Artful Holdings LLC v. BWI Domain Manager a/k/a Domain Manager
Claim Number: FA0810001231471
Complainant is Artful Holdings LLC (“Complainant”), represented by Roberta
S. Bren, of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <artfuldodger.com>, registered with Rebel.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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2008.
On October 29, 2008, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <artfuldodger.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.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 November 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@artfuldodger.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
[a] Complainant Artful Holdings LLC offers clothing under the trademark THE ARTFUL DODGER. The mark is sometimes presented as ARTFUL DODGER (without the preceding definite article "THE").
[b] Complainant's THE ARTFUL DODGER apparel is offered for sale through stores and online at websites such as karmaloop.com.
[c]
Complainant is the owner of the following
|
THE ARTFUL DODGER |
Reg. No. 2274690B Filed on: July 7, 2001 Reg'd on: February 1, 2002 |
Articles of casual clothing and casual wear, headgear, leisure clothing and leisure wear including but not limited to T-shirts, sweat shirts, jumpers and jackets. |
Respondent and its ARTFULDODGER.COM Domain Name
[d]
The domain name at issue is artfuldodger.com. According to the WHOIS database, the domain
name was registered on April 29, 2003, over a year
after Complainant's
[e] Complainant has never authorized or licensed its THE ARTFUL DODGER mark to Respondent.
[f] The domain name artfuldodger.com is being used in connection with webpages containing sponsored links. The landing page is entitled "Artfuldodger.com", and contains links such as "Artful Dodger Rave On", "Catalog", "Footwear", and "Dance Wear". The links on Respondent's landing page lead to additional pages within Respondent's website containing sponsored links to external sites. Some of these linked external websites offer clothing by Complainant's competitors. Upon information and belief, Respondent is earning revenue through these sponsored links.
[g] Hitfarm.com provides domain optimization services, providing pay-per-click revenue to the domain name owner.
[h] Respondent has been found to violate the UDRP in connection with at least sixteen domain names.
|
Case
No. |
Domain Name |
Case Name |
Link to Decision |
|
1084750 |
1035thebeat.com |
AMFM, Inc. v BWI
Domain Manager |
http://domains.adrforum.com/domains/decisions/1084750.htm
|
|
1094042 |
aarpfunds.org |
AARP v BWI Domain
Manager |
http://domains.adrforum.com/domains/decisions/1094042.htm
|
|
1104431 |
americangir.com |
American Girl, LLC v
BWI Domain Manager |
http://domains.adrforum.com/domains/decisions/1104431.htm
|
|
1174416 |
choiceprivaleges.com |
Choice Hotels
International, Inc. v BWI Domains c/o Domain Manager |
http://domains.adrforum.com/domains/decisions/1174416.htm |
|
1177906 |
keystoneautomotive.com |
Keystone Automotive
Operations, Inc. v BWI Domain Manager |
http://domains.adrforum.com/domains/decisions/1177906.htm
|
|
1192083 |
clevelandcavs.com |
Cavaliers Operating
Company LLC et al v BWI Domains c/o Domain Manager |
http://domains.adrforum.com/domains/decisions/1192083.htm |
|
1199010 |
soyad.com |
Hercules Incorporated
v BWI Domain Manager c/o Domain Manager |
http://domains.adrforum.com/domains/decisions/1199010.htm
|
|
1208358 |
bloodydisgusting.com |
Bloody Disgusting, LLC
v BWI Domain Manager c/o Domain Manager |
http://domains.adrforum.com/domains/decisions/1208358.htm
|
|
1211095 |
americanspiritarms.com |
JPS Manufacturing, LLC
v BWI Domains c/o Domain Manager |
http://domains.adrforum.com/domains/decisions/1211095.htm
|
|
1217153 |
canasa.com |
Axcan Pharma Inc. v
BWI Domain Manager c/o Domain Manager |
http://domains.adrforum.com/domains/decisions/1217153.htm |
|
1218043 |
mackenziechilds.com |
MacKenzie-Childs
Aurora LLC v BWI Domain Manager c/o Domain Manager |
http://domains.adrforum.com/domains/decisions/1218043.htm |
|
D2007-1717 |
jobzonen.com |
Det Berlingske Officin
A/S v. BWI Domain Manager |
http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1717.html
|
|
D2008-0342 |
genekelly.com |
Gene Kelly Image Trust
v. BWI Domain Manager |
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0342.html
