, 2003).

The Panel notes that Complainant’s burden is difficult because it began using its domain name about one month before Respondent registered the <edollarshop.com> domain name. Establishing that secondary meaning existed in a descriptive mark in such a short amount of time is an arduous task. However, without the benefit of a Response, the Panel is permitted to accept all reasonable assertions contained in the Complaint as true, unless clearly contradicted by the evidence. Complainant asserts that it had rights in the MYDOLLARSHOP mark at the time of Respondent’s registration of the domain name, and Complainant supports its assertions with substantial evidence and exhibits. Therefore, the Panel concludes that Complainant’s assertions are reasonable, and are not clearly contradicted by the evidence or any competing submission by Respondent. See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Moreover, Complainant has submitted evidence that indicates Respondent copied the content of Complainant’s <mydollarshop.com> website onto Respondent’s website at the <edollarshop.com> domain name. This evidence supports the Panel’s inference that, along with the consuming public’s association of Complainant and its mark with the goods produced under the mark, Respondent had actual knowledge of Complainant’s rights in its mark as well.

Respondent’s <edollarshop.com> domain name is confusingly similar to Complainant’s MYDOLLARSHOP mark. Substituting an “e” for the “my” in Complainant’s mark fails to create a distinguishable domain name under Policy ¶ 4(a)(i), especially in situations such as this, where Respondent offers identical goods and services as Complainant. See 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding that the domain name <efitnesswholesale.com> is confusingly similar to Complainant’s mark, FITNESS WHOLESALE) (noting that “Respondent has registered and attempted to use the disputed domain name in the same line of services as that which Complainant provides, and that this makes it likely that consumers would be confused as between these two sources”).

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

Rights or Legitimate Interests

Complainant’s submission to the Panel asserts that Respondent does not have any rights or legitimate interests in the <edollarshop.com> domain name. Because Complainant has provided proof of valid, subsisting rights in a mark that is confusingly similar to the domain name in question and alleged that Respondent lacks rights or legitimate interests in the domain name, the burden shifts to Respondent. By failing to respond, Respondent has consequently failed to assert any circumstances that could substantiate its rights or interests in the subject domain name. 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 in respect of the domain name, 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 has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Uncontested evidence reveals that Respondent uses the <edollarshop.com> domain name to usurp Complainant’s business, while diverting Internet users from Complainant’s <mydollarshop.com> domain name and corresponding website to its own. Respondent “pirated” content from Complainant’s MYDOLLARSHOP website for the sole purpose of posting the infringing material on its <edollarshop.com> website. Such opportunistic use fails to establish rights in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

No evidence before the Panel supports a finding that Respondent is commonly known by the <edollarshop.com> domain name pursuant to Policy ¶ 4(c)(ii). The content on Respondent’s website remains almost identical to Complainant’s “first in use” website. In fact, Respondent’s website continually references Complainant’s MYDOLLARSHOP mark. For example, text on Respondent’s website states, “If after 90 days of following the steps outlined in the MyDollarShop.com Guide to Marketing . . . we will deposit a $40 Commission into your account.” Such flagrant infringement fails to support a finding of rights or legitimate interests in the domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

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

Registration and Use in Bad Faith

Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Specifically, Respondent intentionally chose a domain name that was confusingly similar to Complainant’s MYDOLLARSHOP mark for the purpose of diverting unsuspecting Internet users. As demonstrated by Complainant’s evidence indicating the existence of actual confusion, Respondent has used the <edollarshop.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s MYDOLLARSHOP mark. Thus, Respondent’s diversionary use of the domain name constitutes bad faith under the Policy. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

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

Sandra Franklin, Panelist

Dated: June 10, 2003

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