National Arbitration Forum
Deb Shops, Inc. and D.B. Royalty, Inc. v. M S
Claim Number: FA0812001239510
Complainant is Deb Shops, Inc. and D.B.
Royalty, Inc. (“Complainant”), represented by Kevin
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <debs.com>, registered with Network Solutions, and <debs.ws>, <debs.biz>, and <debs.mobi>, registered with GoDaddy.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.
Timothy D. O’Leary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 23, 2008.
On December 22, 2008, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <debs.com> domain name is registered with Network Solutions, and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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”).
Also on December 22, 2008, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <debs.ws>, <debs.biz>, and <debs.mobi> domain names are registered with GoDaddy.com, and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On January 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 27, 2009 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on January 26, 2009.
A timely Additional Submission was received.
A timely Response to Additional Submission was received.
An Additional Submission was submitted by Complainant on February 12, 2009, and was determined to be deficient. The Panel has not chosen to consider this Additional Submission in its Decision.
On February 2, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainants Deb Shops, Inc. and D.B. Royalty, Inc. (collectively “Deb Shops”), have used their trademarks, including the marks DEB and DEB SHOPS, continuously for more than 30 years in connection with the sale of women’s clothing and accessories. Deb Shops operate approximately 337 specialty apparel stores in 42 states under the DEB name, with net sales of approximately $300 million a year.
Deb Shops’ interests include
www.debshops.com www.debshops.us www.debshops.biz www.debshops.net www.debshops.info
Deb Shops’ trademarks, including DEB and DEB SHOPS, have obtained regional and national prominence in the market for women’s clothing and accessories. The trademarks and the associated goodwill are important assets of complainants.
Respondent’s domain names are identical or confusingly similar to Deb Shops’ Marks.
Respondent’s domain names, <debs.com><debs.ws><debs.biz><debs.mobi>, and <debs.us> (collectively referred to as <debs.com>”) are identical or confusingly similar to Deb Shops’ DEB and DEB SHOPS trademarks. Deb Shops’ customers are likely to reach <debs.com> when searching for Deb Shops’ websites or as a result of typographical errors. Moreover, the likelihood of customer confusion is increased by Respondent’s use of Deb Shops’ trademarks on <debs.com>, and the advertisement of confusingly similar goods on Debs.com. For example, Respondent’s website currently advertises “Debs Prom Dresses,” sold not by Deb Shops, but by Deb Shops’ competitors on <shopzilla.com>.
Respondent does not sell goods or services in connection with the names “deb” or “deb shop,” but seeks to capitalize on those marks by deriving revenues through referring customers seeking Deb Shops’ apparel to third-party websites. Respondent has no trademark or service mark rights in the “deb” and “deb shop” marks, and is not commonly known by these marks. Having no rights in the marks at issue, and Offering no goods and services, Respondent simply attempts to profit from misleadingly diverting customers to the third-party websites of Deb Shops’ competitors.
Respondent’s use of domain names that are identical or confusingly similar to Deb Shops’ marks to divert Internet users to a website that links to third-party websites, and for which Respondent presumably receives click-through fees, is not a bona fide offering of goods or services pursuant to ICANN Policy 4(c)(i); nor is it a legitimate noncommercial or fair use pursuant to ICANN Policy ¶ 4(c)(iii). See Emmit Smith, III v. EmmitSmith.com, FA 555486 (Nat. Arb. Forum Oct. 26, 2005) (citing Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Respondent has intentionally attempted to attract, for commercial gain, Internet users to <debs.com> by creating a likelihood of confusion with Deb Shops’ marks as to the source, sponsorship, affiliation, or endorsement of <debs.com>. Respondent presumably receives commissions for diverting Internet users to third-party websites via the links located on its website, and therefore encourages and profits from customer confusion.
First, Respondent registered its domain names after Deb Shops began using its DEB and DEBSHOPS trademarks in connection with the sale of women’s clothing and accessories over thirty years ago. Deb Shops’ trademark registrations were issued by the United States Patent and Trademark Office well before Respondent’s use of Deb Shops’ trademarks in its domain names.
Respondent then engaged in blatant bad faith attempts to attract Internet users to <debs.com> by creating a likelihood of confusion with Deb Shops’ marks. Respondent displayed a replica of Deb Shops’ logo, reproducing the same capitalized pink and blue font used by Deb Shops’ for the mark “DEB.”
