John Rich & Sons Investment Holding Company v Wan-Fu China, Ltd.
Claim Number: FA0804001177296
Complainant is John Rich & Sons Investment Holding Company (“Complainant”), represented by Jeffrey
S. Habib, of Hooker & Habib,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <woolrichhomefurnishings.com>, registered with Belgiumdomains, LLC.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2008.
On April 10, 2008, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <woolrichhomefurnishings.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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").
11, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 1, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <woolrichhomefurnishings.com> domain name is confusingly similar to Complainant’s WOOLRICH mark.
2. Respondent does not have any rights or legitimate interests in the <woolrichhomefurnishings.com> domain name.
3. Respondent registered and used the <woolrichhomefurnishings.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John Rich & Sons Investment Holding Company, uses the WOOLRICH mark in connection with the production and sales of various different types of home furnishing products. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WOOLRICH mark (i.e. Reg. No. 1,617,668 issued October 16, 1990).
Respondent registered the <woolrichhomefurnishings.com> domain name on September 15, 2007. Respondent’s disputed domain name resolves to a website displaying links to third-party websites offering products in competition with Complainant. In addition, Respondent has a long history of registering domain names in violation of the UDRP. See Sico Inc. v. Wan-Fu China, Ltd., FA 886447 (Nat. Arb. Forum Feb. 23, 2007); Popular Enter., LLC. v. Wan-Fu China, Ltd., FA 892424 (Nat. Arb. Forum Mar. 1, 2007); WeddingChannel.com v. Wan-Fu China, Ltd., FA 913762 (Nat. Arb. Forum Mar. 16, 2007).
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.
Complainant asserts rights in the WOOLRICH mark through registration with the USPTO and Complainant’s long-standing use of the WOOLRICH mark. The Panel finds that registration with the USPTO gives Complainant rights to the WOOLRICH mark pursuant to Policy ¶ 4(a)(i). See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights or legitimate interests in the <woolrichhomefurnishings.com> domain name. Complainant must first present a prima facie case establishing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has met the burden and made a prima facie case supporting the assertion that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests, and thus 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel presumes that Respondent lacks rights and legitimate interests because Respondent failed to answer the Complaint. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has not been and is not commonly known by the disputed domain name, and is not currently authorized to use the WOOLRICH mark. Additionally, the WHOIS information identifies Respondent as “Wan-Fu China, Ltd.”, and therefore, gives no indication that Respondent has been or is commonly known by the <woolrichhomefurnishings.com> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant contends that
Respondent is using the <woolrichhomefurnishings.com> domain name in order to attract Internet users to the
associated website containing links to third party websites in competition with
Complainant. The Panel finds that
intentionally diverting Internet users to a competing website by using a confusingly
similar domain name is neither a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <woolrichhomefurnishings.com> domain name to intentionally divert Internet users to the associated website, where third-party links to competing websites are displayed. In cases such as this, the Panel assumes that Respondent is collecting click-through-fees. The Panel finds that such use of a disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition, the Panel finds that Respondent’s use of the <woolrichhomefurnishings.com> domain name to disrupt the business of Complainant by offering links to competitors is also evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also 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).”).
Lastly, Respondent has a long history of registering domain names infringing upon the trademark rights of others, and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Sico Inc. v. Wan-Fu China, Ltd., FA 886447 (Nat. Arb. Forum Feb. 23, 2007); Popular Enter., LLC. v. Wan-Fu China, Ltd., FA 892424 (Nat. Arb. Forum Mar. 1, 2007); WeddingChannel.com v. Wan-Fu China, Ltd., FA 913762 (Nat. Arb. Forum Mar. 16, 2007). The Panel finds that a pattern of registration and use of domain names with established marks is further evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <woolrichhomefurnishings.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 20, 2008
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