Borders Properties, Inc. v. Peter Carrington a/k/a Party Night Inc.
Claim Number: FA0207000117015
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent failed to submit a Response.
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>.
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.
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
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