After discovering Respondent’s use of its trademarks, Deb Shops
contacted Respondent on July 1, 2008. Respondent replied on July 18, 2008,
asserting that “all ‘appropriate changes’ to the website have been made.”
<debs.com> currently links directly to the websites of Deb Shops’ direct competitors. For example, Forever21 is a similar retailer that targets teenagers seeking special event dresses and accessories. Respondent links to third-parties’ websites that sell products similar to Deb Shops at similar prices.
Causing further confusion, Respondent’s domain advertises “Deb Shop Prom Dresses” and a free “DEB” gift card from Deb Shops. Although Deb Shops is not affiliated with this offer in any way, the gift card advertised appears identical to Deb Shops’ gift cards. Gift cards sold by Deb Shops clearly display the DEB trademark and account for a substantial amount of its annual revenues. This infringement of Deb Shops’ trademarks is therefore particularly likely to result in customer confusion as to the source of the “DEB” gift cards, and, by extension, the entire website.
Customers are likely to be confused as to the source, sponsorship, or affiliation of <debs.com>and the women’s apparel advertised on <debs.com>due to Respondent’s use of Deb Shops’ trademarks. Respondent’s registration and use of <debs.com>is in bad faith and primarily for the purpose of disrupting Deb Shops’ business and profiting from Deb Shops’ marks and customer traffic.
Finally, Respondents use of misleading and incorrect registration information indicates bad faith. Providing and failing to correct, false contact details, in breach of the Respondent’s registration agreement, combined with the strong reputation of a complainant’s trademark, constitutes bad faith use of the offending domain name.
While Complainant has demonstrated ownership of US federal trademark registrations of DEB and DEB SHOPS, these registrations do not convey a monopoly or exclusive rights on the word “DEB” or indeed “DEBS” as a generic term, short for “debutante” or first name, example; short form of Debbie, Deborah, Debra, etc.
Our research tells us that with
regard to US federal trademarks, the United States Patent and Trademark Office
indicates that US Federal Registration of a Trademark is not valid outside of
the United States unless it has been filed using an “international application”
and filing it with the International Bureau of the World Property Intellectual
Organization through the USPTO. The
The likelihood of customers “accidentally” reaching <debs.com>instead of <debshops.com> due to typographical errors is irrelevant as there are no metrics of these “errors” to prove or disprove this allegation.
In conducting a web search on key words, there is evidence to support that the likelihood of customers reaching <debs.com>instead of <debshops.com> is unlikely due to Google’s search algorithm which places <debshops.com> at or near the top of page one in all cases.
All advertisements on <debs.com> are provided directly by Google. Google Adsense Ads are contextually derived and served up based on the content of the page. The titles of the ads are exclusively controlled by Google’s Adword customers. The example sited, “Debs Prom Dresses”, was served up to our website by Adwords, the title of which was supplied by Shopzilla. Notwithstanding, <debshops.com>, who have also used Adwords in pursuance of their own campaigns, advertised on the <debs.com> website in December of 2008, along side their own “competitors” within the “ads by Google” section. Shopzilla are not the only example of DEB SHOPS competitors utilizing the generic term DEBS to describe debutante dresses.
Regarding “creating a likelihood of confusion:” <Debshops.com> has recently added a “My Space” to their front page mimicking the <debs.com> front page where we have invited our friends to “meet me at my space” for over a year. DEB SHOPS, in so doing, is perpetuating its own allegation of “confusing similarities” by copying features from the debs.com site.
Prior to receiving any notice of this dispute, <debs.com> maintained a bona fide offering of goods or services through its “Amazon Store.” Through the sale of goods from the Amazon Store, the respondent received commissions on every sale. Commissionable sales from the Amazon Store totaled approximately $600.00 per month on average. When the first of the grievance correspondence was received, naively, we attempted to mitigate and work with Deb Shops Inc., and D.B. Royalty Inc. In an act of good faith and without prejudice, we removed our Amazon Store from <debs.com> on the understanding that this would satisfy the complainant.
The website <debs.com> was purchased and registered November 26, 1998 as a Christmas present for the co-owner, Debbie Worton. Debbie has been known as Debs by her family and friends for more than 40 years which is prior to the inception Deb Shops Inc., and D.B Royalty Inc. The website <debs.com> was launched December 1, 1998 more than a month prior to the launch of <debshops.com> which was January 5, 1999.
