WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shopatron, Inc. v. Reshare Corporation
Case No. D2007-1377
1. The Parties
Complainant is Shopatron, Inc., San Luis Obispo, California, United States of America, represented by Sinsheimer Juhnke Lebens & McIvor, LLP, United States of America.
Respondent is Reshare Corporation, Minneapolis, Minnesota, United States of America.
2. The Domain Name and Registrar
The disputed domain name <shop-a-tron.com> (the “Domain Name”) is registered with OnlineNIC, Inc. (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2007, naming Absolutee Corp. Ltd. as respondent. On September 19, 2007, the Center transmitted by email to Registrar a request for registrar verification in connection with the Domain Name. In response, Registrar sent two different registrar verification responses for the Domain Name. The first response of September 21, 2007, stated that Registrar was in receipt of a copy of the Complaint and that the registrant Reshare Corporation was Respondent and provided the contact details of Respondent. It also confirmed that the date of expiry of the Domain Name was November 17, 2007, and that the Domain Name will remain on registrar lock pending conclusion of the administrative proceeding and thus cannot be transferred by Respondent. Further the response confirmed that Respondent had agreed to the adjudication of disputes pursuant to the Registration Agreement. However, a second verification response dated September 24, 2007, from Registrar for the same Domain Name states that a copy of the Complaint had not been received and that the registrant was not Respondent, but was Absolutee Corp. Ltd. On September 24, 2007, the Center advised Registrar of its receipt of two different registrar verification responses and on September 25, 2007, Registrar confirmed that the earlier response was the correct response. Further, on September 25, 2007, the Center advised Registrar that the Registrar WhoIs database appeared to confirm that Absolutee Corp. Ltd. was the registrant as stated in the second response. Finally on September 26, 2007, the Center received an email from the author of the second response confirming that the second response was incorrect. There are several further communications dealing with the jurisdiction issue as defined in the Registration Agreement. Accordingly, on October 8, 2007, the Center sent a Complaint Deficiency Notification to Complainant advising that the registrant of record for the Domain Name was not the entity specified in the Complaint as Respondent and providing details of the proper name and details of correct domain name holder. In response to the notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 12, 2007. The Center verified that the Amended 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 October 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2007.
As set forth above, the expiry date of the Domain Name was November 17, 2007. On October 16, 2007, the Center reconfirmed to Registrar that the Domain Name is the subject of an administrative proceeding. The Center advised Registrar in the same email that “Paragraph 126.96.36.199 of the ICANN Expired Domain Deletion Policy provides, inter alia, that “In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant.” On October 24, 2007, Registrar confirmed that the Domain Name will remain in locked status after the expiry date until the administrative proceedings are concluded and that there is no further action which needs to be taken by the parties to the dispute to allow the registrar lock status to continue.
The Panel visited the Domain Name site on November 24, 2007. The upper right corner of the home page states that “this domain is parked, pending renewal, or has expired. Please contact the domain provider with questions.” Accordingly, this confirms the position of Registrar set forth above.
The Center appointed James H. Grossman as the sole panelist in this matter on November 13, 2007. 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.
The Panel has expanded upon the various administration proceedings set forth above in that these facts do play an important part in certain aspects of the decision as described below.
4. Factual Background
Complainant provides branded manufacturers with e-commerce solutions that integrate the manufacturer’s existing retail and dealer channels into the sales transaction. Consumers are thus able to purchase brands online through the manufacturer’s website and receive delivery and service through the manufacturer’s traditional venders, local retailers and dealers. Complainant is the owner of the registered mark SHOPATRON, U.S. Reg. No. 3,116,873, filed on July 6, 2005 and issued on the United States Principal Register July 18, 2006. According to Complainant, Complainant has used the SHOPATRON mark continuously in commerce beginning at least as early as June 1, 2001 although the website uses an August 2001 date for first use. Complainant registered its own domain name <shopatron.com> on March 26, 1999.
Since Respondent has failed to file any response to the Complaint, there is no way of knowing any of its reasoning as to the factual background relating to the Domain Name. The Domain Name was first created on November 17, 2006.
5. Parties’ Contentions
Complainant alleges that the Domain Name is identical or virtually identical and confusingly similar to Complainant’s registered trademark as well as Complainant’s domain name and other marks. Complainant contends that the various SHOPATRON marks have gained high recognition among consumers and that these marks present extremely valuable good will to Complainant. Complainant points out the spelling of the Domain Name is identical with its trademark except for the two hyphens. Complainant cites several cases which stand for the proposition that the use of hyphens does not alter the fact that a name is identical to a mark. See Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613 citing Chernow Communications, Inc. v. Kimball, WIPO Case No. D2000-0119. Further, Complainant states that a hyphen does not change the pronunciation of the word, so it contends that not only is the appearance identical but the name is pronounced exactly the same as Complainant’s marks. Thus, this can only result in confusion. Complainant states that it has never given Respondent or any of the sites to which users are transferred from the Domain Name any authority to act on its behalf in providing information to potential customers or in generating sales leads. Complainant alleges that Respondent’s bad faith is evidenced, inter alia, by Respondent’s passing itself off as Complainant or at least misrepresents and falsely asserts an affiliation with Complainant. The potential customer is given the false assurance that contact information will go to Complainant. Instead Respondent has seriously disrupted the business of Complainant.
