Parke-Bell Ltd., Inc. v. Maltuzi LLC
Claim Number: FA0709001082265
Complainant is Parke-Bell Ltd., Inc. (“Complainant”), represented by Kevin
R. Haley, of Brann & Isaacson,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <touchfoclass.com>, registered with Nameking.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 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@touchfoclass.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <touchfoclass.com> domain name is confusingly similar to Complainant’s TOUCH OF CLASS mark.
2. Respondent does not have any rights or legitimate interests in the <touchfoclass.com> domain name.
3. Respondent registered and used the <touchfoclass.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Parke-Bell Ltd., Inc.,
conducts its business as “Touch of Class Catalog, Inc.” as a retailer of bed
and bath accessories, and other home furnishings. Complainant has retail store services, mail
order services, and online catalog services, and has registered the
<touchofclass.com> domain name for sales and marketing purposes. Complainant also holds a registered trademark
with the United States Patent and Trademark Office (“USPTO”) for the TOUCH OF
CLASS mark (Reg. No. 2,697,085 issued
Respondent, Maltuzi LLC, registered the <touchfoclass.com> domain name on
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.
Complainant has asserted rights to the TOUCH OF CLASS mark
through its USPTO trademark registration.
Many previous panels have recognized that, under the Policy,
registration of a mark with the USPTO confers rights in that mark to a
complainant. 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 Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum
Respondent’s <touchfoclass.com> domain name contains Complainant’s TOUCH OF CLASS mark in its entirety, but transposes the letters “o” and “f” in the “of” portion of Complainant’s mark. This transposition represents a common typographical error that Internet users may make, and does not distinguish the disputed domain name from Complainant’s mark. In addition, Respondent’s removal of the spaces between the words of Complainant’s mark, as well as the addition of the generic top-level domain (“gTLD”) “.com,” are irrelevant since all domain names must omit spaces and contain a top-level domain. Therefore, the Panel finds that Respondent’s <touchfoclass.com> domain name is confusingly similar to Complainant’s TOUCH OF CLASS mark pursuant to Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[E]limination of the spacing between words in domain names is dictated by technological factors and common practice among domain name registrants … Similarly, the addition of the generic top-level domain (gTLD) name ‘.com’ is likewise without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <touchfoclass.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly
known by the <touchfoclass.com>
domain name. Complainant has neither
licensed nor authorized Respondent to use the TOUCH OF CLASS mark, or any
variation thereof, in a disputed domain name.
Furthermore, the WHOIS information identifies Respondent as “Maltuzi
LLC,” and the Panel accepts Complainant’s contention that Respondent does not
conduct business under the TOUCH OF CLASS mark, nor does Respondent own any
trademark rights to the mark. The Panel
finds no other evidence in the record indicating that Respondent is commonly
known by the disputed domain name.
Therefore, the Panel concludes that Respondent is not commonly known by
the <touchfoclass.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat.
Arb. Forum July 7, 2006) (concluding that the
respondent was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Respondent is using the <touchfoclass.com> domain name to display hyperlinks advertising products that compete with Complainant’s business. Complainant has alleged that these links reroute Internet users to the websites of Complainant’s competitors. Such use of the disputed domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did 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)).
In addition, Respondent has posted adult-oriented material to the website that resolves from the <touchfoclass.com> domain name. The Panel finds this to be further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”); see also McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously stated, Respondent
is using the <touchfoclass.com>
domain name to display hyperlinks advertising products that compete with
Complainant’s business. Furthermore,
when Internet users click on these hyperlinks, they are rerouted to the
websites of Complainant’s competitors.
This use of the disputed domain name is likely to disrupt Complainant’s
business by diverting potential customers to Complainant’s competitors. Therefore, the Panel finds that Respondent
registered and is using the <touchfoclass.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., 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 David Hall Rare
Coins v.
Complainant has alleged that Respondent is attempting to
attract, for commercial gain, Internet users to Respondent’s website that
resolves from the <touchfoclass.com>
domain name. Complainant has further
alleged that Respondent receives click-through fees for rerouting Internet
users to the websites of Complainant’s competitors. The Panel therefore finds that Respondent
registered and is using the <touchfoclass.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum
Respondent’s website that resolves from the <touchfoclass.com> domain name
contains adult-oriented material.
Therefore, the Panel finds that Respondent registered and is using the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See
Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of
the domain name to a pornographic site is itself certainly consistent with the
finding that the Domain Name was registered and is being used in bad faith.”); see also Wells Fargo & Co. v.
Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith).
Respondent’s <touchfoclass.com>
domain name slightly misspells Complainant’s TOUCH OF CLASS mark by
transposing the letters “o” and “f” in the “of” portion of Complainant’s
mark. In Dermalogica, Inc. v. Domains to Develop, FA
175201 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <touchfoclass.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 7, 2007
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