It is worthy of note that as DEB
SHOPS does not operate in the
We contend that both DEB and DEBS are a GENERIC terms. As any search of Google / eBay for “debs dresses” and/or “deb dresses” will substantiate. DEBS and DEB are generic terms like say, BRIDE or PROM. For example, the logic that is apparently being applied here is that the owner of “Bride Shops” is legally entitled to control the content of BRIDES.COM. Deb Shops Inc. is somewhat exceeding the legitimate limits of their intellectual property by claiming “DEBS” too.
The allegations of <debs.com> intentionally attempting to attract Internet users to <debs.com> by creating a likelihood of confusion is unlikely due to the Google engine algorithm. Therefore we must conclude that visitors to the site have actually typed in <debs.com> and are not there due to confusion.
We find it somewhat perplexing on the part of DEB SHOPS to describe Shopzilla as a “competitor” when DEB SHOPS is advertized on the very same shopping search engine.
To be a “sponsored link” money usually has to change hands from the advertisee to the advertiser. Therefore we contend that DEB SHOPS is a paying CUSTOMER of Shopzilla. We believe that this somewhat rescinds their competitor status.
In response to the allegation “Respondent displayed a replica of Deb Shops’ logo, reproducing the same capitalized pink and blue font used by Deb Shops’ for the mark “DEB.” This was not a replica of the logo, but is a link directly to the <debshops.com> website where the logo resides. The logo was not copied or coded in the .html code for debs.com. Clicking on it, took you to a disclaimer page where you are invited to search <debshops.com>.
We corresponded with the complainant on July 18, 2008 after receiving a cease and desist order letter. As a gesture of good faith and without prejudice, all references to the word “Deb” were removed from the site <debs.com> including the link to the aforementioned disclaimer. We believed we had substantively amended the website in a conciliatory gesture of good faith but without prejudice. The complainant was still not satisfied (in fact they used the removal of our Bona Fide Goods offering as a device against us in this UDRP complaint see section B paragraph 1) and insisted that we stop all contextual advertising on <debs.com>. We did not, and still do not, feel that this is within their rights to request.
In response to the repeated allegations of linking to DEB SHOPS direct competitors, we can only contend that our advertising was/is based on the Google contextual model and that as we have already demonstrated DEBS is a generic term.
In response to the “free gift card” allegation: Nowhere on <debs.com>does it state that the gift card is specifically from Deb Shops.
Regarding extraneous complaint re: Fraudulent registration information:
We were unaware of the error in registration information. We subscribed to private registration services offered by Network Solutions Inc. to eliminate spam and as such would have no reason to falsify records. We believed the information to be correct based on account information, not realizing this did not translate into the masked whois record. This has been corrected.
It is worthy of note that whois record authenticity is not within the remit of this dispute and we therefore assume this has no bearing on the decision; we are simply making a statement of clarification. Notwithstanding this, we wish to make it clear that falsifying a whois record behind a private registration could provide no tangible benefit to the registrant. This contention is borne out as Deb Shops, Inc., and D.B. Royality, Inc were able, unimpeded, to contact us directly through Network Solutions Inc. and there is no evidence of any actions in bad faith.
We would like to say that we have genuinely tried to act in good faith throughout both the initial correspondence and within this UDRP response.
In conclusion, the domain was not registered in bad faith and certainly has not been used in such a way for the “disruption of Deb Shops Business”. We believe we have legitimate rights to the domain <debs.com>.
A valid trademark registration for a mark such as “DEB,” which Deb Shops has demonstrated, establishes rights in that mark and identical and/or confusingly similar marks under Policy ¶ 4(a)(i). See PanaVise Products, Inc v. Hae-joon Kang, FA0608000775107 (N.A.F. Oct. 23, 2006) (registration of mark established complainant’s rights in mark, precluding respondent’s use of similar domain name).
It is also clear that the mark “DEBS” is identical or confusingly similar to Deb Shops’ registered trademark “DEB.” “A domain name is, by definition, identical or confusingly similar, when the domain name incorporates Complainant’s mark, thus creating a presumption that the domain name is affiliated with the Complainant.”
The policy properly focuses on the likelihood of confusion between domain names (<debs.com>and the trademark “DEB”).