|
|
D2008-0722 |
clancampbell.com |
Chivas Brothers
Limited et al v. BWI Domains/Whois Protection |
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0722.html
|
|
D2008-0905 |
telemagazine.com |
Les Publications Grand
Public PGP v. BWI Domains |
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0905.html
|
|
D2008-0915 |
nationalrentafence.com |
National Construction
Rentals, Inc. v. BWI Domains, Domain Manager |
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0915.html |
The Domain Name
Is Identical or Confusingly Similar to Complainant’s Trademark
(ICANN
Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i))
[i]
Complainant has provided evidence demonstrating its
rights in its mark, including webpages offering its THE ARTFUL DODGER goods for
sale, and its trademark registration in the
[j] The <artfuldodger.com> domain name is confusingly similar to Complainant's THE ARTFUL DODGER mark. The omission of the term "THE" in the domain name is inconsequential. See e.g., The North Face v. Sand Webnames - For Sale, FA 94722 (comparing THE NORTH FACE and northface.com). The addition of the gTLD “.com” is irrelevant when comparing a domain name to a mark, and does nothing to overcome identity or confusing similarity. See, e.g., Burnham Corp. v. Domain Research and Sales, Case No. FA 102741 (stating that generic top-level domains, such as ‘.com,’ are inconsequential when considering Policy ¶4(a)(i)).
[k] Therefore, Complainant has established that it has rights to its marks, and that the domain name <artfuldodger.com> is confusingly similar to its THE ARTFUL DODGER trademark.
(ICANN Rule
3(b)(ix)(2); ICANN Policy ¶4(a)(ii))
[l] Before any notice of the Respondent of the dispute, Respondent did not use, or make 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. ICANN Policy 4(c)(i). Neither Complainant nor its predecessor-in-interest authorized Respondent to register the domain name or use the mark. Respondent’s mere registration of a domain name, by itself, does not create a right or legitimate interest in the domain name for purposes of the Policy. See, e.g., Gallup, Inc. v. Heejo Kim, FA96081.
[m] Respondent's use of a domain name that is identical or confusingly similar to Complainant's mark to attract Internet users to its website in order to gain potential customers is neither bona fide nor legitimate because Respondent is trading upon the reputation of Complainant's mark.
[n] Respondent is not 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. ICANN Policy 4(c)(iii). Respondent’s use of the domain name to generate revenue via sponsored links to third-party websites is clearly commercial and not fair use.
[o] Respondent has not been commonly known by the name “ARTFULDODGER” or "artfuldodger.com" pursuant to ICANN Policy 4(c)(ii).
[p] Therefore, Respondent has no rights or legitimate interests in <artfuldodger.com> under the factors set forth in the ICANN Policy.
The
Domain Name Was Registered and Is Being Used in Bad Faith
(ICANN
Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii))
[q] By using <artfuldodger.com>, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, and to the other websites linked therefrom, by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website. This constitutes registration and use of the domain name in bad faith under the Policy. ICANN Policy 4(b)(iv); see, e.g., Bose Corporation v. DN4Ever, Case No. FA 842094.
[r] As evidenced by the numerous UDRP decisions against Respondent, Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trademarks from reflecting the marks in corresponding domain names. This constitutes registration and use in bad faith under the Policy. ICANN Policy 4(b)(ii).
B. Respondent failed to submit a Response in this proceeding.
Complainant, Artful Holdings
LLC, registered the THE ARTFUL DODGER mark (Reg. No. 2,274,690 issued February
1, 2002) with the United Kingdom Intellectual Property Office (“UKIPO”) in
connection with casual clothing.
Complainant maintains its official website at the
<artfuldodgercollection.com> domain name and sells its clothing through
third-party websites.
Respondent registered the <artfuldodger.com> domain name on April 29, 2003. The disputed domain name resolves to a website with links to third-party websites, some of which compete with Complainant’s business.
