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and Mediation Center
Specialty Store Services, Inc. v. Horoshiy, Inc., & LaPorte
Case No. D2005-0015
1. The Parties
The Complainant is Specialty Store Services, Inc., of Illinois, United States of America, represented by Levin Ginsburg, United States of America.
The Respondent is Horoshiy, Inc., of Los Angeles, California, United States of America; Mr. Henry Chan, of F.D. Rooseveltweg, Curacao, Netherlands Antilles, LaPorte Holdings, Inc., United States of America.
2. The Domain Names and Registrars
The disputed domain names <specialitystoreservices.com> is registered
with NameKing.com and <specialtystoresservices.com> is registered with
Domain Bank, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2005. On January 6, 2005, the Center transmitted by email to NameKing.com and to Domain Bank, Inc. a request for registrar verification in connection with the domain names at issue. On January 12, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <specialitystoreservices.com>, and providing the contact details for the administrative, billing, and technical contact. On January 15, 2005, Domain Bank, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <specialtystoresservices.com>, and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 20, 2005. 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”), 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 January 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2005.
The Center appointed Sandra Franklin as the sole panelist
in this matter on February 28, 2005. 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,
4. Factual Background
Complainant is the owner of the SPECIALTY STORE SERVICES
service mark and has used it continuously since 1986, to sell DVD cases, display
cases, shelving, bags, signs, security cameras, and video store supplies. Complainant
has also operated a website at specialtystoreservices.com since May 5, 1997.
5. Parties’ Contentions
A. Complainant makes the following assertions:
1. Respondent’s <specialitystoreservices.com> and <specialtystoresservices.com> domain names are confusingly similar to Complainant’s SPECIALTY STORE SERVICES mark.
2. Respondent does not have any rights or legitimate interests in the <specialitystoreservices.com> and <specialtystoresservices.com> domain names.
3. Respondent registered and used the <specialitystoreservices.com> and <specialtystoresservices.com> domain names in bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
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.
A. Identical or Confusingly Similar
Except for a difference of one letter in each of Respondent’s domain
names, Complainant’s registered trademark and those of Respondent are
identical. In Superior Windmill, Inc. v. JL Company/John Longenecker,
WIPO Case No. D2004-0295, the Panel held
that “suffixes such as the use of plural word or a country designation
do not alter the fact that the domain names are essentially the same as the
trademarks.” In Playboy Enterprises International, Inc. v. SAND WebNames-For
Sale, WIPO Case No. D2001-0094, the
Panel determined that where an infringing name is only one letter different
from the Complainant’s mark that it constitutes as “typical case
of typosquatting”. Similarly, it is not uncommon for consumers, such as
Complainant’s customers, to mistype a domain name or use an alternate
spelling. In September 2004, Complainant was contacted by its customer inquiring
about one of Respondent’s websites. The customer had mistakenly typed
“specialitystoreservices.com” and, as a result, accessed Respondent’s
website, which directed customer to products, and services that compete with
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Respondent apparently admitted no legitimate interest in the domain names when it agreed to transfer the disputed domain names to Complainant, though Respondent did not follow though.
Respondent has a history of using domain names in which it has no legitimate
interest. This conclusion is supported by numerous WIPO Administrative Panel
Decisions including the following Panel decisions where Henry Chan, a principal
in Horoshiy, Inc. (or LaPorte Holdings d/b/a Horoshiy) was the Respondent: Lowen
Corporation d/b/a Lowen Sign Company v. Henry Chan WIPO
Case No. D2004-0430; Deloitte Touche Tohmatsu v. Henry Chan WIPO
Case No. D2003-0584; Cancer Treatment Centers of America, Inc. v. Henry
Chan WIPO Case No. D2003-0611; Lillian
Vernon Corporation v. Horoshiy, Inc. WIPO
Case No. D2004-0611; Wal-Mart Stores, Inc. v. Horoshiy, Inc. WIPO
Case No. D2004-0620; Medco Health Solutions, Inc. v. Horoshiy, Inc.
WIPO Case No. D2004-0625; Europйenne
de Traitement de l’Information v. Horoshiy, Inc. WIPO
Case No. D2004-0706; Dell Inc. v. Horoshiy, Inc. WIPO
Case No. D2004-0721; Hyatt Legal Plans, Inc. v. La Porte Holdings d/b/a
Horoshiy Claim Number: FA0410000340736; MB Financial Bank, N.A. v. LaPorte
Holdings, Inc. Claim Number: FA04110000362110.
Paragraph 4(c) of the Policy provides a list of possible circumstances under which the Respondent could have rights or legitimate interests in the disputed domain names. However, none of these circumstances apply to Respondent in using either of the disputed domain names in connection with a bona fide offering of goods or services, as Respondent is not commonly known by the domain name and is not making any legitimate non-commercial use of the domain names.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
The Panel agrees with Complainant that Respondent has purposefully selected
and registered the slightly misspelled domain names to divert consumers who
are attempting to locate Complainant’s website. See Pfizer Inc. v.
Mark Catroppa WIPO Case No. D2002-1100,
where the Panel concluded that in “using a common typo—the substitution
of the letter “a” for the letter “i”—the Respondent
intended to take advantage of any confusion created by misspelling in order
to divert potential customers” to its own website, an indication that
Respondent has acted in bad faith.
The Panel infers that Respondent is profiting from the unauthorized use of Complainant’s registered mark in its domain name. Such infringement is what the Policy was intended to remedy and is bad faith registration and use under Policy paragraph 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum November 21, 2002) finding that the Respondent registered and used the domain name in bad faith pursuant to Policy paragraph 4(b)(iv) because the Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum November 22, 2002) finding that if a Respondent profits from its diversionary use of a complainant’s mark when the domain name resolves to commercial websites and the Respondent fails to contest the Complaint, it may be concluded that the Respondent is using the domain name in bad faith pursuant to Policy paragraph 4(b)(iv).
The list of cases above demonstrate that Respondent routinely misappropriates
marks owned by others. As noted in Microcourt Limited v. Henry Chan,
WIPO Case No. D2004-0075 the unusually
high number of WIPO and other UDRP decisions against Mr. Henry Chan and the
entity of which he is a principal, Horoshiy, Inc., is demonstrative of a flagrant
pattern of bad faith conduct. See Royal Bank of Canada v. Henry Chan
WIPO Case No. D2003-0031; Federated
Western Properties, Inc. v. Henry Chan WIPO
Case No. D2003-0472; Yahoo, Inc, GeoCities, HotJobs.com Ltd., and Launch
v. Henry Chan, NAF Case No. FA00162050.
The Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
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 names <specialitystoreservices.com> and <specialtystoresservices.com>
be transferred to the Complainant.
Date: March 8, 2005