WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Provo Craft & Novelty, Inc. v. John Drake, Cricutmart.com

Case No. D2010-2176

1. The Parties

Complainant is Provo Craft & Novelty, Inc. of South Jordan, Utah, United States of America represented internally.

Respondents are of John Drake of Taipei, Taiwan, People’s Republic of China and Cricutmart.com of Hollywood, Florida, United States of America (hereafter referred to as “Respondent”).

2. The Domain Names and Registrars

The disputed domain names <cricutlife.com> and <cricutmart.com> are registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 15, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain names. On December 16, 2010, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 3, 2010.

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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. Respondent did not submit any response. On January 24, 2011, Respondent sent an email communication to the Center, asking for an extension of the due date.

The Center appointed Ross Carson as the sole panelist in this matter on January 25, 2011. 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.

After considering Respondent’s request for an extension of time, filed with the Center on January 24, 2011, the Panel refuses the request for reasons found under the subsequent title, Discussion and Findings, Procedural Matters below.

4. Factual Background

Complainant has for over forty years offered for sale and sold craft products and tools. Currently, Complainant’s craft products and tools are distributed through craft stores throughout the United States of America and many countries throughout the world. Complainant’s craft products and tools are also available over the Internet.

Complainant is the registered owner of United States Trademark Registration No. 3326119 for the trademark CRICUT registered on the Principal Register on October 30, 2007, in relation to the goods and services: paper cutting machine for cutting paper, cardstock and other materials in sheet form; electronic memories contained in a cartridge to be inserted in an electronic paper cutting machine.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant submits that the trademark on which the Complaint is based is United States Trademark Registration No. 3326119 for the trademark CRICUT. The goods and services that are covered under the mark identified are: paper cutting machine for cutting paper, cardstock and other materials in sheet form; electronic memories contained in a cartridge to be inserted in an electronic paper cutting machine.

The disputed domain names <cricutmart.com> and <cricutlife.com> are using identical trademarks in their domains to which Complainant has rights.

A.2. No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that it has not given <cricutmart.com>, <cricutlife.com> or Respondent permission to use the CRICUT trademark. Respondent did not register the disputed domain names until August 2009 and July 2010 and has not been commonly known by the disputed domain names. Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Respondent is using the disputed domain names with the intent for commercial gain.

A.3. Registration in Bad Faith

Complainant states that it is the registered owner of United States Trademark Registration No. 3326119 for the trademark CRICUT. Complainant further states that Respondent did not register the disputed domain names until August 2009 and July 2010. By using the disputed domain names, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s trademark.

A.4. Use in Bad Faith

Complainant submits that the disputed domain names were registered and are being used in bad faith. By using the disputed domain names, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s trademark CRICUT.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue

On January 24, 2011, Respondent requested the Center to grant it an extension of time to file a Response. Respondent’s grounds supporting the request for the extension of time were: “Our webmaster has just recently forwarded this information to me and it is the first time I have to deal with this issue. I would like to request an extension, even 2 weeks would make a difference as I could prepare an adequate response.” The Center advised Respondent that, given that the Response due date had already passed, it was in the process of appointing an Administrative Panel, which will decide on Respondent’s request.

Paragraph 5(d) of the UDRP Rules states: “At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response.” Paragraph 10(c) of the UDRP Rules states: “The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”

On December 28, 2010, the Center’s email communications of the “Notification of Complaint and Commencement of Administrative Proceedings” document, stating that the Response was due by January 17, 2011, were successfully delivered to all the email addresses associated with each of the disputed domain names. A package containing the “Written Notice” was delivered by courier to Respondent’s place of business in Hollywood, Florida on January 14, 2011 and received at that address.

Respondent’s submission that “Our webmaster has just recently forwarded this information to me” is uncertain as to time and does not deny previous service of the “Notification of Complaint and Commencement of Administrative Proceedings” on Respondent by e-mail and the “Written Notice” by courier, both stating that the Response was due by January 17, 2011.

The Panel finds that Respondent’s request for an extension of time to file a Response, which was also received well after the Response due date does not per se establish exceptional circumstances and the request is declined. Other than this brief request from Respondent, no belated comment or communication on the substantive merits of the case if accurate was forthcoming. (See, World Wrestling Entertainment Inc. v. Israel Joffe, WIPO Case No. D2010-0860; Alee Willis v. NetHollywood, WIPO Case No. D2004-1030)

B. Substantive Issues

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

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:

(i) the domain name registered by respondent 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.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported factual allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the registered owner of United States Trademark Registration No. 3326119 for the trademark CRICUT registered on the Principal Register on October 30, 2007 in relation to the goods and services: paper cutting machine for cutting paper, cardstock and other materials in sheet form; electronic memories contained in a cartridge to be inserted in an electronic paper cutting machine. Complainant’s registered trademark was in use and registered many years prior to the date of registration of the disputed domain name <cricutmart.com> on August 29, 2009, and the disputed domain <cricutlife.com> on July 31, 2010.

