eLuxury.com Inc. v. David c/o David David
Claim Number: FA0902001249699
Complainant is eLuxury.com Inc. (“Complainant”), represented by Cecilia
C Ogbu, of Folger Levin & Kahn LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eluxuryoutlet.com>, registered with Enom, Inc.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2009.
On February 26, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <eluxuryoutlet.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 23, 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 by e-mail.
A Response was received in electronic copy dated March 4, 2009 prior to the Response deadline; however no hard copy was received, until April 9, 2009. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
On March 30, 2009 an additional submission was filed on behalf of Complainant. The submission is in compliance with Supplemental Rule 7, and is considered by the panel.
On March 27, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant eLuxury.com Inc., of
Complainant contends that the domain at issue <eluxuryoutlet.com> is confusingly similar to Complainant’s federally registered ELUXURY marks. Complainant contends that the disputed domain incorporates Complainant’s mark in its entirety, adding only one additional term “outlet”. Complainant contends that Respondent has no rights or legitimate interests in the domain name stating that Respondent is not commonly known by the domain name, and registered the domain name under the name “David c/o David David”. Complainant contends that Respondent’s use of the domain name does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name because Respondent intentionally adopted the domain name in order to mislead and divert consumers to a site that sells knockoffs of many of the same high end goods sold by Complainant. Further, Respondent registered the domain name in September 2007, seven years after Complainant successfully launched its ELUXURY business and website. Complainant contends that the domain names were registered and are being used in bad faith because the federal USPTO registrations were in effect prior to the domain registration, the ELUXURY mark was known for its success in online retail and Complainant sent notice to Respondent shortly after the registration of the domain. Complainant contends that Respondent’s bad faith is established by the fact that Respondent acquired and continued to use the domain name for the purpose of attracting users to its site by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement and that Respondent uses the disputed domain to operate a website that sells handbags that compete with those offered by Complainant.
Respondent submitted an email dated March 4, 2009 to the National Arbitration Forum from the address email@example.com regarding this proceeding. The content of the email correspondence consists of six lines of unintelligible characters, letters and numbers. No intelligible arguments are submitted in opposition to Claimant’s allegations.
C. Additional Submissions
Complainant submits a Reply to Respondent, claiming that Respondent’s email message is not in compliance with ICANN UDRP Rule 4 and Forum Supplemental Rule 5 because it does not contain a certification from the Respondent, and furthermore, is in violation of UDRP Rule 11 because the content is primarily in Chinese and the registration agreement with the Registrar eNOM, Inc. for this domain was in English. Complainant contends that Respondent’s March 4th email is a non-compliant response and should not be considered. Complainant also reiterates arguments made in its initial submissions.
The panel finds Complainant has established that the domain <eluxuryoutlet.com> is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is being used in bad faith. Transfer of the domain is directed to Complainant.
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.
Complainant has a prima facie burden of proving each element of the policy, regardless of the quality and intelligibility of a response. See, e.g., VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”). see also Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Nat. Arb. Forum Apr. 23, 2004) (finding that Complainant failed to meet its burden pursuant to Policy ¶ 4(a)(ii) where Complainant neglected to state how Respondent used the disputed domain name in the Complaint).
Complainant asserts its rights in the ELUXURY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant further contends that the <eluxuryoutlet.com> domain name is confusingly similar to Complainant’s ELUXURY mark despite the addition of the term “outlet” and the generic top-level domain “.com.” The <eluxuryoutlet.com> domain name is confusingly similar to Complainant’s ELUXURY mark under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant asserts that Respondent is not commonly known by the disputed domain name, and that the registrant for the disputed domain name is “David c/o David David.” Moreover, Complainant argues that Respondent has no license or permission to use Complainant’s mark in any fashion. Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent is using the disputed domain names to sell “knockoffs of products sold on Complainant’s website,” and that such use competes with Complainant’s retail business. This use fails to constitute 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). See 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)); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
Complainant argues that Respondent’s use of the disputed domain names to sell counterfeit versions of the products that it sells has disrupted its business, and that Respondent has engaged in such usage for commercial benefit in violation of Policy ¶ 4(b)(iv). Furthermore, Respondent has registered the domain with what appears to be a deliberately false name and false content information. Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eluxuryoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: April 10, 2009
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