Official Pillowtex LLC v. Chen Xianshang
Claim Number: FA0712001118858
Complainant is Official Pillowtex LLC (“Complainant”), represented by Kathryn
E. Smith, of Wood, Herron & Evans, LLP, 2700
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <royalvelvet.com>, registered with Moniker Online Services, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2007.
On December 14, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <royalvelvet.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 January 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 23, 2008 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.
On January 31, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <royalvelvet.com> domain name is identical to Complainant’s ROYAL VELVET mark.
2. Respondent does not have any rights or legitimate interests in the <royalvelvet.com> domain name.
3. Respondent registered and used the <royalvelvet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Official Pillowtex LLC, has used the ROYAL VELVET mark in connection their long-time sales of the ROYAL VELVET brand bedding, bath, kitchen and table products and accessories. Complainant owns several registrations for the ROYAL VELVET mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,325,800 issued March 7, 2000).
Respondent registered the <royalvelvet.com> domain name on April 10, 2004. Respondent’s disputed domain name resolves to a website containing links to third-party websites, some of which offer products in direct competition with Complainant.
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.
Through registration with the USPTO, Complainant has
established rights in the ROYAL VELVET mark pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
Complainant contends that Respondent’s <royalvelvet.com> domain name is identical to
Complainant’s ROYAL VELVET mark. Respondent’s
domain name contains Complainant’s mark in its entirety, omits the space and
adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that omitted spacing and the
use of a gTLD are irrelevant in distinguishing a disputed domain name from a
complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July
7, 2000) (finding <pomellato.com> identical to the complainant’s mark
because the generic top-level domain (gTLD) “.com” after the name POMELLATO is
not relevant); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (
“[I]t is a well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <royalvelvet.com> domain name. Once Complainant make a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case Complainant has established a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Due to the failure of Respondent to respond to the Complaint, the Panel assumes that Respondent lacks rights and legitimate interests in the disputed domain name. 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 Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). However, the Panel chooses to examine the evidence against the applicable Policy ¶ 4(c) elements before making a final determination about Respondent’s rights and legitimate interests.
Complainant asserts that Respondent is neither commonly known by the <royalvelvet.com> domain name, nor licensed to register domain names using the ROYAL VELVET mark. The Respondent’s WHOIS information lists Respondent as “Chen Xianshang,” which provides no affirmative evidence that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that without any affirmative evidence of being commonly known by the <royalvelvet.com> domain name, Respondent is not commonly known by the disputed domain name pursuant to 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 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 Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is using the <royalvelvet.com> domain name to attract unknowing Internet users to the associated website containing various links to products in direct competition with Complainant. The Panel finds that intentionally diverting Internet users to a competing website by using a domain name which is identical to a complainant’s mark is 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <royalvelvet.com> domain name in order to intentionally attract Internet users to its website by creating the possibility of confusion that the disputed domain name is associated with Complainant, then offering goods which are in direct competition with Complainant. The Panel finds such use of the disputed domain name constitutes bad faith registration and use 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 TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
In addition, Respondent’s use of the <royalvelvet.com> domain name to directly compete with Complainant is further evidence of bad faith. The Panel finds that a registered domain name used primarily to disrupt the business prospects of a competitor is a demonstration of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
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 <royalvelvet.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 14, 2008
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