Sterling Jewelers Inc. v. Sarayut Pornchaivorakul
Claim Number: FA0802001152991
Complainant is Sterling Jewelers Inc. (“Complainant”), represented by John
J. Cunniff, of Hahn Loeser & Parks, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rogersjewelers.org>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2008.
On February 22, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rogersjewelers.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 February 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 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@rogersjewelers.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <rogersjewelers.org> domain name is identical to Complainant’s ROGERS JEWELERS mark.
2. Respondent does not have any rights or legitimate interests in the <rogersjewelers.org> domain name.
3. Respondent registered and used the <rogersjewelers.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sterling Jewelers Inc., has used the ROGERS JEWELERS mark since 1910 to promote its jewelry business. Complainant owns jewelry stores that conduct business under the name ROGERS JEWELERS, and also registered the <rogersjeweler.com> domain name on May 25, 2000 to conduct business online. Complainant’s use of the ROGERS JEWELERS mark in commerce has been continuous, and Complainant has spent many years advertising and promoting the mark such that is has become very well-known among customers shopping for jewelry products.
Respondent, Sarayut Porchaivorakul, registered the <rogersjewelers.org> domain name on December 22, 2007. Respondent is using the disputed domain name to provide information on Complainant’s business, as well as to display advertisements to products unrelated to Complainant’s business.
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 does not hold a registered trademark for the ROGERS JEWELERS mark with any governmental authority. However, such a registration is not necessary for Complainant to establish rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Instead, Complainant can establish sufficient secondary meaning in the mark to confer common law rights pursuant to Policy ¶ 4(a)(i). See Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant alleges such secondary meaning in the ROGERS JEWELERS mark through its extensive use of the mark in commerce since 1910. Some of Complainant’s stores conduct business under the ROGERS JEWELERS name, and Complainant hosts a website at the <rogersjeweler.com> domain name to advertise its products. Complainant has certainly spent significant time in developing the recognition and goodwill associated with its ROGERS JEWELERS mark among customers shopping for jewelry products. Therefore, the Panel finds that Complainant has established common law rights in the ROGERS JEWELERS mark for the purposes of Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <rogersjewelers.org>
domain name contains Complainant’s ROGERS JEWELERS mark in its entirety, but
removes the space and adds the generic top-level domain (“gTLD”) “.org.” Since spaces are impermissible in domain
names, and all domain names require a top-level domain, neither of these
changes are relevant to a Policy ¶ 4(a)(i)
analysis. Therefore, the Panel concludes
that Respondent’s <rogersjewelers.org>
domain name is identical to Complainant’s ROGERS JEWELERS mark pursuant to
Policy ¶ 4(a)(i).
See Bond & Co. Jewelers, Inc. v.
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 <rogersjewelers.org> 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 alleges that Respondent is not commonly known by the <rogersjewelers.org> domain name, and the Panel tends to agree. The WHOIS information identifies Respondent as “Sarayut Pornchaivorakul,” and Respondent’s failure to respond to the Complaint demonstrates a lack of evidence that Respondent may be commonly known by the disputed domain name. Consequently, the Panel concludes that Respondent is not commonly known by the <rogersjewelers.org> domain name, and therefore lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is using the <rogersjewelers.org> domain name to display information about Complainant’s business without Complainant’s authorization. Respondent is also using the disputed domain name to display advertisements for products unrelated to Complainant’s business. The Panel finds neither of these uses to be in connection with 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s use of the <rogersjewelers.org> domain name is likely to cause confusion among customers searching for Complainant’s jewelry products. Because the website resolving from the disputed domain name contains information about Complainant’s business, customers are likely to mistakenly believe that Complainant is the source of that information, or else sponsors or endorses Respondent’s business. Respondent’s use of the unrelated advertisements indicates that Respondent is also attempting to profit, presumably by collecting click-through fees. The Panel finds that Respondent’s attempt to profit off the goodwill associated with Complainant’s ROGERS JEWELERS mark indicates Respondent’s bad faith registration and use of the identical <rogersjewelers.org> domain name pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
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 <rogersjewelers.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: April 8, 2008
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