Shoppers seeking Deb Shops’ website may type “www.debs.com” directly in the address toolbar, thinking that they will find DEB’s clothing. For this reason, the evidence presented by Respondent regarding the percentage of direct visitors to the <debs.com> website (compared to a percentage of indirect visitors) is not evidence of an absence of customer confusion.
Similarly, the likelihood of confusion between Deb Shops’ and Respondents’ domain names is not undermined by Respondents’ statements as to the placement of Deb Shops’ website in Google searches. Deb Shops has been in active discussions with Google for months to obtain better website placement and to prevent its trademarks from being used in Google AdWords advertisements. Deb Shops’ lengthy efforts to enforce and protect its trademarks and to minimize the use of its trademarks online cannot be subsequently used by Respondents to justify their wrongful use of Deb Shops’ trademarks. The factors cited by Respondents are irrelevant to the fact that Respondents are using a confusingly similar domain names to advertise Deb Shops’ competitors’ products.
Deb Shops’ rights in its trademarks
extend to this domain dispute and are not limited to only the
The complainant is not required to
obtain a registration with every trademark authority worldwide to establish
rights to a trademark in a domain dispute. Rather, “[t]he Policy makes no
distinction between localized and widespread trademark rights.” Classic Metal Roofs v. Interlock Industries,
Ltd., FA0606000724554 (N.A.F. Aug. 1, 2006); see also, UEFA v. Fuzi Furniture, D2000-0710 (WIPO Oct. 25, 2000) (complainant
need not establish exclusive rights across all territorial boundaries, only a
bona fide basis for making the complaint); AdminiSolutions,
Inc. v. Daidalos Software Engineering, supra, (the policy does not require
that the mark be registered in the country in which the respondent is located).
Therefore, Respondents’ suggestion that Deb Shops’
Respondents do not dispute that Deb Shops has superior rights to the “DEB” mark and was using it in connection with the sale of women’s clothing long before Respondents attempted to use Deb Shops’ marks in connection with the advertisement and sale of women’s clothing.
Deb Shops has been using its trademarks in connection with the sale of women’s clothing for over thirty years. Although Respondents argue that the alleged “co-owner” of the website, Debbie Worton (Debbie Worton is not and was not listed as the owner of any of the disputed domains, with any registrar, at any time), obtained the <debs.com> website approximately one month before Deb Shops launched its online website, Respondents claim neither that (i) she used the disputed domains in connection with the sale of women’s clothing, or any bona fide offering of goods or services, prior to Deb Shops’ use of the mark or the launch of its websites (Deb Shops has in fact demonstrated this to be false); and (ii) that the websites have been continuously used in connection with any bona fide offering of goods or services, let alone women’s clothing. A review of the current <debs.com> website indicates the domain is being used to generate only click- through fees from Google AdWords advertisements.
Therefore, Respondents have not established that they have rights or legitimate interests in the domain names under Policy ¶4(a)(ii).
Respondents’ statements support the evidence they used Deb Shops’ marks in bad faith. First, Respondents admit they included Deb Shops’ logo on the website <debs.com>, and admit that clicking on this logo took customers to a <debs.com> webpage. The exhibits to Deb Shops’ complaint document that a picture of Deb Shops logo was used repeatedly on the <debs.com> website, and that it referred customers not to <debshops.com>, but to <debs.com>. Respondents have not refuted this assertion.
Respondents admit that their website previously and currently contains Google advertisements for women’s clothing, and states “we can only contend that our advertising was/is based on the Google contextual model.” Regarding the “free gift card” advertised on <debs.com>, Respondents “respectfully suggest that DEB SHOPS take this matter in hand with <fashionreserve.com>.” However, Respondents own and control the <debs.com> domain name and cannot evade liability for the content of that domain by pointing to a third party such as Google or <fasionreserve.com>. (A domain owner “is responsible for the content of any webpage hosted at the disputed domain name,” and cannot evade this responsibility by pointing to a third party or an indirect relationship). Respondents choose to include Google’s AdWords advertisements on <debs.com> to profit from those advertisements, and cannot escape responsibility for the content of <debs.com> by pointing to a third party.
assert that they are not responsible for the fraudulent registration
information provided to Network Solutions, Inc., without presenting any
evidence that they are not responsible for that registration information.
