Williamson-Dickie Manufacturing Company v. Daryl Martens c/o Dynadot Privacy
Claim Number: FA0906001269636
Complainant is Williamson-Dickie
Manufacturing Company (“Complainant”), represented by Jeffrey W. Storie, of Decker Jones McMackin McClane Hall &
Bates, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dickiesclothing.com>, registered with Dynadot, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On June 22, 2009, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <dickiesclothing.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 June 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 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 postmaster@dickiesclothing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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 <dickiesclothing.com> domain name is confusingly similar to Complainant’s DICKIE’S mark.
2. Respondent does not have any rights or legitimate interests in the <dickiesclothing.com> domain name.
3. Respondent registered and used the <dickiesclothing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1922, Williamson-Dickie Manufacturing Company (“Complainant”) has produced and distributed a wide variety of durable work clothing throughout the world. Complainant is the owner of the DICKIE’S mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 594,541 issued August 31, 1954). Complainant uses its DICKIE’S mark in connection with the marketing and sales of pants, overalls, gloves, and other work attire.
Respondent registered the <dickiesclothing.com>
domain name on
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 draw such inferences it 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 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.
The Panel finds that Complainant has established rights in
the DICKIE’S mark for the purposes of Policy ¶ 4(a)(i) through its registration
of the mark with the USPTO. See Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb. Forum
Complainant contends that Respondent’s <dickiesclothing.com>
domain name is confusingly similar to its DICKIE’S mark under Policy ¶
4(a)(i). The disputed domain name incorporates
Complainant’s DICKIE’S mark with the omission of the apostrophe, the addition
of the descriptive term “clothing,” which describes Complainant’s clothing business,
and the affixation of the generic top-level domain “.com.” The Panel finds that under Policy ¶ 4(a)(i),
a domain name is not differentiated from a mark based on the addition of a
descriptive word or the omission of an apostrophe. Furthermore, the Panel finds that the affixation
of the generic top-level domain “.com” does nothing to distinguish a domain
name from a mark because all domain names must include a top-level domain. See
LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA
203944 (Nat. Arb. Forum
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <dickiesclothing.com> domain name. Complainant must first establish its prima facie case to support these contentions, and the Panel finds that Complainant has done so in these proceedings. Once Complainant has produced a sufficient prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <dickiesclothing.com> domain name under Policy ¶ 4(c). Respondent failed to submit a response in these proceedings, thus the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name. However, the Panel will review the record to determine whether Respondent has any rights or legitimate interests in the <dickiesclothing.com> domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the [UDRP] requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
The disputed domain name resolves to a commercial website
where Complainant’s products are offered for sale under its DICKIE’S mark. The disputed domain name’s resolving website incorporates
Complainant’s graphics and logos as well as the inclusion of the phrase
“official DICKIE’S.” Complainant
contends that Respondent is attempting to pass itself off as Complainant for
financial gain. The Panel finds that
such use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Nokia Corp. v. Eagle, FA
1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the
disputed domain name to pass itself off as the complainant in order to
advertise and sell unauthorized products of the complainant was not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(iii)); see also Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb.
Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
Moreover, Complainant contends that Respondent is not commonly known by the disputed domain name and is not authorized to use the DICKIE’S mark. The WHOIS information identifies the registrant as “Daryl Martens c/o Dynadot Privacy.” This evidence, together with the fact that Respondent has failed to present any evidence to the contrary, establishes the Panel’s conclusion that Respondent is not commonly known by the <dickiesclothing.com> domain name under Policy ¶ 4(c)(ii). See 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); see also. St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has registered and is
using the confusingly similar domain name to attract Internet users to
Respondent’s website offering Complainant’s products for sale. The Panel concludes that Respondent is
misappropriating Complainant’s DICKIE’S mark to divert Internet users to
Respondent’s competing website. The
Panel finds that Respondent is likely disrupting Complainant’s business and
Respondent’s conduct constitutes bad faith registration and use under Policy ¶
4(b)(iii). See Fossil, Inc. v. NAS,
FA 92525 (Nat. Arb. Forum
Respondent uses a confusingly similar variation of
Complainant’s DICKIE’S mark within the <dickiesclothing.com>
domain name to attract unsuspecting Internet users looking for Complainant’s
website to Respondent’s website that offers Complainant’s goods for sale. Respondent commercially benefits from this
diversion scheme. Thus, the Panel finds
Respondent registered and used the <dickiesclothing.com> domain
name in bad faith under Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that
the respondent’s use of the <compaq-broker.com> domain name to sell the
complainant’s products “creates a likelihood of confusion with Complainant's
COMPAQ mark as to the source, sponsorship, or affiliation of the website and
constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum
Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain
name to sell the complainant’s products without permission and mislead Internet
users by implying that the respondent was affiliated with the complainant).
Complainant contends that Respondent is using the disputed domain name and the resolving website in an attempt to pass itself off as Complainant. The disputed domain name contains the phrase “official DICKIE’S,” which adds more credence to Complainant’s contentions. Thus, the Panel finds that Respondent’s use of the disputed domain name to pass itself off as Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is commercially benefiting from the goodwill surrounding Complainant’s mark. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . .”).
Complainant has satisfied 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 <dickiesclothing.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 4, 2009
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