Zale Canada Co. v. Intermos
Claim Number: FA0208000117381
PARTIES
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.
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
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 postmaster@peoplesjewelers.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 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
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.
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.
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.
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 <peoplesjewelers.com> be transferred from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 17, 2002
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