OLEG CASSINI, INC. v. Texas International Property Associates-NA NA
Claim Number: FA0903001251013
Complainant is Oleg Cassini, Inc. (“Complainant”), represented by J. Vincent Reppert, Esquire of Reppert Kelly, LLC, New Jersey, USA. Respondent is Texas International Property Associates- NA NA (“Respondent”), represented by Gary W. Tucker, Esquire of Law Office of Gary Wayne Tucker, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <olegcassinibridal.com>, registered with Compana, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 9, 2009.
On March 9, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <olegcassinibridal.com> Domain Name is registered with Compana, LLC and that the Respondent is the current registrant. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 1, 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 timely Response was received and determined to be complete on April 1, 2009.
On April 9, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant contends that:
1. “Oleg Cassini” is a Registered Trademark owned by Complainant for apparel, fragrance products, among other things, in the United States (and is incontestable) as well as in numerous other countries and that “Oleg Cassini” mark has been registered in the United States since 1957 for clothing under Registration Number 650,952;
2. the Oleg Cassini mark and name is very well known in the United States and throughout the world for its bridal line of couture wedding dresses as well as for its perfumes and fragrances lines;
3. the Oleg Cassini Mark has become distinctive of goods manufactured, designed and/or associated with Oleg Cassini;
4. its bridal and perfume lines are also heavily advertised in print media as well as in other mediums including the internet;
5. the Domain Name registered by Respondent is confusingly similar to Complainant’s “Oleg Cassini” Trademark; Respondent’s Domain Name incorporates and copies, in its entirety, the “Oleg Cassini” trademark, which is distinctive and well-known; the only difference between Respondent’s Domain Name and Complainant’s mark is the addition of the word “bridal;”
6. Respondent registered the Domain Name <olegcassinibridal.com> on November 27, 2004, well after the notoriety and fame of the “Oleg Cassini” mark had been established;
7. Respondent was familiar with the well-known Oleg Cassini Mark at the time it registered the Domain Name, and Respondent intentionally registered a Domain Name that is confusingly similar;
8. by providing links to third-party websites, Respondent obtained the registration and is using the Domain Name for the bad-faith purpose of intentionally attempting to attract users to its website by creating a likelihood of contusion with Complainant’s Mark;
9. upon learning of Respondent’s registration and use of the Domain Name, Complainant advised Respondent that it regarded such use as infringing demanded the transfer of the Domain Name to no avail;
10. Respondent has made no bona fide offering of goods or services;
11. Respondent is not commonly known by the name Oleg Cassini;
12. Respondent is not using the Domain Name for a legitimate noncommercial use;
13. Respondent has engaged in a pattern of registering Domain Names which incorporate the well-known trademarks of others in order to collect click-through fees, and this pattern of conduct evidences bad faith registration pursuant to Paragraph 4(b)(ii) of the Policy and Respondent’s practices have consistently been found to constitute bad faith;
14. Complainant did not authorize Respondent to register the Domain Name, nor does it maintain any licensing relationship with Respondent.
Respondent contends that:
1) it agrees to the relief requested by the Complainant and will, upon order of the Panel, do so; it offers “unilateral consent to transfer;”
2) it requests that the Panel order the immediate transfer of the disputed Domain Name.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name is confusingly similar to a trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name has been registered and are being used in bad faith.
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.
Respondent has not contested the transfer of the disputed Domain Name but instead agrees to transfer the Domain Name in question to Complainant.
Respondent has not complied with UDRP Rules 5(b)(i) and/or 5(b)(viii). Respondent did not “Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use the disputed domain name…” Rule 5(b)(i).
UDRP Rule 14 entitled “Default” provides in part (b) that “If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
The UDRP Rules thus provide that Respondent is required to specifically respond to each and every substantive, well-lead factual allegation of Complainant’s Complaint and make a certification regarding same. U.S. Federal Rule of Civil Procedure Rule 8(d) provides that, “Averments in a pleading to which a responsive pleading is required, other than those as to the amount of damages are admitted when not denied in the responsive pleading. Averments in a pleading to which no responsive pleading is required or permitted shall be taken as denied or avoided.” While the Federal Rules do not govern here, guidance may be drawn therefrom.
Complainant has set forth in simple, concise language numerous specific, factual allegations regarding its rights and the lack thereof of Respondent. Because Respondent has consciously chosen not to respond to each of these factual allegations in accordance with the Rules, each and every one of those well-lead, factual allegations shall be deemed admitted for purposes of this proceeding.
With Respondent’s admissions, Complainant has established all three of the required elements.
The Panel may also forego the traditional UDRP analysis and order an immediate transfer of the disputed Domain Name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the Domain Name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the Domain Name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the Domain Names.”).
In either event, transfer of the Domain Name is required.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <olegcassinibridal.com> Domain Name be TRANSFERRED from Respondent to Complainant.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: May 14, 2009