national
arbitration forum
DECISION
St. John Knits, Inc. v. St. John Knits Wholesale
Claim
Number: FA0907001276163
PARTIES
Complainant is St. John Knits, Inc. (“Complainant”), represented by Kristine
M. Ejercito, of St. John Knits, Inc., California,
USA. Respondent is St. John Knits Wholesale (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stjohnknitswholesale.com>,
registered with Godaddy.com, Inc.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on July 28, 2009;
the National Arbitration Forum received a hard copy of the Complaint on July 30, 2009.
On July 29, 2009,
Godaddy.com, Inc. confirmed by e-mail to
the National Arbitration Forum that the <stjohnknitswholesale.com> domain
name is registered with Godaddy.com, Inc.
and that Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 5, 2009,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of August 25, 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@stjohnknitswholesale.com by
e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On August 31, 2009, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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.
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
<stjohnknitswholesale.com>
domain name is confusingly similar to Complainant’s ST. JOHN mark.
2. Respondent
does not have any rights or legitimate interests in the <stjohnknitswholesale.com> domain
name.
3. Respondent
registered and used the <stjohnknitswholesale.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, St. John Knits,
Inc., holds a registration of the ST.
JOHN mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,523,808 issued January 1, 2002). Complainant was established in 1962 and is a
manufacturer and retailer of women’s clothing and accessories.
Respondent registered the disputed domain name on November 24, 2004. The <stjohnknitswholesale.com> domain
name resolves to a website that offers Complainant’s goods without
Complainant’s authorization.
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 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.
Identical and/or Confusingly Similar
Complainant holds a registration of the ST. JOHN mark with the USPTO (Reg. No.
2,523,808 issued January
1, 2002). The Panel finds
that via this registration, Complainant has established rights in the ST. JOHN mark under Policy
¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat.
Arb. Forum Apr.
15, 2002) (finding that the complainant had established rights to
the MILLER TIME mark through its federal trademark registrations); see also Paisley Park Enters. v. Lawson, FA 384834
(Nat. Arb. Forum Feb.
1, 2005) (finding that the complainant had established rights in
the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark
with the USPTO).
The <stjohnknitswholesale.com>
domain name alters Complainant’s ST.
JOHN mark by omitting the period and space. The disputed domain name further adds the
discriptive word “knits,” which has an obvious relationship with Complainant’s
clothing business, the generic word “wholesale,” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that these changes and additions are insufficient to distinguish the <stjohnknitswholesale.com> domain
name from Complainant’s ST. JOHN
mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the
words of Complainant’s mark, as well as the addition of a gTLD does not
sufficiently distinguish the disputed domain name from the mark pursuant to
Policy ¶ 4(a)(i).”); see also Am. Express
Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the
respondent’s <amextravel.com> domain name confusingly similar to
Complainant’s AMEX mark because the “mere addition of a generic or descriptive
word to a registered mark does not negate” a finding of confusing similarity
under Policy ¶ 4(a)(i)); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business). Therefore, the
Panel finds that the disputed domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfies Policy ¶
4(a)(i).
Rights or Legitimate Interests
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the <stjohnknitswholesale.com> domain
name.
If the Panel finds that Complainant’s allegations establish such a prima
facie case, the burden shifts to Respondent to show that it does indeed
have rights or legitimate interests in the disputed domain name pursuant to the
guidelines in Policy ¶ 4(c). The
Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Since
no response was submitted in this case, the Panel may presume that Respondent
has no rights or legitimate interests in the disputed domain name. However, the Panel will still examine the
record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant contends, and the Panel finds, that Respondent
is using the disputed domain name to resolve to a website offering
Complainant’s goods without Complainant’s authorization. The Panel further finds that this use of the <stjohnknitswholesale.com> domain
name is not a bona fide offering of
goods or services or a legitimate noncommercial or fair use under Policy ¶¶
4(c)(i) and (iii), respectively. See Nat’l Collegiate Athletic Ass’n v.
Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used
to sell the complainant’s goods without the complainant’s authority, as well as
others’ goods, is not bona fide use); see also Caterpillar
Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003)
(“Respondent lacks rights in the disputed domain names because Respondent
competes with Complainant by selling Complainant's used parts without a license
from Complainant to do so.”).
Complainant contends that
Respondent is not commonly known by the <stjohnknitswholesale.com> domain name and that
Respondent does not have any license or other authorization to use its ST. JOHN mark. The Panel finds that listing Respondent as
“St. John Knits Wholesale” in the WHOIS information associated with the
disputed domain is insufficient, without more, to show that Respondent is
commonly known by the disputed domain name.
Therefore, the Panel finds that Respondent has not established rights
and legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See AOL LLC v. AIM Profiles, FA
964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed
itself as “AIM Profiles” in the WHOIS contact information, there was no other
evidence in the record to suggest that the respondent was actually commonly
known by that domain name); see also City News & Video v. Citynewsandvideo,
FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information
lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to
indicate that Respondent is, in fact, commonly known by the disputed domain
name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
The website resolving from the <stjohnknitswholesale.com> domain name, which was
registered on November
24, 2004, is a commercial website selling Complainant’s goods
without Complainant’s authorization. The
Panel finds that Respondent is disrupting Complainant’s business by operating
in direct competition with Complainant and using Complainant’s own ST. JOHN mark to do
so. The Panel finds this is bad faith
registration and use under Policy ¶ 4(b)(iii).
See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also G.D. Searle & Co. v. Celebrex
Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)
(“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”).
Given that the <stjohnknitswholesale.com>
domain name is confusingly similar to Complainant’s ST. JOHN mark, and that the resolving website
offers Complainant’s goods, Internet users would likely be confused as to
whether Complainant had authorized Respondent to sell Complainant’s goods or
use its mark. The Panel finds that
Respondent’s attempt to profit from this confusion amounts to bad faith
registration and use under Policy ¶ 4(b)(iv).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com>
domain name to offer goods competing with the complainant’s illustrates the
respondent’s bad faith registration and use of the domain name, evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(finding that the respondent acted in bad faith by registering the
<fossilwatch.com> domain name and using it to sell various watch brands
where the respondent was not authorized to sell the complainant’s goods).
The Panel finds that Complainant has satisfies Policy ¶
4(a)(iii).
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stjohnknitswholesale.com> domain
name be TRANSFERRED from Respondent to Complainant.
James
A. Carmody, Esq., Panelist
Dated: September 14, 2009
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