Ben Sherman Group Limited v. Eagle Web Assets Inc. c/o Ryan Eagle
Claim Number: FA0811001235006
Complainant is Ben Sherman Group Limited (“Complainant”), represented by Jessica
E. Jacob of Alston & Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <benshermanstore.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 20, 2008; the National Arbitration Forum received a hard copy of the Complaint November 20, 2008.
On November 20, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <benshermanstore.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has 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 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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@benshermanstore.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 16, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 <benshermanstore.com> domain name is confusingly similar to Complainant’s BEN SHERMAN mark.
2. Respondent has no rights to or legitimate interests in the <benshermanstore.com> domain name.
3. Respondent registered and used the <benshermanstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ben Sherman Group Limited, has used its BEN SHERMAN mark in connection with the marketing and distribution of its branded sportswear, footwear, tailored clothing and accessories since at least as early as 1969. Complainant holds a registration of its BEN SHERMAN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,104,981 issued October 14, 1997).
Respondent registered the <benshermanstore.com> domain name July 31, 2008. The disputed domain name previously resolved to a website that displayed Complainant’s mark and products. In response to Complainant’s cease-and-desist letter, Respondent removed all content on the website resolving from the <benshermanstore.com> domain name and is now inactively holding the disputed domain name.
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."
Given 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 will draw such inferences as the Panel 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 to 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 that Complainant established rights in the BEN SHERMAN mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the USPTO. See 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.”); 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.").
Respondent’s disputed domain name, <benshermanstore.com>, contains Complainant’s entire mark and merely adds the generic term “store.” The Panel finds that the addition of this generic term does not distinguish the disputed domain name from Complainant’s mark for the purposes of confusing similarity under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also 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 finds that
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
In the beginning, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the <benshermanstore.com> domain name. Next, the burden shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie showing under Policy ¶ 4(a)(ii). 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Because Respondent has not responded to the allegations of Complainant, the Panel may presume that Complainant’s allegations are true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel chooses to review the Policy ¶ 4(c) elements to determine if Respondent has rights or legitimate interests.
Respondent’s <benshermanstore.com> domain name resolved to a website that displayed
Complainant’s mark and products, creating the impression that Complainant was
somehow affiliated with the disputed domain name and its corresponding
website. Thus, the Panel finds that this
was a diversion of Internet users to Respondent’s website 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 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 Summit Group, LLC v. LSO,
Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the
respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect
Internet users to respondent’s own website for commercial gain does not
constitute either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Furthermore, the WHOIS information, which lists Respondent
as “Eagle Web Assets Inc. c/o Ryan Eagle,”
indicates that Respondent is not commonly known by the <benshermanstore.com> domain name. Without evidence to the contrary, the Panel
finds that Respondent is not commonly known by the <benshermanstore.com> 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).
Finally, Complainant asserts that Respondent, in response to
Complainant’s cease-and-desist letter, has removed all content on the website
resolving from the <benshermanstore.com>
domain name and is now inactively holding the disputed domain name. The Panel therefore finds that Respondent’s
inactive holding of the disputed domain name does not establish rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that the respondent made preparations
to use the domain name or one like it in connection with a bona fide
offering of goods and services before notice of the domain name dispute, the
domain name did not resolve to a website, and the respondent is not commonly
known by the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's [inactive] holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s confusingly similar <benshermanstore.com> domain name resolved to a website that displayed Complainant’s mark and products. The Panel finds that this redirection of Internet users disrupted Complainant’s business and supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See 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).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Moreover,
Respondent was using the confusingly similar <benshermanstore.com> domain name to display
Complainant’s mark and products. The
Panel infers that this was done for commercial gain. The Panel
finds that this creates a likelihood of confusion as to Complainant’s
affiliation with the <benshermanstore.com>
domain name and is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
Finally, the Panel finds that
Respondent’s current lack of use of the <benshermanstore.com> domain name constitutes an inactive
holding of the disputed domain name and is evidence of bad faith registration
and use under Policy ¶ 4(a)(iii). See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding
that the respondent’s inactive holding of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use
of the domain name or website that connects with the domain name, and that
inactive holding of a domain name permits an inference of registration and use
in bad faith).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benshermanstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 30, 2008
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