Schottenstein Stores Corporation v. Lifecare Herbal Rpoducts c/o Shahbaz Ahmad Khan
Claim Number: FA0810001228275
Complainant is Schottenstein Stores Corporation (“Complainant”), represented by Kathryn
E. Smith, Esq., of Wood, Herron &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <valuecityshopping.com>, registered with Direct Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2008.
On October 9, 2008, Direct Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <valuecityshopping.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that the Respondent is the current registrant of the name. Direct Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.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 October 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 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.
An electronic Response was received on November 6, 2008, however, the Forum deemed the Response deficient pursuant to ICANN Rule #5(a) because it was not received in hard copy by the Response deadline.
On November 13, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
This Complaint is based upon Complainant long-time use and ownership of
Complainant is the current owner of record of the following federal
trademark registration currently on record in the United States Patent and
Trademark Office for the
Complainant states that Respondent’s Domain Name is Identical or
Confusingly Similar to Complainant’s
Likewise, that the Respondent has no known rights nor a legitimate interest in the <valuecityshopping.com> Domain Name. Furthermore, Complainant submits that because of the widespread renown, use, promotion, distribution and advertisement by Complainant’s of the Value City marks and in particular, Complainant’s Value City marks for a variety of goods sold in Complainants Value City Department Stores and Complainant’s Value City Furniture Stores, Respondent knew or should have known of Complainant’s rights in the Value City marks, and the valuable goodwill represented and symbolized thereby when it registered the domain name VALUECITYSHOPPING.COM.
Consequently, Respondent’s Registration of the VALUECITYSHOPPING.com Domain Name should be considered as having been registered and being used in bad faith and according to the ICANN rule 3 (b) (ix) (3), the Complainant claims that the Respondent had an affirmative obligation of not to register domain names that could violate any registered service or trademark.
The Complainant requests that the Panel issues a decision that the domain-name registration be transferred.
Respondent has admitted in his response to the complaint of the Complainant that is ready to offer the transfer without requiring the decision of the Panel in accordance with the Policy.
contends that he registered the domain name in dispute because it was available
since it was not in his knowledge about the
Respondent argues that after getting notice of the complaint, he wrote to Complainant and offered to transfer the domain name in dispute. Further to the prior, Respondent contends that it is willing to transfer to Complainant the domain name and that instructed the hosting company to stop running the domain name.
In spite of the aforementioned consent of transferring the domain name in dispute provided by Respondent, the Panel considers appropriate to set forth that even without counting with said express assent, all the elements required under ICANN Policy were examined, observed and inspected. Likewise the undoubted conclusion the Panel reached is to transfer the domain name <valuecityshopping.com>, as shown below:
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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Likewise, paragraph 10(d) of “The Rules”, provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
In the present case, the Panelist wants to place emphasis in the importance of the evidence filed by the parties to prove their assertions, which has been studied to determine its relevance and weight in arriving a decision.
Additionally the Panelist considers noteworthy the fact that the Respondent has not filed the hardcopy of the response to the complaint. As consequence, the Panelist may decide whether or not to consider Respondent’s Submission.
The fact that the Respondent has not submitted hardcopy of the response, according to Paragraph 14 (b) of The Rules, constitutes a technical default, which allows the Panelist to take such fact as evidence against the party in default, i.e., the Respondent.
Nevertheless, the Panelist wants to underline that in order to have an adequate vision of the facts that gave grounds to the present case, it has determined to take into consideration certain contentions filed by Respondent, in regard to the allegations filed by Complainant, when arriving to a decision in the present proceeding.
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 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;
(3) The domain name has been registered and is being used in bad faith.
The first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.
Complainant contends that the
Domain Name is identical with and confusingly similar to the several trademarks
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the products and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
In fact, Complainant has provided evidence of
a registration for the
The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Complainant’s registrations appear to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated products and services.
Respondent has the burden of contesting this assumption, and in this case, it has failed to contest Complainant's assertions regarding its trademark rights. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights of the cited trademark.
Before establishing whether or
not the disputed domain name is confusingly similar to the Complainant’s
registered trademark, the sole panelist wants to point out that the entirety of
Therefore the sole Panelist
concludes that this evidence establishes Complainant’s rights in the
Paragraph 4 (c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue
Before shifting the burden to Respondent, 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).
The Complainant registration appears to be a prima facie incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the same in connection with the stated services. It is the Respondent who has the burden of refuting this assumption.
