In the recent domain name dispute of Provide Gifts, Inc. d/b/a RedEnvelope v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin FA1286921 (Nat. Arb. Forum, November 9, 2009) a single member Panel was faced with a dispute over the domain www.redenevelope.com. Complainant is the well known online gift retailer who maintains a web site at www.redenvelope.com. Respondent registered the disputed domain in August 2000 and failed to reply to the Complaint.
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.
In addressing the first element the Panel noted that Complainant had rights to the RED ENVELOPE mark through various trademark registrations. The Panel found that the disputed domain contained a misspelled version of Complainant’s RED ENVELOPE mark which was confusingly similar. The Panel found that Complainant satisfied Policy paragraph 4(a)(i).
Moving to the second element, the Panel found that Red Envelope presented a prima facie case and that Respondent failed to submit a response. The Panel found that Respondent was not commonly known by the disputed domain, was using the domain to display links advertising third-party web sites in competition with Red Envelope, and engaged in typosquatting. All these factors culminated to a conclusion that Respondent lacked any rights or legitimate interests in the domain. The Panel found Red Envelope satisfied Policy paragraph 4(a)(ii).
In reviewing the third element, bad faith, the Panel began by explaining:
…Respondent intended to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its mark by displaying third-party links to Complainant’s competitors in the online retail industry for upscale gifts. The Panel therefore finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel also relied on another bad faith factor and explained:
Additionally, Respondent has created a substantial likelihood of confusion as to the source and affiliation of the <redenevelope.com> domain name and the corresponding website. Respondent benefits from such a likelihood of confusion, as it receives referral fees for the competitive upscale gifts advertisements that are displayed to the diverted Internet users. The Panel finds this to be adequate evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel didn’t stop there noting that the typosquating also qualified for proof of bad faith under Policy paragraph 4(a)(iii).
Ultimately, the Panel found that Red Envelope satisfied all elements of the ICANN UDRP Policy and ordered the domain be TRANSFERRED.
