United Retail Incorporated v. E-Luxury Network LLC c/o Mark Sandulli
Claim Number: FA0808001221382
Complainant is United
Retail Incorporated (“Complainant”), represented by Robert S Meitus, of Meitus Gelbert Rose LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <avenue.mobi>, registered with Go Daddy Software, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 25, 2008.
On August 22, 2008, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <avenue.mobi> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 September 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 22, 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 postmaster@avenue.mobi by e-mail.
Having initially received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
On October 9, 2008, the Panel granted Respondent’s October 6, 2008 request for an Extension of Time to Respond to Complaint, thereby extending the deadline by which Respondent could file a Response to the Complaint to October 29, 2008.
A timely Response was received from Respondent on October 29, 2008, and was determined to be complete.
On October 30, 2008, Complainant submitted a timely Additional Submission pursuant to the National Arbitration Forum’s Supplemental Rule 7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it uses its AVENUE mark in connection with retail and on-line services, primarily for plus-sized women’s clothing, and that Complainant has generated several hundred million dollars in gross sales for 2007 alone. Complainant submits evidence documenting its registration of the AVENUE mark with the USPTO (Reg. No. 1,563,443 issued Oct. 31, 1989).
Complainant contends that the disputed domain name <avenue.mobi> is identical to Complainant’s AVENUE mark, despite the addition of the top-level domain “.mobi.”
Complainant also claims that Respondent does not have any rights or legitimate interests in the disputed domain. Complainant argues that Respondent lacks authorization or license to use the AVENUE mark, and is not commonly known by the AVENUE mark or the disputed domain name. Complainant also states that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial use, because the disputed domain name resolves to a commercial website that displays links to Complainant’s website and those of third-parties, some of which directly compete with Complainant.
Complainant also argues that Respondent has registered and is using the disputed domain name in bad faith by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and disputed domain name for commercial gain. Complainant also accuses Respondent of preventing Complainant from using its mark in a corresponding domain name, and for registering domain names infringing on other parties’ marks.
B. Respondent
Respondent argues that it has rights or legitimate interests in the disputed domain name. Respondent states that it registered the disputed domain name along with over 450 other “.mobi” domain names for development and speculation during a two-week “landrush” period, and that all of these domain names included only common and generic words. Respondent argues that “avenue” is a common and generic word, and that the disputed <avenue.mobi> domain name was therefore available on a first-come first-serve basis.
Respondent also contends that it has engaged in a bona fide offering of goods or services because it seeks to sell these domain names to the highest bidder given the commercial value of these domain names.
Respondent argues that because Respondent has rights or legitimate interests in the disputed domain name, that it could not have registered or used the disputed domain name in bad faith. Respondent asserts that it had no actual or constructive knowledge of Complainant’s trade name or trademark registrations. Respondent contends again that it lacked knowledge of Complainant’s marks, and that the disputed domain name is comprised of a generic and common word.
C. Additional Submissions
Complainant contends that Respondent’s request for extension of time to respond, and the subsequent Response, were not timely filed and should not be considered by the Panel. Complainant reasserts that Respondent lacks rights and legitimate interests because Respondent’s intent to profit from the disputed domain name’s sale is related to Complainant’s mark. Complainant also contends that Respondent’s use of the disputed domain name to host competitive links demonstrates Respondent’s diversion of business from Complainant.
The Panel finds that:
1. the domain name is identical to Complainant’s mark;
2. Respondent lacks rights and legitimate interests in the disputed domain name; and
3. the Disputed domain name was registered and is being used in bad faith.
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."
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 offered sufficient evidence of its rights in the AVENUE mark through registration of the mark with the USPTO pursuant to 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel finds that the disputed domain name is identical
to Complainant’s mark under Policy ¶ 4(a)(i) since the
sole component is the unaltered mark.
There is no relevance of the addition of “.mobi” under Policy ¶ 4(a)(i). See Starkey
v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi
should be treated the same way as .com and should be ignored when comparing the
mark and the disputed domain name.”); see
also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007)
(concluding that the addition of “.mobi” was a functional change and thus the
<gwbakeries.mobi> domain name was identical to the GW BAKERIES mark under
Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that complainant lacks rights and legitimate interests in the disputed domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).
There is no evidence in the record to conclude that Respondent is commonly known by the disputed domain name. The WHOIS information lists Respondent as “E-Luxury Network LLC c/o Mark Sandulli,” and Respondent has failed to allege authorization to use Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant submits that the resolving website displays third-party advertisements for Complainant’s direct competitors. Complainant asserts, and the Panel so infers, that Respondent conducts this activity for commercial gain, through the receipt of click-through fees. The Panel finds this use to fail as 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 Bank of Am. Corp. v. Nw. 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name diverts Internet users seeking
Complainant’s products to a website that presents third-party advertisements
for Complainant’s competitors. The Panel
finds that this activity likely disrupts Complainant’s operations. Therefore, the Panel finds that Respondent
has engaged in 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 S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
Respondent presumably
receives referral fees through the display of third-party advertisements on its
website. By registering this identical
disputed domain name, Respondent has created a likelihood of confusion
regarding the disputed domain name and its corresponding website for commercial
benefit. The Panel finds that Respondent
has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum
Jan. 8, 2003) (finding that the disputed domain name was registered and used in
bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <avenue.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 13, 2008
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