The disputed domain names <cricutmart.com> and <cricutlife.com> incorporate the entirety of Complainant’s trademark CRICUT. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant's mark when it “fully incorporate[s] said mark”; holding <pepsiadventure.net>, <pepsitennis.com>, and other domains confusingly similar to complainant’s PEPSI mark).

The disputed domain name <cricutmart.com> adds the descriptive term “mart” to Complainant’s trademark CRICUT. Respondent may not avoid likely confusion by simply adding a descriptive or generic term, such as “mart” to Complainant's trademark. Many UDRP decisions have held that the addition of a descriptive or generic term to a trademark does nothing to change an otherwise identical or confusingly similar domain name. See, e.g., Educational Testing Service v. ESL Pro Systems, Ltd., WIPO Case No. D2006-0245 (<free-toefl.com>, <free-toeic.com>, and <free-toefl-practice-test.com> held confusingly similar to complainant’s TOEFL and TOEIC marks because the addition of generic words does not avoid confusing similarity).

The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP Panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, 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).

The Panel finds that Complainant has proven that the disputed domain names are confusingly similar to Complainant’s trademark CRICUT.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademarks confusingly similar thereto.

The websites under the disputed domain names included links to websites that offered Complainant’s goods as well as Complainant’s competitors related goods. Respondent’s use of the confusingly similar domain names to divert traffic to the websites of competitors is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain names. See, e.g., American Century Proprietary Holdings, Inc. v. Travis Martin, NAF Claim No. 1262486 (holding no rights or legitimate interests where domain name resolves to a parked website and respondent presumably generates click-through fees from such use).

On the basis of the content of the webpages associated with the disputed domain names, the multiple screenshots of the websites under the disputed domain names and a review of the database maintained in United States Patent and Trademarks Office for the word “cricut”, the Panel finds that Respondent is not commonly known by the cricut, cricutmart or cricutlife names, and owns no relevant trademark applications or registrations for them. See, Braun Corporation v. Wayne Loney, NAF Claim No. 699652 (concluding that the respondent had no rights or legitimate interests in the disputed domain names because it was not commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark). See also, Tercent Inc. v. Lee Yi, NAF Claim No. 139720 (finding that the WhoIs information and its failure to imply that respondent is commonly known by the disputed domain name is a factor in determining whether respondent has any rights or legitimate interests in the dispute domain name).

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and used in bad faith.

C. 1. Registered in Bad Faith

Complainant has established that it is the registered owner of United States Trademark Registration No. 3326119 for the trademark CRICUT. Complainant’s registered trademark was in use and registered many years prior to the date of registration of the disputed domain names.

Complainant is also the registered owner of nine further United States Trademark Registrations for trademarks for or including the trademark CRICUT. Of particular interest is United States Trademark Registration No. 3406679 for the word mark CRICUT in combination with the fanciful representation of the head of a cricket. Some of the links to websites associated with the disputed domain names disclose the fanciful head of a cricket used in association with Complainant’s word mark CRICUT. Complainant’s trademarks for CRICUT is a play on the word “cricket”. Complainant is the only owner of trademarks for or including the created word CRICUT on the United States Trademark Database.

The Panel finds on a balance of probabilities that Respondent registered the disputed domain names in bad faith.

C.2. Domain Name Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.

The webpages associated with the disputed domain names include links to entities providing products and services related to the kind of products and services offered by Complainant without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain names which is confusingly similar to Complainant’s registered trademarks for or including CRICUT as the distinctive element enables Respondent to draw Internet users to the websites for profit by misleading Internet users associating the disputed domain names with Complainant. The Panel infers that Respondent is receiving click-through profits as the pages associated with the disputed domain names make no reference to Respondent, its purpose, business or proposed business. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g., Google Inc. v. Forum LLC, NAF Claim No. 1053323 (finding bad faith registration and use where <googlenews.com> resolves to a commercial search engine website generating click-through advertising fees); Brink’s Network, Inc. v. Jenny Ho, brinksplacetv.com, WIPO Case No. D2009-0530 (“Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant’s competitors, a holding of bad faith use will typically follow”).

The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that on the present record Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy. Naturally such a finding by a Panel under the Policy does not preclude either party from court options, should either wish to do so, and it may be that a court examining a different record and applying a different law may reach a different result. But in these expedited proceedings under the Policy, the Panel finds that Complainant has made its case.

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 disputed domain names <cricutlife.com> and <cricutmart.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Dated: February 8, 2011