Respondents listed their e-mail address as “S, M firstname.lastname@example.org,” their telephone as
a nonworking number, and their address as the nonexistent place of “Mole,
Being only one of many to hold a DEB trademark, it is questionable that Complainants have established ‘superior’ rights. There are no less than 9 live registrations of this Mark with TESS (only 2 of which apply directly or indirectly to Deb Shops Inc). Furthermore the Generic nature of the mark makes it inherently weak. However, the complainant consistently refers to Deb Shops mark “DEB” – as already established in our initial response, is a generic term. Notwithstanding this the Complainant also seeks rights to the term “DEBS”. “Debs” is also a generic term. Supporting evidence was provided in our initial response and further supported by Additional Submission Exhibit B. (ref: New York Times. December 21, 1997).
Respondent contends that Complainant-must establish “secondary meaning” and Complainant has shown no evidence of sales or services under “DEBS.”
As DEB and Deb
Shops do not trade or advertise in
Respondent does have rights and legitimate interests in the domain name for the reason that Debs Worton is the de facto common-law spouse of Marcus Symonds having co-habited for some 13 years. Her name was indeed the catalyst and purpose of the original registration and is in itself indicative of rights or legitimate interests in respect of the Domain Name. The domain was given as a Christmas present in 1998 and such gives her at very least co-ownership in the domain. Supporting evidence of her existence this can be found on <debs.com> in July of 2000 when invitations to her 40th Birthday were posted.
The website <debs.com> currently provides bona fide services. It is an informational site that provides it customers with the latest trends in fashion, shoes, hairstyles, etc., as well as articles on particular items of interest to it’s demographic, e.g. One week to Gorgeous Skin. One of the definitions of goods and services found in The US Acceptable Identification of Goods and Services Manual which identifies goods and services as the following: (38 035) Promoting the goods and services of others by providing a web site featuring coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information A 31 May 07 S N.
<debs.com> does this and more , therefore we contest that along with our Amazon Store (See reference in initial response) and our “Debs.com official merchandise,” we have proven our bona fide goods and services criteria. As a part time freelance writer, Debs has written many original articles for <debs.com> and spends in excess of 10 hours per week researching, writing and updating articles on the website.
Complainant’s assertion that “Respondents statements support the evidence they used Deb Shops’ marks in bad faith. This statement is untrue. Including a logo on the website debs.com is not evidence of bad faith. By clicking on any of the logos that appear or have appeared on <debs.com> you are taken to a specific search criteria screen where you can search for specific items e.g. dresses, only on the site that is represented by the logo. The purpose of this tool was to help <debs.com> customers refine their searches if they wished to comparison shop at any of the other websites.
We use and support Google AdWords as do many website owners, we are not unique in this aspect. As stated in our initial response, AdWords are contextual and always include references to the domain name. It would only be logical that Google Adwords serves up advertisements related to “Debs,” such as prom dresses, dresses, etc.
The fact that these alleged discussions are ongoing with Google Inc. indicate that Deb Shops have not yet reached ANY form of accommodation regarding the prevention of it’s generic trademarks from being used in Google AdWords advertisements would lead one to suspect that Deb Shops is once again overstepping the bounds of its mark. Irrespective, Deb Shops Inc. shows no evidence of this correspondence or the rather obvious response they would receive from Google Inc.
The errors in registrant information were addressed in the initial response. All registration information has been updated where possible. There have been obvious attempts made to correct the administrative error and it is irrelevant to reopen this topic again. In any event it appears that the Registrants e-mail address recorded with the Registrar does in fact represent one of the Registrants current e-mail addresses. As observed above, it was an e-mail address by which the Complainant was able to make contact with the Registrant in these proceedings. It is worth noting that no evidence exists that any errors displayed intent to mimic the information of the Complainant.
Any contention of this can be taken up with the registrar as all registration information was correct at the time of registration. These errors are indicative of inexperience with domain control panels rather than bad faith.
These are tough economic times. It would seem that Deb Shops Inc., and D.B. Royalty Inc. has resorted to plagiarizing items on <debs.com> to use for the launch of their new website look. The new logo/mark appears to be yet another attempt to create “confusing similarity” where none existed before. The “new” logo/mark is in stylized lower case lettering similar to that of the <debs.com> logo and the use of their “flower” imitates the daisy logo <debs.com> uses.
