LM&B Catalogs, Inc. v. Anthony
Peppler d/b/a DNPro.com
Claim Number: FA0208000123894
PARTIES
Complainant
is LM&B Catalogs, Inc., Tucson,
AZ (“Complainant”) represented by Devin
Odell, of Brown and Bain. Respondent is Anthony Peppler d/b/a DNPro.com, Fort Wayne, IN
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <brownstonestudio.com>,
registered with Tucows, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 27, 2002; the Forum received a hard copy of the
Complaint on August 30, 2002.
On
August 28, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <brownstonestudio.com> is
registered with Tucows, Inc. and that Respondent is the current registrant of
the name. Tucows, Inc. verified that
Respondent is bound by the Tucows, 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 3, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 23, 2002, 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@brownstonestudio.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 15, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. Respondent’s <brownstonestudio.com>
domain name is identical to Complainant’s registered BROWNSTONE STUDIO
mark.
2. Respondent has no rights or legitimate
interests in the <brownstonestudio.com> domain name.
3. Respondent registered and used the <brownstonestudio.com>
domain name in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant holds numerous registrations
with the United States Patent and Trademark Office (“USPTO”) for the BROWNSTONE
STUDIO mark, denoting its “retail clothing store services.” More specifically,
Complainant holds U.S. Registration Number 1,165,943 for its BROWNSTONE STUDIO
mark, registered on the Principal Register of the USPTO on August 18, 1981,
with first use designated as April 15, 1973.
Complainant has used the BROWNSTONE
STUDIO mark continuously since 1973 in connection with retail and catalog sales
of clothing. Since acquisition, Complainant has mailed more than thirty million
catalogs and has spent more than seventeen million dollars in promotional
costs, resulting in more than 500,000 orders. In fiscal year 2000, Complainant
mailed more than thirteen million catalogs and other promotional items at a
cost of more than eight million dollars.
Respondent registered the <brownstonestudio.com>
domain name on May 6, 2001. Complainant’s investigation into Respondent’s
use of the subject domain name indicates that it resolves to a website
consisting of links to other websites, including those of Complainant’s
competitors. Further, in correspondence between Complainant’s counsel and
Respondent’s counsel, Respondent requested that an offer be made to purchase
the domain name. More specifically, Complainant’s evidence records the
transaction as: “Did you have an offer for me to present to my client?” Respondent is not licensed by Complainant
and has no authority to use the BROWNSTONE STUDIO mark in connection with the
offering of goods or services.
Complainant’s Submission also indicates
that Respondent has engaged in a pattern of registering domain names that are
similar to others’ trademarks or service marks. See, e.g., Am. Online, Inc.
v. Anthony Peppler d/b/a/ RealTimeInternet.com, FA 103437 (Nat. Arb. Forum
Feb. 22, 2002) (Respondent registered the following infringing domain names:
<aol7.com>, <aolnick.com>, <aolpogo.com>,
<aolmediaplayer.com>, <aolprofile.com>, <mailaol.com>,
<mapquesst.com>, <mapcrest.com>, <icqprograms.com>, <icqdownloads.com>,
<americans-online.com> and <digitacity.com>); see also CEC
Entm’t, Inc. v. Anthony Peppler a/k/a RealTimeInternet.com, Inc., FA 104208
(Nat. Arb. Forum March 21, 2002) (Respondent registered <cuckcheese.com>
and was found to be infringing on Complainant’s CHUCK E. CHEESE mark).
DISCUSSION
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
will draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the Rules.
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 established in this
proceeding that it has rights in the BROWNSTONE STUDIO mark through
registration with the USPTO and by continuous use of the mark in commerce since
May 1, 1973.
The domain name registered by Respondent,
<brownstonestudio.com>, is identical to Complainant’s BROWNSTONE
STUDIO registered mark. Respondent’s domain name incorporates Complainant’s
mark in its entirety, failing to significantly deviate by any relevant factor.
Furthermore, because spaces are impermissible in domain names and top-level
domains, such as “.com,” are required, neither factor is regarded as pertinent
when conducting a Policy ¶ 4(a)(i) analysis. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent failed to submit a
Response in this proceeding, Complainant’s reasonable inferences will be
regarded as true. Respondent’s failure to contest or refute Complainant’s
assertions not only implies that Complainant’s Submission is truthful, but that
logical conclusions drawn from those assertions are also accurate. See 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”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14,
2000) (drawing two inferences based on Respondent’s failure to respond: (1)
that Respondent does not deny the facts asserted by Complainant, and (2)
Respondent does not deny conclusions that Complainant asserts can be drawn from
the facts).
As stated, uncontested evidence indicates
that Respondent’s domain name resolves to an empty website, but for the links,
some of which represent competitors of Complainant. Respondent’s domain name
has resolved to this website for over a year.
Taken in conjunction with other relevant circumstances, this does not
give rise to rights or legitimate interests in the disputed domain name. Not
only is it evident that Respondent intends to divert Internet users searching
for Complainant’s products and services to competing websites, but it also is
apparent that Respondent registered the subject domain name with the intent to eventually
transfer its rights to Complainant. Respondent’s motivations are evidenced by
its attempted negotiation of a sales offer for the domain name registration.
This also does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it does not represent a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website); see
also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that
Respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names).
No evidence before the Panel suggests that
Respondent is commonly known by the <brownstonestudio.com> domain
name pursuant to Policy ¶ 4(c)(ii). Complainant’s unrefuted evidence indicates
Respondent is a habitual infringer of famous trademarks and service marks,
reinforcing a finding that Respondent, Anthony Peppler, has no legitimate
connection with the subject domain name. Furthermore, Respondent is not
authorized or licensed to use Complainant’s BROWNSTONE STUDIO mark, or any
variation thereof. Respondent has no rights or legitimate interests in a domain
name that is identical to Complainant’s mark. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; and (3) Respondent
is not commonly known by the domain name in question).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Circumstances
also indicate that Respondent registered the domain name in order to prevent
Complainant from reflecting its BROWNSTONE STUDIO mark in a corresponding
domain name. Respondent’s domain name incorporates Complainant’s mark in its
entirety and it is conceivable that Complainant’s rights are affected by
Respondent’s registration of Complainant’s mark in the subject domain name.
Furthermore, Complainant’s Submission establishes Respondent’s “pattern of such
conduct” by listing numerous instances where Respondent has previously engaged
in registering infringing domain names. Respondent’s registration and use of
the <brownstonestudio.com> domain name constitutes bad faith under
Policy ¶ 4(b)(ii). See Armstrong
Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
(finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple
domain names that infringe upon others famous and registered trademarks); see
also Australian Stock Exch. v. Cmty.
Internet (Australia), D2000-1384 (WIPO
Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent
registered multiple infringing domain names containing the trademarks or
service marks of other widely known Australian businesses).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <brownstonestudio.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 29, 2002.
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