national arbitration forum

 

DECISION

 

Camuto Consulting, Inc. v. Belize Domain WHOIS Service Lt

Claim Number: FA0708001059470

 

PARTIES

Complainant is Camuto Consulting, Inc. (“Complainant”), represented by Jorge Arciniega, of McDermott Will & Emery LLP, 2049 Century Park East, Suite 3800, Los Angeles, CA 90067.  Respondent is Belize Domain WHOIS Service Lt (“Respondent”), Suite 5, Garden City Plaza, Mountainview Boulevard, City of Belmopan 0000 BZ.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vincecamuto.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 9, 2007.

 

On August 9, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <vincecamuto.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On August 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 30, 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@vincecamuto.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <vincecamuto.com> domain name is identical to Complainant’s VINCE CAMUTO mark.

                                                                                                    

2.      Respondent does not have any rights or legitimate interests in the <vincecamuto.com> domain name.

 

3.      Respondent registered and used the <vincecamuto.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Camuto Consulting, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the VINCE CAMUTO mark (Reg. No. 3,161,347 issued October 24, 2006, filed February 24, 2005).  Complainant has used the VINCE CAMUTO mark in connection with the distribution and sale of various footwear goods, which are self-named for the head designer, Vince Camuto.  Complainant has used the VINCE CAMUTO mark for the sale of footwear goods since as early as February 2005.

 

Respondent registered the <vincecamuto.com> domain name on August 18, 2005.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which displays a directory of links to unrelated third-party websites.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the VINCE CAMUTO mark through registration of the mark with the USPTO.  While Respondent’s registration of the <vincecamuto.com> domain name predates Complainant’s trademark registration, the Panel finds that Respondent’s rights in the VINCE CAMUTO mark date back to the date of filing for the registered trademark, which predates Respondent’s registration of the disputed domain name.  Therefore, the Panel finds that Complainant has established rights in the VINCE CAMUTO mark under Policy ¶ 4(a)(i).  See Hershey Co., Hershey Chocolate & Confectionery Corp. & Hershey Canada Inc. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (“Complainant asserts rights in the KISSES trademark through registration of the mark with the…USPTO….  As such rights date back to the filing date of the trademark application and predate Respondent’s registration…Complainant has established rights in the KISSES mark for purposes of satisfying Policy ¶ 4(a)(i).”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).

 

Respondent’s <vincecamuto.com> domain name is identical to Complainant’s VINCE CAMUTO mark as it uses the mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” to the mark.  As the Panel held in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the addition of a gTLD is irrelevant to the determination of whether a mark is identical.  Therefore, the Panel finds that Respondent’s <vincecamuto.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights or legitimate interests in the <vincecamuto.com> domain name.  Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to show that it has rights or legitimate interests in the mark under Policy ¶ 4(a)(ii).  See Washington CeaseFire v. Private Registration, FA 985159 (Nat. Arb. Forum June 27, 2007) (“Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Caterpillar Inc. v. Ravo, FA 991824 (Nat. Arb. Forum July 9, 2007) (“Complainant having made a prima facie case that Respondent lacks rights or legitimate interests in the domain name, the burden shifts to Respondent to show he does have rights or legitimate interests.”).

 

The Panel may assume that Respondent has no rights or legitimate interests here because Respondent failed to respond to the Complaint.  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 BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).  However, the Panel will consider all evidence before determining whether Respondent has rights or legitimate interests in the <vincecamuto.com> domain name under Policy ¶ 4(c).

 

Complainant argues that Respondent is using the <vincecamuto.com> domain name to display a directory of links to unrelated third-party websites, presumably in exchange for referral fees.  The Panel finds that Respondent’s use of the disputed domain name to display links to unrelated third-parties in order to receive referral fees is not a use in connection with 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).  See 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); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Finally, Respondent offers no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <vincecamuto.com> domain name.  Respondent’s WHOIS information identifies Respondent as “Belize Domain WHOIS Service Lt.”  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <vincecamuto.com> domain name, which is identical to Complainant’s VINCE CAMUTO mark, to redirect Internet users to Respondent’s website displaying links to unrelated third-party websites.  The Panel finds that Internet users seeking Complainant’s goods under the VINCE CAMUTO mark may become confused as to Complainant’s affiliation with the disputed domain name.  Presumably, Respondent is profiting from this confusion through referral fees.  The Panel finds that such use by Respondent constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <vincecamuto.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 20, 2007

 

 

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