Euromarket Designs, INC (d/b/a Crate & Barrel) v. Whois Protection Service LLC c/o Whois Protection
Claim Number: FA0801001140398
Complainant is Euromarket Designs, INC (d/b/a Crate & Barrel) (“Complainant”), represented by Niels Lehmann, SE. Respondent is Whois Protection Service LLC c/o Whois Protection (“Respondent”), KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <crateandbarreloutlet.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 25, 2008; the National Arbitration Forum received a hard copy of the Complaint January 28, 2008.
On January 28, 2008, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <crateandbarreloutlet.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 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 postmaster@crateandbarreloutlet.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <crateandbarreloutlet.com>, is confusingly similar to Complainant’s CRATE AND BARREL mark.
2. Respondent has no rights to or legitimate interests in the <crateandbarreloutlet.com> domain name.
3. Respondent registered and used the <crateandbarreloutlet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Euromarket Designs, INC (d/b/a Crate & Barrel), operates a chain of retail stores that specialize in offering house wares, furniture and home accessories under its CRATE AND BARREL mark. Complainant registered its CRATE AND BARREL mark with the United States Patent and Trademark Office (“USPTO”) on December 15, 1987, (Reg. No. 1,469,515).
Respondent registered the <crateandbarreloutlet.com> domain name November 17, 2005. Respondent’s disputed domain name resolves to a website which displays links to third-party websites. Some of these third-party websites are operated by Complainant’s competitors.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 provided evidence of the registration of its
CRATE AND BARREL mark with the USPTO.
The Panel finds that this registration adequately establishes
Complainant’s rights in the CRATE AND BARREL mark pursuant to Policy ¶ 4(a)(i). See
The disputed domain name that Respondent registered,<crateandbarreloutlet.com>, fully incorporates Complainant’s CRATE AND BARREL mark with the addition of the generic term “outlet,” and the generic top-level domain (“gTLD”) “.com.” The mere addition of a generic term and the gTLD “.com” are not sufficient to distinguish Respondent’s disputed domain name from Complainant’s mark. Therefore, the Panel finds that Respondent’s <crateandbarreloutlet.com> domain name is confusingly similar to Complainant’s CRATE AND BARREL mark pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is ... without legal significance since use of a gTLD is required of domain name registrants ....").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or
legitimate interests in the disputed domain name. After Complainant presents a prima facie case supporting these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel
finds that Complainant presented a sufficient prima facie case to support its allegations. Respondent failed to submit a response to
these proceedings. Therefore, the Panel
may assume that Respondent does not have rights to or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, this Panel examines the record to determine
whether evidence before the Panel suggests that Respondent has such rights to or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). 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 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.”).
The disputed domain name, <crateandbarreloutlet.com>, resolves to a website that displays links to third-party websites, some of which offer products and services that directly compete with Complainant’s business. Respondent presumably receives payment for displaying these links through click-through fees. The Panel finds this diversionary use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008) (“Respondent’s…domain names all resolve to parked websites featuring links to third-party venture capital and financial websites that offer services in competition with Complainant, and Respondent accrues click-through fees from these links. The Panel finds that such use does not constitute either 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The WHOIS information does not indicate that Respondent is
commonly known by the <crateandbarreloutlet.com>
domain name. Additionally, the record
indicates that Complainant has not authorized Respondent to use its CRATE AND
BARREL mark. Therefore, the Panel finds
Respondent is not commonly known by the <crateandbarreloutlet.com>
domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website that displays links to third-party websites offering products and services that attempt to directly compete with Complainant’s house wares, furniture and home accessories business. The Panel finds that Respondent’s use of a website offering links to Complainant’s competitor’s constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent presumably receives payment for displaying links
on the website resolving from the confusingly similar <crateandbarreloutlet.com> domain
name in the form of click-through fees.
The Panel finds that Respondent is attempting to profit from the
goodwill associated with Complainant’s mark, which is evidence of bad faith
registration and use 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 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 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.’”).
The Panel finds that Complainant 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 <crateandbarreloutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 12, 2008.
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