TXDC, L.P. v. RT Overseas Inc.
Claim Number: FA0908001277768
Complainant is TXDC, L.P. (“Complainant”), represented by Deborah
L. Lively, of Thompson & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <onzale.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2009.
On August 6, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <onzale.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 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 postmaster@onzale.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <onzale.com> domain name is confusingly similar to Complainant’s ZALES mark.
2. Respondent does not have any rights or legitimate interests in the <onzale.com> domain name.
3. Respondent registered and used the <onzale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TXDC, L.P., is a
subsidiary of Zales Corporation, which operates more than 2,200 retail jewelry
stores throughout
Respondent registered the <onzale.com> domain name on May 14, 2007. The disputed domain name resolves to a website that sells rings, bracelets, earrings, other jewelry that are in direct competition with Complainant’s jewelry business.
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 sufficiently
established rights in the ZALES mark under Policy ¶ 4(a)(i) through its
evidence of several registrations of the mark held by Complainant with the
USPTO (i.e., Reg. No. 720,467 issued August 22,
1961).
Respondent’s <onzale.com>
domain name contains a substantial portion of Complainant’s ZALES mark by eliminating
the “S” contained in the mark. The
disputed domain name also adds the generic term “on” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the <onzale.com> domain
name is confusingly similar to Complainant’s ZALES mark under Policy ¶ 4(a)(i)
because none of Respondent’s alterations to Complainant’s mark sufficiently
distinguish the disputed domain name from Complainant’s mark. See Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS
STORE mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July
21, 2006) (finding that the <theotheraol.com> and <theotheraol.net>
domain names were confusingly similar to the AOL mark, as the addition of
common terms to a mark does not distinguish the domain names from the mark); see also Jerry
Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Upon making such a sufficient showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
The WHOIS information for the <onzale.com> domain name lists “RT Overseas Inc.” as the registrant. Respondent has offered no evidence to suggest that it is commonly known by the disputed domain name. Moreover, Complainant has not granted permission for Respondent to use or license the ZALES mark. Therefore, the Panel finds that Respondent is not commonly known by the <onzale.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The <onzale.com> domain name resolves to a website that sells products that directly compete with Respondent’s jewelry business. The Panel finds that Respondent’s competing use of the confusingly similar disputed domain name does not represent a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <onzale.com> domain name was registered on May 14, 2007, which is over forty-five years after Complainant received a registration of its ZALES mark on August 22, 1961. The disputed domain name resolves to a website that sells competing products such as rings, necklaces, and bracelets. The Panel finds that this competing use of the disputed domain name by Respondent disrupts Complainant’s business. The Panel further finds that Respondent’s competing use of the confusingly similar <onzale.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Moreover, the Panel finds that Respondent’s conduct in
operating a competing business on the website resolving from the <onzale.com> domain name creates a
likelihood of confusion as to Complainant’s affiliation with the disputed
domain name for a commercial gain.
Therefore, the Panel finds that Respondent’s actions constitute 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 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).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onzale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 15, 2009
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