Borders Properties, Inc. v. Peter
Carrington a/k/a Party Night Inc.
Claim Number: FA0207000117015
PARTIES
Complainant
is Borders Properties, Inc., Ann
Arbor, MI, USA (“Complainant”) represented by David R. Haarz, of Dickinson
Wright, PLLC. Respondent is Peter Carrington a/k/a Party Night, Inc.,
Amsterdam, THE NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bordersstore.com>,
registered with Key-Systems GmbH.
PANEL
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.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 22, 2002; the Forum received a hard copy of the
Complaint on July 24, 2002.
On
August 6, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the
domain name <bordersstore.com>
is registered with Key-Systems GmbH and that Respondent is the current
registrant of the name. Key-Systems
GmbH has verified that Respondent is bound by the Key-Systems GmbH 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
August 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 26, 2002
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@bordersstore.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 12, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Judge Harold Kalina
(Ret.)as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<bordersstore.com> domain name
is confusingly similar to Complainant's BORDERS mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used the BORDERS mark
since 1971 to identify its services.
Complainant registered the mark with the United States Patent and
Trademark Office as Registration Numbers 2,044,230 and 1,792,079 in relation to
online retail and retail store services relating to books, music, magazines and
videocassettes. Complainant has also
registered its mark in the Benelux countries (The Netherlands, Belgium and
Luxembourg) (Reg. Nos. 602,753 and 541,885) and the European Community (Reg.
No. 38,034).
Complainant uses its BORDERS mark
throughout the world in relation to its chain of bookstores. Complainant operates over 340 book
“superstores,” under the BORDERS service mark, most of which are in the United
States, but some are also located in the United Kingdom, Australia, New Zealand
and Singapore. Complainant also operates
a website that is located at <borders.com>. The approximate sales from all of Complainant’s stores, and its
website were $2.2 billion.
Respondent registered the disputed domain
name <bordersstore.com> on
March 13, 2002. Respondent is using the
disputed domain name in order to divert Internet users to a pornographic
website located at <hanky-panky-college.com>.
DISCUSSION
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 the 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.
Paragraph
4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the 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 established that it has
rights in the BORDERS mark through registration and continuous use since
1971. Respondent’s <bordersstore.com> domain name is
confusingly similar to Complainant’s mark because it incorporates Complainant’s
entire mark and merely adds the descriptive term “store.” The addition of a descriptive term to the
end of Complainant’s well-known mark does not create distinct mark capable of
overcoming a confusing similarity claim pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore it is
presumed that Respondent has no rights or legitimate interests in the disputed
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See 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”).
Respondent is using the disputed domain
name in order to divert Internet users interested in Complainant to a
pornographic website. The use of a
domain name, confusingly similar to Complainant’s mark, to attract
Complainant’s customers to Respondent’s pornographic website is not considered
to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Therefore, Respondent’s use of the <bordersstore.com> domain name does
not give rise to any rights or legitimate interests in the domain name. See
Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO
Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests
in the domain names <chargergirls.com> and <chargergirls.net> where
Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar.
5, 2001) (finding that infringing on another's well-known mark to provide a
link to a pornographic site is not a legitimate or fair use).
Furthermore, Respondent has not come
forward a Response, and there is no evidence on record to establish that
Respondent is commonly known as BORDERS STORE or <bordersstore.com>.
Therefore, there is no evidence to establish that Respondent has rights
or legitimate interests in the disputed 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 Respondent does not have rights in a domain name
when Respondent is not known by the mark); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent is using a domain name that is
confusingly similar to Complainant’s mark in order to divert Internet users
interested in Complainant to Respondent’s pornographic website. This behavior by Respondent is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (use of another's well-known mark to provide a link to a pornographic
site is evidence of bad faith registration and use); see also CCA Indus., Inc. v.
Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association
with a pornographic web site can itself constitute bad faith”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where Respondent linked the domain name in question to
websites displaying banner advertisements and pornographic material).
Based on the well-known nature of
Complainant’s BORDERS mark and Complainant’s registration of the mark in the
Benelux countries where Respondent resides, it can be inferred that Respondent
had constructive knowledge of Complainant’s rights when it registered <bordersstore.com>. Registration of a domain name, despite
knowledge of Complainant’s rights, is evidence of bad faith registration
pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)
(finding that "[w]here an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <bordersstore.com> be TRANSFERRED from Respondent to
Complainant.
Judge
Harold Kalina (Ret.), Panelist
Dated: September 24, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page