Finally, Complainant points out that the use of Absolutee Corp. Ltd., to hide Reshare Corporation, a direct competitor of Complainant, underscores the evidence of bad faith with an intent to cause harm to Complainant and the public in that Respondent was directly and actively involved in pursuing customers seeking Complainant’s website (a so-called “phishing” scheme).
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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
The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark and domain name and likely to cause confusion among the public. Respondent has simply added two hyphens to separate the syllables of the word “shopatron” which is the identical word as Complainant’s trademark and domain name. Complainant has sited earlier decisions described above stating that a hyphen does not change the fact that a word is identical. Complainant has stated that its domain name and the other marks have gained high recognition amongst the public. The Panel is of the view that the identity of a website in this very competitive venue is entitled to protection from someone who seeks to pass itself off as the real “shopatron”. The average consumer would in all likelihood believe that this site was controlled by Complainant which has over time built this recognized retail-integrated e-commerce site.
The Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Complainant is quite clear that it has never given any permission to Respondent to use the Domain Name for any purpose. In fact Respondent is wrongfully using the Domain Name, well recognized as that of Complainant, to gather and misappropriate contact information from potential purchasers for Complainant’s services. Not only does Complainant’s trademark registration (July 18, 2006) predate the Domain Name’s registration, but also Complainant’s own domain name registered on March 26, 1999 also predates by a number of years the registration of the Domain Name by Respondent on November 17, 2006. Compared with this recent registration of the Domain Name, Complainant has been building a business through the use of various marks at least since 2001.
It should be pointed out that pursuant to the Policy, Complainant is required only to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made as in this case, Respondent carries the burden of demonstrating its rights or legitimate interests in the particular domain name at issue. Thus, Respondent’s failure to respond to the Complaint provides the Panel in the particular circumstances of this case with sufficient reason to rule that Respondent had no rights or legitimate interests in the Domain Name. See paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The long discussion of the Procedural History above shows that there was confusion even at Registrar as to the real registrant is this matter. It appears that either cyberflight occurred in this matter or Respondent sought to hide behind Absolutee Corp. Ltd. so as not to disclose its identity, it being a competitor of Complainant. This problem is exascerbated in this matter since even the WhoIs database at one point listed Absolutee Corp. Ltd. as the registrant even though the WhoIs database was subsequently changed to display “Reshare Corporation” as the registrant of record. The Panel is informed that the UDRP assumes that even if the underlying domain name holder is hidden from most of the public for arguably legitimate reasons (e.g. spam) in WhoIs privacy service situations, the WhoIs database would list the registrant of record. It may also be assumed that Registrar will provide information on the underlying registrant where a case such as that arises. Whether or not in this matter Respondent has attempted to hide behind “Absolutee Corp. Ltd.”, the Panel takes Registrar at its word that an error was made and that Respondent for the purposes of this proceeding is “Reshare Corporation”. The Panel does encourage the Center to take steps to record names of ICANN accredited registrars such as this Registrar and any others so as to determine if any may have repetitive problems with proper internal disclosure procedures and report such cases to ICANN.
Complainant sets out a pattern of linkage from the Domain Name leading to another website called “www.channelcooperation.com” which was also registered in the name of Absolutee Corp. Ltd. The potential customer at this site was asked to provide essential contact information and the site also describes both Complainant and Respondent’s services. However, asking to have the information sent to Complainant resulted in the contact information being sent to a third site and, according to Complainant, none of the sales lead information ever reached Complainant. So in essence, Respondent through false pretenses receives the sales leads intended for Complainant. The Panel is of the view that Respondent has created through the use of the Domain Name a carefully conceived, intentionally implemented, plan of deception and unfair business practice. This was not just a simple attempt to reach new purchasers but a complicated web of entities and links to hide these unfair and bad faith practices. The Panel, as part of an independent search of the various sites and links described above, notes that at some time after the filing of the Complaint and after the sworn declaration annexed to the Complaint, the various links have been changed or removed.
Finally, as Complainant points out, the Domain Name is indistinguishable from Complainant’s domain name. The average consumer would in all likelihood believe that this site was controlled by Complainant.
The Panel finds that Complainant has satisfied the third element of the Policy.
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 Name, <shop-a-tron.com> be transferred to Complainant.
James H. Grossman
Dated: November 27, 2007