The Convertible Castle, Inc. d/b/a Bernie & Phyl's Furniture v. Domain Administration Limited c/o David Halstead
Claim Number: FA0803001163840
Complainant is The Convertible Castle, Inc. d/b/a Bernie
& Phyl's Furniture (“Complainant”), represented by Kevin C. Cain, of Peabody & Arnold LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bernieandphyl.com> and <berniephyl.com>, registered with Enom, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 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@bernieandphyl.com and postmaster@berniephyl.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bernieandphyl.com> and <berniephyl.com> domain names are confusingly similar to Complainant’s BERNIE AND PHYL’S FURNITURE mark.
2. Respondent does not have any rights or legitimate interests in the <bernieandphyl.com> and <berniephyl.com> domain names.
3. Respondent registered and used the <bernieandphyl.com> and <berniephyl.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an office and home furniture retailer with
five showrooms and an online store at the website that resolves from the
<bernieandphyls.com> domain name.
Complainant registered the BERNIE & PHYL’S FURNITURE mark with the
United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <bernieandphyl.com>
domain name
on
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.
By registering the BERNIE & PHYL’S FURNITURE mark with
the USPTO, Complainant has established rights to the mark under 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 Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The <bernieandphyl.com> and <berniephyl.com> domain names
incorporate the main terms of Complainant’s mark, namely “bernie” and
“phyl.” In WestJet
Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr.
20, 2001), the panel found that the <westjets.com> domain name was
confusingly similar to the complainant’s mark, where the complainant held the
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent has neither rights nor legitimate interests in the disputed domain names. Complainant has the initial burden of showing that Respondent does not have any rights or legitimate interests in the disputed domain names. When Complainant has made a prima facie case, the burden shifts to Respondent. The Panel concludes that Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii). 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to respond to the Complaint allows the Panel to presume that Respondent lacks all rights and legitimate interests in the <bernieandphyl.com> and <berniephyl.com> domain names. The Panel, however, will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). See 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
Complainant contends that Respondent is not commonly known by the disputed domain names. The WHOIS information does not suggest that Respondent is commonly known by the <bernieandphyl.com> and <berniephyl.com> domain names. Moreover, Complainant does not indicate that it has authorized Respondent to use the BERNIE & PHYL’S FURNITURE mark. The panel in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) found that the respondent did not have rights in a domain name when the respondent was not known by the mark. As a result, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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 Policy ¶ 4(c)(ii) does not apply).
Complainant maintains that Respondent is using the disputed domain names to advertise links to websites that sell competing furniture products. Previous panels have concluded that using disputed domain names to advertise or sell competing products does not evidence rights or legitimate interests in the disputed domain names. Here, the Panel concludes that Respondent’s use is not 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 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); see also 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.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In several other UDRP decisions, Respondent has been ordered
to transfer the disputed domain name to the complainant in those disputes. See OMX, Inc. v. Domain Admin. Ltd., FA 720880
(Nat. Arb. Forum July 17, 2006); see also Gilmar S.p.A. v. Domain Admin. Ltd., D2007-0093 (WIPO Apr.
10, 2007). Previous panels have
considered past UDRP decisions as evidence that a respondent has a pattern of
registering disputed domain names to prevent the rightful trademark owners from
registering the domain names.
Respondent’s behavior is evidence of registration and use in bad faith
under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4
Sale, Inc., FA 170643 (Nat. Arb. Forum
Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the
domain name prevented the complainant from reflecting its mark in a domain name
and the respondent had several adverse decisions against it in previous UDRP
proceedings, which established a pattern of cybersquatting); see also Arai Helmet Ams.,
Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005)
(finding that “Respondent has registered the disputed domain name,
<aria.com>, to prevent Complainant from registering it” and taking notice
of another UDRP proceeding against the respondent to find that “this is part of
a pattern of such registrations”).
Furthermore, Respondent is using the disputed domain names
to display links to websites where competing products are offered. Respondent is benefiting from the goodwill
associated with the BERNIE & PHYL’S FURNITURE mark, and Respondent’s use of
the disputed domain names is capable of creating confusion as to the source or
sponsorship of the websites that resolve from the disputed domain names. The Panel concludes that this use is further
evidence of registration and use in bad faith under 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 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).
Finally, Respondent’s use of the disputed domain names also demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) because it is capable of disrupting Complainant’s business. See 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).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <bernieandphyl.com> and <berniephyl.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 5, 2008
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