After an investigation, made ex officio, the sole panelist has found that the Complainant is using his trademark in the domain name that he owns <valuecity.com>. When the panelist entered said web page, the following information appears therein:
On the other hand, leading the terms exposed within EXHIBIT E of the Complaint, it is clear that Respondent offered at the <valuecityshopping.com> website a variety of pharmaceutical and herbal medicinal products but the “about us” link of Respondent’s page suggests that it sells or plans to sell much more than currently offering, as shown ahead:
Consequently it is clear that when a customer visit Respondent’s website, he or she would likely be confused as to the source of information and products contained on Respondent’s page and would likely be mislead in relation to the source of goods shown on Respondent’s website, assuming that such goods are affiliated with Complainant, when they are not.
Furthermore, Respondent’s principal argument with respect to the issue of rights or legitimate interests appears to be that by the time Respondent registered the domain name in dispute, it was available and that he did not have any knowledge of the trademarks of the Complainant. Furthermore, leading the evidence provided by the Complainant, it is clear that the Respondent is not affiliated with, licensed by, has not been given any permission to use that Value City marks by Complainant and is not otherwise in any way connected with Complainant or its affiliates.( ICANN Rule 3(b)(ix)(2))
Therefore, the sole panelist considers that due to the fact none of the contentions made by the Complainant were refuted and after reviewing the evidence attached to the present case and the ex officio proofs, it has been proven that there is no right or legitimate interest in the disputed domain name by Respondent, therefore it does not meet Paragraph 4 (a) (ii) of the Policy.
Further to the prior and foremost in this initial finding, the Panel has found that Complainant made a prima facie case in support of its allegations and thus, the burden shifted to Respondent to show that it does have rights or legitimate interests in the disputed domain name. Considering that the Respondent failed to prove a legitimate interest pursuant to Policy, Bad Faith is presumably as a direct consequence of its lack of argumentation on this regard. In that sense, considering that 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. Otherwise, the registration of the domain name not would only be considered as illegitimate but in bad faith as well.
Bearing in mind the foregoing, Complainant alleges that Respondent has acted in bad faith. The sole panelist has considered the fact that Respondent has failed to evidence its legitimate rights or interests in the disputed domain name. Notwithstanding the aforementioned, the sole panelist will evaluate Complainant assertions and evidence regarding Respondent bad faith in the registration of <valuecityshopping.com> domain name.
According to paragraph 4 (b) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The sole panelist considers that the Complainant’s has a history in the on-line retail business, taking in to consideration the usage that it has given of his trademark.
Moreover, the fact that the Complainant has registered
Indeed, the domain name is clearly connected to the Complainant’s trademarks for business operations and services as the sole panelist could confirm regarding and checking the <valuecity.com>, domain name usage.
For the sole panelist it is clear that the Respondent acted in bad faith when contacted the Complainant via e-mail on September 12, 2008, inquiring if Complainant wanted to add its products to Respondent’s shopping store and further to this, requesting compensation in money to the Complainant, for effectively transferring the domain name in dispute. Likewise as further evidence of Respondent’s bad faith when registering the domain name in dispute, the Panel found out within EXHIBIT C of the Complaint that Respondent requested an initial compensation of USD $1,500.ºº for willingly transferring the domain name <valuecityshopping.com>, and afterwards increasing his economic claim for USD $15.000.ºº for voluntarily giving full rights upon said name on behalf of Complainant.
Thus Respondent failed to evidence use of the disputed domain for good faith purpose.
The circumstances provided in paragraph 4 (b) of the Policy are not limiting factors of how bad faith can be established, but allow merely basic parameters for the sole panelist when determining bad faith of Respondent.
Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4 (a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <valuecityshopping.com> domain name.
The Panel has found that the Complainant has several trademarks registrations identical or confusingly similar to the domain name in dispute. That the Respondent lacks of legitimate interest, that the domain name was used in bad faith and that in spite of the aforementioned, the Respondent is willing to transfer the domain name <valuecityshopping.com>, to the complainant Schottenstein Stores Corporation. Consequently, under ther ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <valuecityshopping.com>, domain name be TRANSFERRED from Respondent to Complainant.
FERNANDO TRIANA, Esq.,
Dated: December 2, 2008
 See Telstra Corp v.
 See Snow Fun, Inc. v. O’Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (where they find that the domain name <termquote.com> is identical to the Complainant’s TERMQUOTE mark).
 See Janus Int’ l Holding Co.v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).
 See, e.g., EAuto, L.L.C. v. Triple S. Auto, D2000-0047 (WIPO Mar. 29, 2000).
 See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000).
 See L.L. Bean, Inc. v ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000).
 See Surface Prot. Indus., v Webposters, D2000-1613 (WIPO Feb. 5, 2001).
 See Janus Int`l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).
 See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
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