Mason Companies, Inc. v. Leroy Chan
Claim Number: FA0807001216166
Complainant is Mason Companies, Inc. (“Complainant”), represented by Andrew
S. Ehard, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoemall.biz>, registered with Melbourne It Ltd.
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.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 21, 2008.
On July 21, 2008, Melbourne It Ltd confirmed by e-mail to the National Arbitration Forum that the <shoemall.biz> domain name is registered with Melbourne It Ltd and that the Respondent is the current registrant of the name. Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd 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 July 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 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.
A timely Response was received and determined to be complete on August 13, 2008.
A timely Additional Submission was received from Complainant on August 15, 2008.
A timely Additional Submission was received from Respondent on August 21, 2008.
On August 20, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
First, Complainant asserts that it has obtained trademark registration for its SHOEMALL mark, and has been using the mark in commerce since 1997. Additionally, Complainant asserts that Respondent’s domain name is identical to, or confusingly similar to its mark, since the name wholly incorporates the mark, as the top level domain “.biz” is ignored for purposes of determining confusion. Thus, Complainant asserts that the domain name is identical to or confusingly similar to a mark in which Complainant has rights.
Next Complainant asserts that Respondent has no rights or legitimate interests in the name. Complainant states that Respondent is not commonly known by the name, and is not using the name for the bona fide offering of goods or services, in that Respondent has never provided any products or services in connection with the retail sale of footwear or clothing. In fact, Complainant asserts that Respondent is using the name to confuse Internet users who are interested in utilizing Complainant’s services and redirecting them to Respondent’s website which provides links to Complainant’s competitors. Complainant has not authorized Respondent to use its mark in any manner.
Finally, Complainant asserts that Respondent registered, and is using the domain name in bad faith. Complainant contends that Respondent had constructive, if not actual, notice of the mark since it was a registered trademark. Moreover, the name is used in bad faith because it redirects Internet users seeking Complainant’s products to a website featuring links to Complainant’s competitors, namely other online shoe retailers.
Respondent does not specifically discuss the issue of whether its name is identical to or confusingly similar to Complainant’s mark. Respondent states that it cannot imagine that the term “shoemall” could obtain trademark registration, given that it is merely descriptive. Respondent appears to be arguing that because the two words which form the mark are generic, Complainant cannot protect the mark and Respondent is free to use it. Respondent notes that during the trademark application process, the examining attorney questioned the registration of Complainant’s mark because it is descriptive. Respondent also asserts that its intention is not to redirect Internet users from Complainant’s site to Respondent’s site. Respondent points out that each site has comparatively little traffic compared to larger online shoe retailers such as Zappos.com. Finally, Respondent asserts that it cannot be acting in bad faith since it was unaware of Complainant’s mark at the time the name was registered, and its sole purpose was to build a website for Internet users seeking to purchase shoes.
C. Additional Submissions
In its Additional Submission Complainant points out that Respondent has not contested Complainant’s assertion that Respondent’s name is identical or confusingly similar to Complainant’s mark. Further, Complainant points out that while Respondent mentions that the examining attorney in the USPTO had questions about registering the mark due to the descriptive nature of the mark, at the end of the day the examining attorney was overruled and the mark was registered. Complainant further points out that in its Response, Respondent does not contest the Complainant’s assertions that Respondent is not commonly known by the name, Complainant has not licensed Respondent to use its mark, and that the registration of the mark preceded Respondent’s registration of the domain name. Complainant asserts that Respondent’s claim of lack of knowledge of the mark is unavailing, since the trademark registration provides constructive knowledge to persons such as Respondent, and that the failure to conduct a trademark search can be viewed as evidence of bad faith. Finally, Complainant restates its position that the website is being used in bad faith because it is redirecting Internet users to Respondent’s website, which contains links to Complainant’s competitors. Complainant points out that in a survey conducted by Respondent set forth in the Response, Respondent concedes that in 5 instances an Internet user seeking Complainant’s website was redirected to Respondent’s site.
In its Additional Submission Respondent directly challenges some of the points made in Complainant’s Additional Submission. Respondent again asserts that at the time it registered the name it had never heard of the SHOEMALL mark. In response to Complainant’s assertion that Respondent had constructive notice of the mark, Respondent said that such a position must fail, because if Complainant is correct then “everyone is on constructive notice for any domain name….” Respondent also points out that although its survey showed five Internet users who were searching for Complainant’s site but were redirected to Respondent’s site, this is a very small percentage of the users seeking Complainant’s site. Respondent contends that the overwhelming number of users enter a shoe brand name, not Complainant’s mark, as a search term.
The Panel finds that: (a) the domain name is identical to, or confusingly similar to a mark in which Complainant has rights; (b) Respondent has no rights or legitimate interests in the name; and (c) the name was registered and is being used in bad faith.
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.
There is no doubt that the name is identical to or confusingly similar to Complainant’s mark, since it wholly incorporates the mark. For purposes of this inquiry, the TLD “.biz” is ignored. See Trip Network Inc. v Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). The Panel also concludes that Complainant’s trademark registration of its mark provides ample basis to conclude that it has rights in the mark.
The Panel finds that Complainant has made a prima facie showing that Respondent lacks
rights or legitimate interests in the name. Thus, the burden shifts to
Respondent to demonstrate that it does have such rights or interests. Complainant
asserts—and Respondent does not contest—that Respondent is not commonly known
by the name and was not licensed by Complainant to use the name. Therefore the
Panel concludes that Respondent is not commonly known by the name. See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006). On the issue of whether Respondent is using the
name to provide a bona fide of goods
or services, the Panel concludes that it is not. Respondent is using the name
to redirect Internet users to its website which has links to Complainant’s
shoe-selling competitors, presumably to earn pay-per-click fees. Such use is
not legitimate. See Royal Bank of Scot.
Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006). See also Bond & Co. Jewelers, Inc. v.
Registering a domain name with knowledge of an identical or confusingly similar mark is evidence of bad faith registration. While Respondent argues that it never heard of the mark at the time it registered the name, such knowledge is imputed when Respondent should have conducted a reasonable search. The Panel concludes that Respondent had at least constructive knowledge of Complainant’s mark at the time of the registration of the name, and therefore registered the name in bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). Once the name was registered, Respondent used the name in bad faith, in that the name is identical to Complainant’s mark and was used to confuse Internet users and redirect them to Respondent’s site, presumably so that these users would shop at Complainant’s competitor’s websites and those competitors would pay referral fees to Respondent. Such use is in bad faith. Respondent admits in its Response that at least 5 confused Internet users were redirected to its site while searching for Complainant’s site. There is no minimum number of confused users that is required for a Panel to conclude that for commercial gain Respondent used an identical or confusingly similar name to redirect users to its site, and thereby acted in bad faith. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007). Finally, the Panel does not question Respondent’s assertion that it lacked actual knowledge of the Complainant’s mark at the time it registered the name. But, Respondent fails to grasp the significance of the legal concept of constructive knowledge, and fails to acknowledge that before registering the domain name it had some obligation to perform a diligent search to determine whether the name might infringe another’s intellectual property. For all of the foregoing reasons, the Panel concludes that the name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoemall.biz> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: September 4, 2008
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