Zale Canada Co. v. Intermos
Claim Number: FA0208000117381
Complainant is Zale Canada Co., Irving, TX, USA (“Complainant”) represented by Jocelyn R. Dabeau, of Thompson & Knight LLP. Respondent is Intermos, Moscow, RUSSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <peoplesjewelers.com>, registered with Intercosmos Media Group, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 1, 2002; the Forum received a hard copy of the Complaint on August 5, 2002.
On August 2, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <peoplesjewelers.com> is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 August 5, 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 firstname.lastname@example.org 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 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <peoplesjewelers.com> domain name is confusingly similar to Complainant's PEOPLES JEWELLERS 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, Zale Canada, has used the PEOPLES JEWELLERS mark in conjunction with its jewelry stores in Canada for 80 years. Complainant holds a trademark registration for PEOPLES JEWELLERS in Canada (Reg. No.TMA246037). The mark was first registered by Complainant in Canada in June of 1980. Complainant and its affiliates have also registered 15 other closely related marks.
Complainant’s sister company, Zale Deleware, registered the <peoplesjewellers.com> domain name and provides information regarding PEOPLES JEWELLERS retail store locations.
Respondent registered the <peoplesjewelers.com> domain name on November 11, 2001. Respondent is using the disputed domain name for a website that features links to various advertising websites, casinos, pornography and credit cards.
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.
Identical and/or Confusingly Similar
Complainant has established that it has rights in the PEOPLES JEWELLERS mark through registration in Canada and continuous use. Respondent’s <peoplesjewelers.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely omits the “l” in JEWELLERS. The omission of a letter does not create a distinct mark capable of overcoming a claim of confusing similarity pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark).
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 to a website that provides links to various casinos, advertisers, pornography and credit card websites. The use of a confusingly similar domain name in order to divert Internet users interested in Complainant to Respondent’s website for Respondent’s commercial gain 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). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Respondent has submitted no Response and, consequently, no evidence that it is commonly known as anything other than “Intermos.” There is no evidence on record that establishes that Respondent is commonly known as “Peoples Jewelers” or <peoplesjewelers.com>. Therefore, Respondent has not established that it 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 the disputed domain name <peoplesjewelers.com> in order to divert Internet users interested in Complainant to Respondent’s website for Respondent’s commercial gain. Respondent’s website features vendors, credit cards, casinos and pornography. It can be inferred that Respondent is being paid for the Internet traffic its website diverts to the various vendors that are linked to his website. Therefore, Respondent’s use of the disputed domain name is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Based on the fact that Respondent used a common misspelling of Complainant’s PEOPLES JEWELLERS mark it can be inferred that Respondent had actual knowledge of Complainant’s rights in the mark when it registered the infringing domain name. Registration of a domain name, despite knowledge of Complainant’s rights in the mark, 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").
Furthermore, Respondent is engaged in a practice known as typosquatting. Typosquatting is the registration and use of a domain name that utilizes a common misspelling of another’s mark in order capitalize off of mistakes made by Internet users when entering URLs. Respondent’s registration of <peoplesjewelers.com> takes advantage of the fact that many people may attempt to find Complainant but forget that Complainant has an additional “l” in its PEOPLES JEWELLERS mark. Therefore, Respondent’s behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).
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 <peoplesjewelers.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 17, 2002
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