John Rich & Sons Investment Holding Company v. COMDOT INTERNET SERVICES PRIVATE LIMITED
Claim Number: FA0804001177529
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 <woolrichhome.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On May 28, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 17, 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.
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 <woolrichhome.com> domain name is confusingly similar to Complainant’s WOOLRICH mark.
2. Respondent does not have any rights or legitimate interests in the <woolrichhome.com> domain name.
3. Respondent registered and used the <woolrichhome.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John Rich & Sons Investment Holding Company, has provided home-related goods since 1929 under the WOOLRICH mark (Reg. No. 1,617,668, issued October 16, 1990), which is registered with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <woolrichhome.com>
domain name on
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 has asserted rights in the WOOLRICH mark through
its registration of the mark with the USPTO.
Complainant’s mark was registered almost 16 years prior to Respondent’s
registration of the disputed domain name in 2006. As such, Complainant’s rights in the mark
clearly predate Respondent’s registration of the disputed domain name. Moreover, registration with a national
regulatory authority such as the USPTO indicates that the mark has already been
found to be inherently distinctive.
Thus, the Panel therefore finds that Complainant has sufficient rights
in its WOOLRICH mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Respondent’s <woolrichhome.com> domain name includes the entire and unaltered form of Complainant’s WOOLRICH mark, along with the generic word “home,” and the generic top-level domain (“gTLD”) “.com.” Because a top-level domain is required of all domain names, Respondent’s addition of a gTLD to the disputed domain names in this case is irrelevant. Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel is thus left with the sole addition of the generic word “home.” Ordinarily, panels will find that a generic word affixed to a disputed domain name fails to distinguish said disputed domain name, as the mark remains the predominant element. This conclusion is particularly appropriate where the generic word describes Complainant or its operations. In this case, Complainant operates its long-standing business as a manufacturer of home-related items, and thus it is fair for an Internet user to assume that the disputed domain name would in some way relate to Complainant. Thus, the word “home” therefore fairly describes Complainant and its operations. Accordingly, pursuant to Policy ¶ 4(a)(i), the Panel thus finds that the <woolrichhome.com> domain name is confusingly similar to Complainant’s WOOLRICH mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant retains the initial burden in asserting a sufficient prima facie case supporting its allegations. Complainant has indeed asserted that Respondent lacks rights and legitimate interests in the <woolrichhome.com> domain name under Policy ¶ 4(a)(ii). Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. See American 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). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known
by the <woolrichhome.com> domain name. Complainant asserts that Respondent has never
been authorized to use the WOOLRICH mark. Complainant contends that Respondent does not
own any trademarks or service marks reflecting the disputed domain name. With no evidence to the contrary, the Panel
finds that Respondent has no trademark or service mark rights in the WOOLRICH
mark pursuant to Policy ¶ 4(c)(i). See Meow
Media Inc. v. Basil, FA
113280 (Nat. Arb. Forum
There is no evidence that Respondent has ever been commonly
known by the disputed domain name.
Further, the WHOIS information does not indicate that Respondent is
commonly known by the disputed domain name.
Thus, the Panel finds that Respondent is not commonly known by the <woolrichhome.com>
domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent’s <woolrichhome.com> domain name
resolves to a website, aptly described by Complainant as a “link farm,” whose
sole feature appears to be to display third-party advertisements and
links. Some of these links lead Internet
users to Complainant’s competitors within the home-related goods industry. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). Moreover,
Respondent presumably receives referral fees of some sort for the placement of
these advertisements on the corresponding website—which the Panel notes is
intrinsically tied to the disputed domain name.
Thus the disputed domain name does not represent a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel therefore finds that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶¶ 4(c)(i) and (iii).
See Bank of Am. Corp. v. Northwest Free
Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of
Respondent and for Respondent's benefit is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name involves a
corresponding website which provides an Internet billboard for third-party
advertisements and links. Internet users
seeking Complainant would be diverted to this website and be confronted with
links for businesses that compete with Complainant. The Panel therefore finds that Respondent
has engaged in bad faith registration and use of the disputed domain name under
Policy ¶ 4(b)(iii).
See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
This Panel has found that the <woolrichhome.com> domain name is confusingly similar to Complainant’s WOOLRICH mark under Policy ¶ 4(a)(i), for the reasons listed in that section. Internet users seeking Complainant’s products or services would be likely to attempt to locate Complainant on the Internet. It is quite foreseeable that these Internet users may choose the disputed domain name for their Internet search, in the hopes of reaching Complainant. Such Internet users would, by Respondent’s design, be routed away from Complainant and to Respondent’s corresponding website. To then be confronted with third-party advertisements, some of which compete with Complainant, would be both confusing and potentially frustrating. In the interim, Respondent presumably benefits from this diversion through referral fees received, should the Internet user attempt to navigate the myriad of links populating Respondent’s corresponding website. Respondent has therefore created a substantial possibility of a likelihood of confusion as to Complainant’s source, endorsement, affiliation, and sponsorship of the disputed domain name and corresponding website. The Panel thus finds that Respondent has engaged in bad faith registration and use under 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.’”).
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 <woolrichhome.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 3, 2008
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