The Herff Jones Company of Indiana, Inc. v. St Kitts
Registry
Claim Number: FA0706001011293
Complainant is The Herff Jones Company of Indiana, Inc. (“Complainant”), represented by David
A. W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herfjones.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 18, 2007; the National Arbitration Forum received a hard copy of the Complaint June 19, 2007.
On June 21, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <herfjones.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@herfjones.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The disputed domain name that Respondent registered, <herfjones.com>, is confusingly similar to Complainant’s HERFF JONES mark.
2. Respondent has no rights to or legitimate interests in the <herfjones.com> domain name.
3. Respondent registered and used the <herfjones.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Herff Jones Company of Indiana, Inc., is engaged in the business of providing goods and services honoring academic excellence and athletic achievement. Complainant’s diverse line of commemorative items includes yearbooks, photography services, graduation materials, and jewelry as well providing robes to the United States Supreme Court. Complainant has numerous registered trademarks for its HERFF JONES mark, including Reg. No. 1,247,648, issued by the United States Patent and Trademark Office (“USPTO”) on August 9, 1983. Since April 1997, Complainant has utilized the <herff-jones.com> domain name as a promotional tool and source of Complainant’s product offerings.
Respondent registered the <herfjones.com> domain name on March 17, 2006. The domain name at issue currently resolves to a list of categorical links, which then direct Internet users to third-party websites offering goods and services in direct competition with Complainant.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant asserts rights in the HERFF JONES mark through
registration of the mark with the USPTO.
Panels have consistently found registration with a trademark authority
is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson,
FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark
registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA]
mark pursuant to Policy ¶ 4(a)(i).”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The minor variations between the disputed <herfjones.com> domain name and Complainant’s HERFF JONES mark are insufficient to dispel the confusing similarity between the disputed domain name and Complainant’s mark. Respondent’s <herfjones.com> domain name mimics Complainant’s HERFF JONES mark in its entirety, differing only by the omission of a single “f” and the inclusion of the generic top-level domain “.com.” Neither of these modifications adequately distinguishes the domain name at issue from Complainant’s HERFF JONES mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Similarly, in the analogous matter of State Farm Mutual Automobile Insurance Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000), the panel concluded the domain name <statfarm.com> was confusingly similar to the complainant’s STATE FARM mark based on the omission of a single “e.” Therefore, the disputed domain name in this case is also confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Based on the foregoing, the Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant must first set forth a prima facie case demonstrating Respondent’s lack of rights or legitimate interests in the domain name at issue before Respondent is required to proffer any evidence demonstrating rights or legitimate interests in the domain name. See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations). The Panel finds Complainant satisfied this initial threshold and the Panel now considers whether Respondent holds rights to or legitimate interests in the <herfjones.com> domain name.
As Respondent failed to respond to this proceeding, the Panel may infer Respondent does not possess rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel also examines the record to determine if the evidence sustains a finding of rights or legitimate interests for Respondent in the <herfjones.com> domain name.
Respondent has put forth no evidence and nothing in the record suggests that Respondent is commonly known by the <herfjones.com> domain name. The Panel notes Respondent’s WHOIS information reflects Respondent is commonly known by “St Kitts Registry.” Further there is nothing to indicate that Complainant has authorized Respondent to register domain names incorporating variations of Complainant’s HERFF JONES mark. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Accordingly, the Panel finds Respondent is not commonly known by the <herfjones.com> domain name pursuant to Policy ¶ 4(c)(ii).
Moreover, the Panel finds that the resolution of
Respondent’s <herfjones.com>
domain name to a directory of links connecting Internet users to other
third-party websites offering goods and services in direct competition with
those made available by Complainant under its HERFF JONES mark does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s use of the domain name in this
manner is likely for Respondent’s own commercial benefit, presumably generating
referral fees as links are clicked, and will not be considered as establishing
rights or legitimate interests in the <herfjones.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716
(Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii)
Complainant also alleges that Respondent acted in bad faith
in registering and using a domain name that contains Complainant’s protected
mark. Policy ¶ 4(b)(iii)
allows the Panel to find bad faith registration and use by Respondent when the
domain name at issue intentionally disrupts Complainant’s business. The Panel finds Respondent’s use of the <herfjones.com> domain name, and
by proxy, Complainant’s HERFF JONES mark, to direct Internet users to
Complainant’s competitors evidences bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).
See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs.,
FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) when the disputed domain name resolved to a website that displayed
commercial links to the websites of the complainant’s competitors); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference
that Respondent's purpose of registration and use was to either disrupt or
create confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Further, the Panel infers that, because the <herfjones.com> domain name links to third-party websites offering goods and services in direct competition with Complainant, Respondent is capitalizing on the confusion generated by the domain name’s resemblance to Complainant’s HERFF JONES mark for Respondent’s own commercial gain as Internet users pass through Respondent’s site, presumably generating click-through fees, in an attempt to reach Complainant. Use of the <herfjones.com> domain name in this manner provides additional evidence of bad faith registration and use by Respondent pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Accordingly, the Panel finds Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <herfjones.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 6, 2007.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum