S. Rothschild & Co., Inc. v. Bao Shui Chen
Claim Number: FA0710001104327
Complainant is S. Rothschild & Co., Inc. (“Complainant”), represented by Barry
Werbin, of Herrick, Feinstein LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <larrylevinecoats.com>, registered with Willamettenames.com LLC.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On November 7, 2007, Willamettenames.com LLC confirmed by e-mail to the National Arbitration Forum that the <larrylevinecoats.com> domain name is registered with Willamettenames.com LLC and that Respondent is the current registrant of the name. Willamettenames.com LLC has verified that Respondent is bound by the Willamettenames.com LLC 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 November 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 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 firstname.lastname@example.org 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 <larrylevinecoats.com> domain name is confusingly similar to Complainant’s LARRY LEVINE mark.
2. Respondent does not have any rights or legitimate interests in the <larrylevinecoats.com> domain name.
3. Respondent registered and used the <larrylevinecoats.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, S. Rothschild & Co., Inc., is a prominent United States outerwear company known for its manufacturing and design of coats, jackets and other types of women’s and children’s outerwear and apparel. Complainant commenced use of the LARRY LEVINE mark in 1965 and has been in continuous use since that time. Complainant has also registered the LARRY LEVINE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,744,606 issued January 5, 1993).
Respondent registered <larrylevinecoats.com> on October 19, 2007. The disputed domain name currently resolves to a website, which promotes and sells competing outerwear.
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 received a trademark for the LARRY LEVINE
mark from the USPTO. The Panel finds
that registration with the USPTO demonstrates rights in the mark sufficient to
satisfy Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainant contends that <larrylevinecoats.com> is confusingly similar with its LARRY
LEVINE mark. Complainant asserts that
the disputed domain name incorporates its mark in its entirety, removing a
space, adding the generic word “coats,” which relates to Complainant’s
business, and the generic top-level domain (“gTLD”) “.com.” The Panel finds the disputed domain name to
be confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Gurney’s
Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth evidence that it does possess rights to or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case in the matter at hand. 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”).
Respondent has failed to submit a response to the
Complaint. Therefore, the Panel is
entitled to presume that Respondent lacks all rights and legitimate interests
in the disputed domain name. See Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum
The disputed domain name, <larrylevinecoats.com>, currently resolves to a website that advertises and provides links to the goods of Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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).”); see also Bank of Am. Corp. v. Northwest. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent is not commonly known by
the <larrylevinecoats.com> domain
name and is not authorized to use Complainant’s LARRY LEVINE mark in any
way. Nowhere in the record does it indicate that Respondent is or ever
was commonly known by the <larrylevinecoats.com>
domain name. The Panel finds
that Respondent has not established rights to or legitimate interests in the disputed
domain name in accordance with Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent currently utilizes the disputed domain name, <larrylevinecoats.com>, to resolve to a website that
provides links to Complainant’s competitor’s products. The Panel finds such use to establish that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat.
Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a website containing
commercial links to the websites of the complainant’s competitors represented
bad faith registration and use under Policy ¶ 4(b)(iii)); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Moreover, the Panel presumes Respondent is benefiting
through the use of click-through fees from these links to Complainant’s
competitors. Internet users searching
for Complainant’s LARRY LEVINE mark may be easily confused by the disputed
domain name, which results in additional traffic to Respondent’s websites. The Panel finds such confusion for commercial
gain to be further evidence of Respondent’s bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad
faith registration and use under Policy ¶ 4(b)(iv) where the respondent was
diverting Internet users searching for the complainant to its own website and
likely profiting from click-through fees); see also Qwest
Comm’ns Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum
The Panel finds 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 <larrylevinecoats.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: December 26, 2007
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