John Rich & Sons Investment Holding Company v. Vaughn D. Baker
Claim Number: FA0806001203460
Complainant is John Rich & Sons Investment Holding Company (“Complainant”), represented by Jeffrey S. Habib, of Hooker & Habib, P.C., Pennsylvania, USA. Respondent is Vaughn D. Baker (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <woolrichelite-superstore.com>, registered with The Name It Corporation d/b/a Nameservices.net.
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 June 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2008.
On June 11, 2008, The Name It Corporation d/b/a Nameservices.net confirmed by e-mail to the National Arbitration Forum that the <woolrichelite-superstore.com> domain name is registered with The Name It Corporation d/b/a Nameservices.net and that Respondent is the current registrant of the name. The Name It Corporation d/b/a Nameservices.net has verified that Respondent is bound by the The Name It Corporation d/b/a Nameservices.net 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 16, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 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.
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 <woolrichelite-superstore.com> domain name is confusingly similar to Complainant’s WOOLRICH and WOOLRICH ELITE SERIES marks.
2. Respondent does not have any rights or legitimate interests in the <woolrichelite-superstore.com> domain name.
3. Respondent registered and used the <woolrichelite-superstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, John Rich & Sons Investment Holding Company, is the owner and licensee of the WOOLRICH mark (Reg. No. 515,340 issued September 20, 1949), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant operates under this mark in the clothing, footwear, and headgear industries. Complainant also owns numerous other marks in connection with its business, including the WOOLRICH ELITE SERIES mark (Reg. No. 3,331,498 issued November 6, 2007, filed September 21, 2005).
Respondent registered the <woolrichelite-superstore.com> domain name on March 7, 2007, and is currently using the disputed domain name to resolve to a website that features third-party advertisements and links, some of which directly compete with Complainant.
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 set forth evidence of its trademark rights through registrations of the WOOLRICH and WOOLRICH ELITE SERIES marks with the USPTO. The Panel finds that Complainant’s WOOLRICH mark registration confers sufficient rights in the mark upon Complainant for UDRP standing under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”). While Complainant’s WOOLRICH ELITE SERIES mark was formally registered after the disputed domain name was registered, previous panels have indicated that the relevant date of rights for a trademark dates back to the mark’s application date with the subsequently-approving regulatory body such as the USPTO. See J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). In this case, Complainant applied for trademark status for the WOOLRICH ELITE SERIES mark in 2005—prior to the registration of the disputed domain name. Therefore, Complainant has also successfully asserted rights in the WOOLRICH ELITE SERIES mark under Policy ¶ 4(a)(i).
Respondent’s <woolrichelite-superstore.com> domain name slightly alters both the WOOLRICH and WOOLRICH ELITE SERIES marks. Regarding both marks, Respondent has added a hyphen and the generic top-level domain (“gTLD”) “.com.” Previous panels are consistent in finding that such additions are entirely immaterial in a Policy ¶ 4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As to the WOOLRICH mark specifically, Respondent has merely added the phrase “elite superstore.” Because this phrase aptly describes Complainant’s commercial operations, the disputed domain name is not rendered distinctive by that addition. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). The Panel notes that a similar analysis fits with the WOOLRICH ELITE SERIES mark. Here, Respondent has simply dropped the word “series,” and replaced it with “superstore.” Substituting a word in the mark with one that describes Complainant falls short of distinguishing a disputed domain name. See Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also 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). For the foregoing reasons, the Panel therefore finds that Respondent’s <woolrichelite-superstore.com> domain name is confusingly similar to Complainant’s WOOLRICH and WOOLRICH ELITE SERIES marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has successfully asserted a sufficient prima facie case supporting its allegations that Respondent lacks rights and legitimate interests in the <woolrichelite-superstore.com> domain name under Policy ¶ 4(a)(ii), and Respondent now bears the burden of demonstrating its rights or legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s <woolrichelite-superstore.com> domain name resolves to a “parked” website, whose sole features are third-party advertisements and links. Some of these links lead to Complainant’s direct competitors. Presumably, Respondent monetarily benefits from the placement of these ads through the receipt of referral fees. Notably, previous UDRP panels have found that such a use of the disputed domain name fails to create rights or legitimate interests in the disputed domain name. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). In the same fashion, this Panel finds that Respondent’s likewise use of the disputed domain name falls short of constituting 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).
Respondent has failed to submit a response and any information that would suggest that Respondent is or was commonly known by the <woolrichelite-superstore.com> domain name. The WHOIS information lists the registrant as “Vaughn D. Baker.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <woolrichelite-superstore.com> domain name directs Internet users to a website featuring, among other advertisements, links to Complainant’s direct competitors. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also 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 . . .”).
Internet users seeking Complainant’s business will likely be rerouted to the unintended destination of Respondent’s parked website, and subjected to advertisements for Complainant’s direct competitors. Internet users may be confused as to whether Complainant is affiliated with or endorsed Respondent’s activities. The Panel finds that Respondent has created a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain name and corresponding website, which constitutes 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.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
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 <woolrichelite-superstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 29, 2008
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