Pier 1 Imports, Inc., Pier 1
Licensing, Inc., and Pier 1 Services Company v. Domain Manager
Claim Number: FA0710001089060
PARTIES
Complainant is Pier 1 Imports, Inc., Pier 1 Licensing, Inc., and Pier 1
Services Company, (collectively, “Complainant”), represented by Valerie
Verret, of Baker Botts L.L.P., 2001 Ross Avenue, Suite
600, Dallas, TX 75201. Respondent is Domain
Manager (“Respondent”), Loch Promenade, Douglas,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pier1imports.us>, registered with Moniker
Online Services, Llc.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On
On October 16, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 5, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On
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. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <pier1imports.us> domain name is identical to Complainant’s PIER 1 IMPORTS mark.
2.
Respondent does not have any rights or
legitimate interests in the <pier1imports.us>
domain name.
3.
Respondent registered and used the <pier1imports.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant and its predecessors-in-interest
have continuously used the PIER 1 IMPORTS mark in connection with retail store
services and home furnishings since 1965.
Complainant currently holds a registration of the PIER 1 IMPORTS mark
with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 948,076
issued November 28, 1972) and the United Kingdom Intellectual Property Office
(“UKIPO”) (Reg. No. 2,067,158 issued May 15, 1998). In addition, Complainant promotes and sells a
variety of household products and goods online at the <pier1imports.com>
domain name.
Respondent registered the <pier1imports.us> domain name on May
29, 2006 and it currently resolves to a website that provides links to adult
oriented websites and various third-party retailers of furniture and home
accessories, a majority of which compete with the products offered under
Complainant’s mark.
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 the 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 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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant has sufficiently established its
rights in the PIER 1 IMPORTS mark through registration with the USPTO and UKIPO
pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
UDRP does not require that the mark be registered in the country in which the
respondent operates; therefore it is sufficient that the complainant can
demonstrate a mark in some jurisdiction).
Respondent’s <pier1imports.us> domain name is
identical to Complainant’s PIER 1 IMPORTS mark except for the inclusion of the
country-code top-level domain (“ccTLD”) “.us.”
It is well-established that the inclusion of a ccTLD is not relevant to
a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that pursuant to
Policy ¶ 4(a)(i), Respondent’s disputed domain name is
identical to Complainants’ mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec.
4, 2002) (finding that because the addition of the country-code “.us” fails to
add any distinguishing characteristic to the domain name, the <tropar.us>
domain name is identical to the complainant’s TROPAR mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum
The Panel concludes that Complainant has
satisfied Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001)
(finding that even when the respondent does file a response, the complainant
must allege facts, which if true, would establish that the respondent does not
have any rights or legitimate interests in the disputed domain name). The Panel
finds that Complainant has established a prima
facie case and that the burden is thus shifted to Respondent to show that
it does have rights or a legitimate interest in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion because
this information is “uniquely within the knowledge and control of the
respondent”).
No Response has
been submitted to the Complaint.
Therefore, the Panel presumes that Respondent has no rights or
legitimate interests in the <pier1imports.us>
domain name, however, the Panel will still
examine the record in consideration of the factors listed under Policy ¶ 4(c). See
CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the
respondent’s failure to produce requested documentation supports a finding for
the complainant); see also Law Soc’y of Hong Kong v. Domain Strategy,
Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not
obligated to participate in a domain name dispute . . . but the failure to
participate leaves a respondent vulnerable to the inferences that flow
naturally from the assertions of the complainant and the tribunal will accept
as established assertions by the complainant that are not unreasonable.”).
Nowhere in Respondent’s WHOIS information
does it indicate that Respondent is or ever was commonly known by the <pier1imports.us> domain name. Further, Complainant has not granted
permission to Respondent to use the PIER 1 IMPORTS mark in any way and no
evidence has been provided that indicates that Respondent owns or is the
beneficiary of a trademark reflected in the disputed domain name. As a result, the Panel finds that Respondent
is not commonly known by the <pier1imports.us>
domain name pursuant to Policy ¶ 4(c)(iii) or the beneficiary of a trade or
service mark that is identical to the disputed domain name pursuant to Policy ¶
4(c)(i). See 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 UDRP ¶ 4(c)(ii) does not apply); 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).
Respondent’s <pier1imports.us> domain name contains
Complainant’s mark in its entirety and resolves to a website that provides
links to adult-oriented websites and various third-party retailers of furniture
and home accessories, a majority of which compete with the products offered
under Complainant’s mark. The Panel
finds this to be neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(ii)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Isleworth Land Co. v. Lost
In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding that the respondent’s use of its domain name to link unsuspecting
Internet traffic to an adult-oriented website, containing images of scantily
clad women in provocative poses, did not constitute a connection with a bona
fide offering of goods or services or a noncommercial or fair use); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan.
11, 2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services).
The Panel concludes that Complainant has
satisfied Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Respondent’s <pier1imports.us> domain name resolves to a website containing links to various third-parties who offer products in competition with those offered under Complainant’s mark. The Panel finds this to establish Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to [UDRP] Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Furthermore, Respondent is presumed to be commercially
benefiting from the <pier1imports.us>
domain name for each misdirected
Internet user to a third-party website through the use of click-through
fees. The Panel finds this to be further
evidence of Respondent’s bad faith registration and use 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
[UDRP] 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 Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to UDRP ¶ 4(b)(iv)).
Lastly, the <pier1imports.us> domain name resolves to a website that
also contains links to adult-oriented conduct.
The Panel considers this to be evidence of bad faith registration and
use as well 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 Ty, Inc.
v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent
contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith).
The Panel concludes that Complainant has
satisfied Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <pier1imports.us> domain name be TRANSFERRED from Respondent to
Complainant.
Dated: November 26, 2007
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