Respondent has been the respondent in other UDRP proceedings
where the domain name was transferred from the respondent to the complainant in
those cases. See, e.g., Stunt Dynamics v.
BWI Domains c/o Domain Manager, FA 1226425 (Nat. Arb. Forum Oct. 9, 2008); see also Bloody Disgusting, LLC v. BWI
Domain Manager c/o Domain Manager, FA 1208358 (Nat. Arb. Forum June 25,
2008); see also National Constr. Rentals,
Inc. v. BWI Domains, Domain Manager,
D2008-0915 (WIPO Aug. 5, 2008).
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 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.
The Panel finds Complainant’s registration of its THE ARTFUL DODGER mark with the UKIPO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The <artfuldodger.com>
domain name is confusingly similar to its THE
ARTFUL DODGER mark. The disputed domain
name incorporates the major features of the mark, omitting “the” and adding the
generic top-level domain (“gTLD”) “.com.”
The addition of a gTLD is immaterial to Policy ¶4(a)(i) analysis. See 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); 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.”). The mere
omission of “the” renders the disputed domain name confusingly similar pursuant
to Policy ¶4(a)(i). See Saul Zaentz Co. v. Dodds,
FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the
definite article “the” and the preposition “of” from the complainant’s mark and
thus, failed to “sufficiently distinguish the domain name from the mark
pursuant to Policy ¶4(a)(i)”); see also Mega Soc. v. LoSasso, FA 215404
(Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain
names were identical or confusingly
similar to the complainant's THE MEGA SOCIETY mark).
The Panel finds Policy ¶4(a)(i) satisfied.
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have any rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). 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”). The Panel finds Complainant has presented a prima facie case.
The Panel finds no evidence in the record suggesting Respondent is commonly known by the <artfuldodger.com> domain name. Respondent has no license or agreement with Complainant authorizing Respondent to use the THE ARTFUL DODGER mark, and the WHOIS information identifies Respondent as “BWI Domain Manager a/k/a Domain Manager.” Thus, Respondent has not established rights or legitimate interests in 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s is using the disputed domain name, which is confusingly similar to Complainant’s THE ARTFUL DODGER mark, to redirect Internet users interested in Complainant’s products to third-party websites and to collect parking referral fees. The third party websites are both unrelated and in competition with Complainant’s business. The Panel finds this use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii). See 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); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has been the respondent in previous UDRP decisions wherein the disputed domain names were transferred to the respective complainants in those cases. See, e.g., Hercules Inc. c/o Sandra D. Dobbs v. BWI Domain Manager c/o Domain Manager, FA 1199010 (Nat. Arb. Forum June 12, 2008); see also Krause Publ’n, Inc. v. BWI Domains, D2008-1352 (WIPO Oct. 28, 2008); see also American Girl, LLC v. BWI Domain Manager, FA 1104431 (Nat. Arb. Forum Nov. 12, 2007). The Panel finds that these previous decisions demonstrate a pattern of bad faith registration and use under Policy ¶4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent is using the <artfuldodger.com>
domain name, which is confusingly similar to Complainant’s THE ARTFUL DODGER mark, to redirect Internet
users to Respondent’s website that features links to third-party sites, some of
which compete with Complainant’s business.
The Panel finds this use constitutes disruption and is evidence of bad
faith registration and use pursuant to Policy ¶4(b)(iii). See 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); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy
¶¶4(b)(iii) [and] (iv).”).
The Panel infers
Respondent receives click-through fees for diverting Internet users to
third-party websites. Because
Respondent’s domain name is confusingly similar to Complainant’s THE ARTFUL DODGER mark, Internet users accessing Respondent’s disputed domain name may become
confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <artfuldodger.com> domain name constitutes bad faith registration and use
pursuant to Policy ¶4(b)(iv). See
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); see also AltaVista Co.
v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy
¶4(b)(iv) where the respondent’s domain name resolved to a website that offered
links to third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
The Panel finds Policy ¶4(a)(iii) 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 <artfuldodger.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: December 16, 2008
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