These new logo/marks are currently pending with TESS lodged on December 30th 2008 and Jan 7th 2009 AFTER the commencement of this domain dispute
We were intrigued to hear of a new website launch coming February 3, 2009. Suddenly the reasoning behind this dispute is becoming apparent.
<debs.com> is a top level domain name. It is currently valued in excess of $71,000 US. The timing of this dispute, the submission of the new logo/marks and the launch of the new website “look” would lead on to believe that they are expecting to have our top level domain transferred to them. The initial cease and desist correspondence leveraged in the original complaint may be construed as an attempt to bully the Respondents into a weaker position prior UDRP proceedings.
Debs.com has been active on the web since 1998 and we’re sure that Deb Shops has known about for us many years. The timing is suspicious.
We, the Respondents, respectfully request that the panel conclude that the Complainant is guilty of an attempt to reverse hi-jack the subject domain name.
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 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 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 or confusingly similar 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; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Relevant Domain Names in this Case
The disputed domain names in this case are <debs.com>, <debs.ws>, <debs.biz>, and <debs.mobi>, which are governed by the UDRP. However, in its Complaint, Complainant also references <debs.us>, which is governed by the usDRP. Because this domain name is governed by a different rule set, it will not be considered in this Decision.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
The Panel finds that Complainant has established rights in the DEB mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,003,568 issued January 28, 1975). 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.”).
Complainant asserts that the <debs.com>, <debs.ws>, <debs.biz>, and <debs.mobi> domain names are confusingly similar to its DEB mark because all of the disputed domain names contain Complainant’s entire mark, add the letter “s” to the end of the mark, and add the top-level domains (“TLDs”), respectively, “.com,” “.ws,” “.biz,” and “.mobi.” The Panel finds that these additions do not distinguish the disputed domain names from Complainant’s mark, and thus finds that the disputed domain names are confusingly similar to Complainant’s mark 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 T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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).
While Respondent contends that the <debs.com>, <debs.ws>, <debs.biz>, and <debs.mobi> domain names are comprised of a generic term and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)).
Rights or Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that all of the <debs.com>, <debs.ws>, <debs.biz>, and <debs.mobi> domain names resolve to the same website. Complainant further contends that the resolving website displays its mark, sells products in that are in direct competition with Complainant, and displays several hyperlinks to various third-party websites, for which, as Complainant presumes, Respondent receives “click-through” fees. The Panel finds that the Respondent’s conduct diverts Internet users to a competing commercial website, and thus, is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); 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).
Complainant contends that Respondent cannot be commonly known by the <debs.com>, <debs.ws>, <debs.biz>, and <debs.mobi> domain names because Respondent does not have any trademark rights in the DEB and DEBSHOP marks even though Respondent contends that the owner of the disputed domain names is commonly known as “Debs.” The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See SBC Commc’ns Inc. v. Bell, D2001-0602 (WIPO July 8, 2001) (“[T]he fact that a person holds a particular family name does not create an entitlement for that person use the name to compete in a line of commerce with a registered trademark holder for the same term. At the least, the person asserting the right to use a family name . . . generally will be required to modify or distinguish his name, or otherwise take adequate steps to avoid consumer confusion.”).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant asserts that Respondent displays several hyperlinks on the website resolving from the <debs.com>, <debs.ws>, <debs.biz>, and <debs.mobi> domain names in order to divert Internet users to a competing commercial site, thereby disrupting Complainant’s business. This commercial website, Complainant contends, sells competing products. The Panel finds that Respondent has disrupted Complainant’s business, and that Respondent’s actions constitute 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 Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant contends that Respondent’s alleged display of Complainant’s mark on the website resolving from the disputed domain names creates a likelihood of confusion as to Complainant’s affiliation with the <debs.com>, <debs.ws>, <debs.biz>, and <debs.mobi> domain names and its corresponding website. Complainant presumes that Respondent collects click-through fees as a direct result of this likelihood of confusion. The Panel finds this likelihood of confusion exists for Respondent’s own commercial gain, and finds that Respondent’s actions in this regard constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Reverse Domain Name Hijacking
Respondent requests that the Panel rule that Complainant is guilty of an attempt to reverse hijack the subject domain name.
The Panel has considered the submissions of the parties and finds that the request is without merit and it is therefore denied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <debs.com>, <debs.ws>, <debs.biz>, and <debs.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Timothy D. O’Leary, Panelist
Dated: February 17, 2009
National Arbitration Forum
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page