Winmark Corporation v. Linda Pinizzotto
Claim Number: FA1910001869043
Complainant is Winmark Corporation (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Linda Pinizzotto (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <style-encoremississauga.com>, registered with DotAlliance Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2019; the Forum received payment on October 30, 2019.
On November 5, 2019, DotAlliance Inc. confirmed by e-mail to the Forum that the <style-encoremississauga.com> domain name is registered with DotAlliance Inc. and that Respondent is the current registrant of the name. DotAlliance Inc. has verified that Respondent is bound by the DotAlliance Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@style-encoremississauga.com. Also on November 6, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Winmark Corporation (“Winmark”), is a family of widely-recognized retail-resale brands, including STYLE ENCORE. Winmark’s stores offer new and used women’s clothing and accessories and are operated by local franchisees. Complainant has rights in the trademark STYLE ENCORE through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”) dating back to 2013 and 2014 respectively. Complainant also owns the domain name <style-encore.com> and its franchisees use domain names which are a standardized variation of the format <style-encore[geographic term].com> including <style-encoremaplegrove.com> and <style-encoreoverlandpark.com>. Respondent’s <style-encoremississauga.com> domain name, registered on March 22, 2019, is confusingly similar to Complainant’s STYLE ENCORE mark as it incorporates the mark in its entirety, merely adding a hyphen, the geographical term “Mississauga”, and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <style-encoremississauga.com> domain name. Respondent is not authorized or licensed to use Complainant’s STYLE ENCORE mark and is not commonly known by the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that is merely a static registrar parking page.
Respondent registered and uses the <style-encoremississauga.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting Internet users to a competing website. Furthermore, Complainant fails to make an active use of the disputed domain name. In addition, Respondent failed to respond to Complainant’s cease and desist letter. Finally, Respondent had actual knowledge of Complainant’s rights in the STYLE ENCORE mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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."
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 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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant argues that Respondent’s <style-encoremississauga.com> domain name is confusingly similar to the STYLE ENCORE mark, as the name incorporates the mark in its entirety, along with a hyphen, a geographic indicator, and a gTLD. Additions of geographic terms, hyphens and a gTLD are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”) Complainant argues that Respondent merely adds a hyphen, the geographic term “Mississauga”, and a “.com” gTLD to Complainant’s STYLE ENCORE mark. The Panel therefore determines that the <style-encoremississauga.com> domain name is confusingly similar to the STYLE ENCORE mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <style-encoremississauga.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STYLE ENCORE mark in any way. In considering this issue, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the disputed domain name as “Linda Pinizzotto,” and no information on the record indicates Respondent is known otherwise or was authorized to register a domain name incorporating Complainant’s STYLE ENCORE mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <style-encoremississauga.com> domain name.
Complainant also argues that Respondent’s lack of rights or legitimate interests in the <style-encoremississauga.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Specifically, Complainant contends that Respondent fails to make an active use of the disputed domain name. Failure to make an active use of a domain name does not support a finding of a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”); see also Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”) Complainant submits a screenshot indicating that the disputed domain name resolves only to a static parking page from Respondent’s registrar. The Panel therefore finds that Respondent does not have rights or legitimate interest in the <style-encoremississauga.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that, in light of the fame and notoriety of Complainant’s STYLE ENCORE mark, it is inconceivable that Respondent could have registered the <style-encoremississauga.com> domain name without actual or constructive knowledge of Complainant’s rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent typically declines to find bad faith as a result of constructive knowledge unless both parties are based in a jurisdiction where such theory of law applies. See UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") The Panel agrees with Complainant, however, that it is highly likely that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Complainant asserts that Respondent’s registration of the disputed domain name and, specifically, its use of the identical domain name format used by Complainant’s franchisees (i.e., <style-encore[geographic term].com>) indicates that it had actual knowledge of Complainant’s rights in the STYLE ENCORE mark. The Panel agrees and finds it more likely than not that Respondent had actual knowledge of Complainant’s rights in the STYLE ENCORE mark and thus that it registered the <style-encoremississauga.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered and uses the <style-encoremississauga.com> domain name in bad faith. It asserts that Respondent fails to make an active use of, and is passively holding the disputed domain name. Failure to make an active use a domain name is often recognized as evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA 1532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) As noted previously, Complainant has submitted evidence that the disputed domain name resolves only to a static parking page for Respondent’s registrar and that it has done so for the eight-plus months since the disputed domain was registered. Therefore, the Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant further contends that Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which redirect users to a competing webpage. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing websites can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv). See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”) Here, Complainant contends that Respondent’s disputed domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s website which “directly competes against Winmark for traffic”. The Panel questions whether the term “competitor” in Policy ¶ 4(b)(iii) was intended to apply to a situation where no substantive content appears at the website of a disputed domain name and the domain competes merely for web traffic as opposed to the actual offering of goods or services. In fact, the cases cited by Complainant involve fact patterns where an accused website was engaged in the offering of competing goods or services and was not merely parked or non-resolving. However, this question need not be answered here as bad faith has been found on other grounds.
Finally, Complainant asserts, under Policy ¶ 4(b)(ii), that “at the time the name was registered, Respondent knew of Winmark’s rights and engaged in a pattern of such registration to prevent Winmark from using the Domain Name.” However, no evidence of any pattern by Respondent has been presented and the Panel is not prepared to find that registration of a single disputed domain name constitutes a “pattern” under this sub-section of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <style-encoremississauga.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 3, 2019
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