The Orvis Company Inc. v. Adtelect Consulting Inc.
Claim Number: FA0707001045274
Complainant is The Orvis Company Inc. (“Complainant”), represented by Sandra
M. Koenig, of Fay Sharpe LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orvisshoestore.com>, registered with Godaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <orvisshoestore.com> domain name is confusingly similar to Complainant’s ORVIS mark.
2. Respondent does not have any rights or legitimate interests in the <orvisshoestore.com> domain name.
3. Respondent registered and used the <orvisshoestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used since 1856, the ORVIS mark in connection with a variety of sporting goods and services, including the production and sale of shoes. Complainant first registered the ORVIS mark specifically for shoes in 1975 with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,023,535 issued October 28, 1975).
Respondent’s <orvisshoestore.com> domain name was
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. 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 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.
Respondent’s <orvisshoestore.com> domain name fully
incorporates Complainant’s ORVIS mark and includes the generic terms “shoe” and
“store,” which correspond to the services offered under Complainant’s
mark. The addition of generic terms that
correspond to the goods or services offered under a complainant’s mark do not
negate the elements of confusing similarity.
As such, the Panel finds pursuant to Policy ¶ 4(a)(i)
that Respondent’s disputed domain name is confusingly similar to Complainant’s
See Sony Kabushiki Kaisha v. 0-0
Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005) (“A general
rule under Policy ¶ 4(a)(i) is that a domain name is
confusingly similar to a third-party mark where the domain name fully
incorporates the mark and simply adds additional words that correspond to the
goods or services offered by the third party under the mark.”); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity). Moreover, the Panel finds that the addition of the
generic top-level domain “.com” is not relevant in a confusing similarity
analysis. See Pomellato
S.p.A v. Tonetti,
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must initially make out a prima
facie case that Respondent has no rights or legitimate interests in the
domain name at issue. See VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the
Complaint. The Panel thus presumes that
Respondent has no rights or legitimate interests in the <orvisshoestore.com>
domain name, but will still consider
all the available evidence with respect to the factors listed in Policy ¶ 4(c)
before making this determination. See Am.
Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Nowhere in the record, including Respondent’s WHOIS information, does it indicate that Respondent is or ever has been commonly known by the <orvisshoestore.com> domain name. Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The disputed domain name contains Complainant’s entire mark
and offers goods and services from itself and from third-party online retail
stores that compete with those goods and services offered under the
Complainant’s mark. The Panel finds that
this is not a bona fide offering of goods and services or a
legitimate or noncommercial fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)
respectively. See eBay Inc. v. Hong, D2000-1633 (WIPO
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <orvisshoestore.com>
domain name to link third-party online
retail stores services that sell shoes that compete with those offered under
Complainant’s ORVIS mark. Therefore, the
Panel finds that Respondent registered and is now using the disputed domain name
in bad faith, primarily for the purpose of disrupting Complainant’s business
pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Also, Respondent’s <orvisshoestore.com> domain name offers goods, namely shoes, that compete with the shoes offered under Complainant’s ORVIS mark. Moreover, the disputed domain name displays links to third-party online retail store that offer goods and services that are similar to those offered under Complainant’s mark. The Panel finds this to be evidence that Respondent is intentionally attempting to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark and is as such further evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel concludes that Complainant has 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 <orvisshoestore.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 2, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum