eLuxury.com Inc. v. sholom Scheiner d/b/a Eluxurytime
Claim Number: FA0805001195130
Complainant is eLuxury.com Inc. (“Complainant”), represented by Jiyun Cameron Lee, of Folger Levin & Kahn LLP, California, USA. Respondent is sholom Scheiner d/b/a Eluxurytime (“Respondent”), represented by Joel Weiss, of Weiss Arons LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eluxurytime.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2008; on June 2, 2008, Complainant filed a request to withdraw its Complaint without prejudice. The National Arbitration Forum granted Complainant’s request on June 3, 2008. The National Arbitration Forum received an amended Complaint in hard copy on June 23, 2008.
On June 23, 2008, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <eluxurytime.com> domain name is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that the Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com 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 June 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 16, 2008.
On July 21, 2008, Complainant submitted a timely Additional Submission. On July 24, 2008, Respondent also submitted a timely Additional Submission.
On July 22, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <eluxurytime.com> domain name is confusingly similar to Complainant’s ELUXURY mark.
2. Respondent does not have any rights or legitimate interests in the <eluxurytime.com> domain name.
3. Respondent registered and used the <eluxurytime.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. ELUXURY is a descriptive trademark and is therefore only entitled to narrow protection. The addition of the word “time” is therefore enough to distinguish Respondent’s <eluxurytime.com> domain name from Complainant’s mark.
2. Respondent is offering luxury watches under the <eluxurytime.com> domain name.
3. Respondent did not know of Complainant’s ELUXURY mark when it registered the <eluxurytime.com> domain name.
C. Additional Submissions
1. Complainant’s Additional Submission reiterates its arguments and emphasizes that Respondent was not known by <eluxurytime.com> prior to registering the domain name in 2004, four years after Complainant’s began using ELUXURY.
Complainant also further refutes Respondent’s descriptiveness arguments and highlights that the mark ELUXURY has become uncontestable.
2. Respondent’s Additional Submission adds to the arguments set forth in the Response, emphasizing that a domain name registrant need not be known by the domain name prior to registration, and refutes constructive notice as a basis for bad faith.
Complainant has a trademark registration for ELUXURY for online retail store services for various consumer products, specifically including watches. The registration was issued December 11, 2001, with a first use date of June 19, 2000. Respondent registered the <eluxurytime.com> domain name on September 13, 2004.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
The Panel finds that Complainant has sufficiently established rights in the ELUXURY mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,528,471 issued December 11, 2001). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant has been using the ELUXURY mark since 2000 for online sales of goods such as clothes, jewelry, watches and other similar items. The term “time” is closely correlated with Complainant’s sale of watches. Previous panels have found the inclusion of gTLDs and descriptive words that have an obvious relationship to a complainant’s business to be “insufficient” to distinguish a disputed domain name. The Panel chooses to follow this straightforward line of UDRP precedent and accordingly finds that Respondent’s <eluxurytime.com> domain name is confusingly similar to Complainant’s ELUXURY mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); 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 the complainant combined with a generic word or term); see also 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 notes that it finds confusing similarity when the mark and the domain name are compared as a whole OR viewed in separate parts.
While Respondent contends that Complainant’s mark ELUXURY is descriptive and therefore deserving of narrow protection, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name and was not at the time of the registration of the <eluxurytime.com> domain name. Complainant states that it has never granted Respondent license nor otherwise authorized Respondent to use the ELUXURY mark. However, Respondent asserts that it has “grown to be known” by the dispute domain name because it has been engaging in business under that name since it registered it in 2004. Respondent argues that it has had many repeat customers and that the public associates Respondent, or Respondent’s company eLuxuryTime.com, Inc. with the <eluxurytime.com> domain name.
Complainant further argues that the <eluxurytime.com> domain name is being used by Respondent to intentionally mislead and divert Internet users to Respondent’s competing website, where luxury watches are sold.
Respondent states that it selected <eluxurytime.com> “because [eluxurywatch.com] was already taken”, and not to intentionally divert traffic from Complainant. However, this Panel finds it implausible that Respondent did not know of Complainant’s mark when it conducted its search for a domain name. It surely would have run across Complainant’s <eluxury.com>, and could have chosen one of hundreds of possible domain names invoking luxury and watches, without using Complainant’s entire mark. While Respondent may have built up a connection between its business and the <eluxurytime.com> domain name since registration, the Panel finds that its use was not legitimate at the time of registration and therefore is not legitimate now.
The Panel consequently finds that Respondent’s use does not consitute either 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 eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith registration and use of the disputed domain name can be established under Policy ¶ 4(b)(iv), stating that Respondent has intentionally attracted, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s mark. Respondent argues that the website it operates under the disputed domain name is substantially different in look, layout and style than Complainant’s website under the ELUXURY mark and is therefore not confusingly similar. The Panel finds that the visual differences in the two websites do nothing to distinguish the mark from the domain name.
Complainant launched its website at the <eluxury.com> domain name in 2000 and has been successfully trading under the ELUXURY mark ever since. Complainant received its first trademark registration from the USPTO for the ELUXURY mark in 2001. Complainant argues that both Respondent and its predecessor-in-interest had either actual knowledge or at least constructive knowledge of Complainant’s rights in the ELUXURY mark when the disputed domain name was registered, constituting bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). Respondent admits that there is a line of UDRP precedent in which registration of a domain name confusingly similar to a registered mark establishes constructive notice sufficient for establishing Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Florists' Transworld Delivery v. Malek, FA 676433 (“Although it may not be appropriate in every case, in this case where: (i) the Complainant relies on a famous and distinctive trademark (the FTD Mark); (ii) the trademark is incorporated in its entirety into the Domain Name whose other terms relate to business of the Complainant; (iii) the Respondent is in the same line of business as the Complainant; (iv) the Respondent has used the Domain Name to promote and sell goods and services that directly compete with the Complainant’s goods and services, and (v) the Complainant and Respondent are both located in the United States, the Panel finds that there should be “constructive notice” of the Complainant’s FTD Mark.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).
Though Complainant’s mark may not be as famous as the FTD mark noted above, the Complainant had been an established business on the Internet in the field of online retail sales, the exact same field as Respondent, overlapping in the sales of watches, for more than four years before Respondent registered the <eluxurytime.com> domain name. Respondent states that it selected <eluxurytime.com> “because [eluxurywatch.com] was already taken”, and not to intentionally divert traffic from Complainant. Again, this Panel finds it implausible that Respondent did not know of Complainant’s mark when it conducted its search for a domain name. This Panel finds that Respondent did have constructive notice, if not actual notice, and that it therefore intentionally diverted and diverts Internet users looking for Complainant to its site.
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eluxurytime.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 5, 2008
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