DECISION

U.O.D., Inc. v. Ernesto Aldo Marchand

Claim Number:  FA0405000268179

PARTIES

Complainant is U.O.D., Inc. (“Complainant”), represented by Michael J. Remington, of Drinker Biddle & Reath LLP, 1500 K Street NW, Suite 1100, Washington, DC 20005.  Respondent is Ernesto Aldo Marchand (“Respondent”), Av. Brigadeiro Faria Lima 1811 cj 105, Sao Paulo, Sao Paulo 01476-900.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwfreepeople.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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 5, 2004; the Forum received a hard copy of the Complaint on May 10, 2004.

On May 5, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <wwwfreepeople.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 May 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 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@wwwfreepeople.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 8, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 <wwwfreepeople.com> domain name is confusingly similar to Complainant’s FREE PEOPLE mark.

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

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

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

FINDINGS

Complainant, U.O.D., Inc., offers soft and casual fashion paired with utilitarian essentials in boutiques across the country. 

Complainant holds trademark registrations with the United States Patent and Trademark Office for the FREE PEOPLE mark (Reg. No. 1,827,547 issued March 22, 1994 and Reg. No. 2,770,021 issued September 30, 2003).

Complainant has used the FREE PEOPLE mark in commerce since at least February 1, 1991.  Complainant’s clothing, targeted primarily to young, contemporary women, is sold worldwide through approximately 1,100 department and specialty stores.   

Complainant’s main website is operated at the <freepeople.com> domain name.

Respondent registered the disputed domain name on August 21, 2003.  Respondent was using the domain name to redirect Internet users to a gambling website.  Currently, the domain name is parked at the registrant’s home page.

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 that it has rights in the FREE PEOPLE mark through trademark registrations with the United States Patent and Trademark Office and through continued use of its mark in commerce for the last thirteen years.  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 domain name registered by Respondent is confusingly similar to Complainant’s FREE PEOPLE mark because the domain name incorporates Complainant’s mark in its entirety and simply adds the letters “www.”  The mere addition of the letters “www” to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark); see also Dana Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

Furthermore, the addition of the generic top-level domain (“gTLD”) “.com” does not significantly distinguish the domain name from the mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the domain name that contains in its entirety Complainant’s mark.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that 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”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Moreover, where Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  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).

Respondent’s <wwwfreepeople.com> domain name is an obvious misspelling of Complainant’s mark intended to capitalize on a frequent Internet-user mistake, forgetting to type a period after “www.”  The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the name under Policy ¶ 4(c)(iii).  See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

Nothing in the record, including the WHOIS domain name registration information, suggests that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent intentionally registered a domain name, <wwwfreepeople.com>, that contains in its entirety Complainant’s FREE PEOPLE mark.  Respondent has engaged in the practice of typosquatting.  Typosquatting, itself, is evidence of bad faith registration and use under the Policy.  See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that “[t] absence of a dot between the “www” and “canadiantire.com” [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name); see also Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s registered mark in its entirety and deviates only with the addition of the letters “www” and the gTLD “.com,” suggests Respondent knew of Complainant’s rights in the FREE PEOPLE mark.  Thus, the Panel finds that Respondent likely choose the <wwwfreepeople.com> domain name based on the distinctive qualities of Complainant’s mark.  See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s registration of the <wwwremax.com> domain name, incorporating Complainant’s entire mark, was done with actual notice of Complainant’s rights in the mark prior to registering the infringing domain name, evidencing bad faith). 

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwfreepeople.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  June 21, 2004

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