Mason Companies, Inc. v. Private Private c/o Private
Claim Number: FA0912001299492
Complainant is Mason Companies, Inc. (“Complainant”), represented by William Schultz, of Merchant & Gould, P.C., Minnesota, USA. Respondent is Private Private c/o Private (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shoesmall.info>, registered with GoDaddy.com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2009.
On December 17, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shoesmall.info> 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 December 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 12, 2010 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@shoesmall.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <shoesmall.info> domain name is confusingly similar to Complainant’s SHOE MALL mark.
2. Respondent does not have any rights or legitimate interests in the <shoesmall.info> domain name.
3. Respondent registered and used the <shoesmall.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mason Companies,
Inc., uses the SHOE MALL mark in connection with computerized online retail
services and mail order catalog services in the field of clothing and
footwear. Complainant holds several
registrations of the SHOE MALL with the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. No.
2,605,442 issued August 6, 2002) and a registration with the Office for
Harmonization in the Internal Market (“OHIM”) (Reg. No. 858,803 issued December
22, 1999).
Respondent registered the <shoesmall.info> domain name on February 9, 2009. The disputed domain name resolves to a website that features adult-oriented material.
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 SHOE MALL mark under Policy ¶ 4(a)(i) through its registrations of the mark with the USPTO (e.g., Reg. No. 2,605,442 issued August 6, 2002) and the OHIM (Reg. No. 858,803 issued December 22, 1999). 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 Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <shoesmall.info>
domain name contains Complainant’s entire SHOE MALL mark, replaces the space
within the mark with the letter “s,” and adds the generic top-level domain (“gTLD”)
“.info.” The Panel finds that these
alterations to Complainant’s mark do not sufficiently distinguish the disputed
domain name from Complainant’s mark. See T.R. World Gym-IP, LLC v. D’Addio,
FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the
letter “s” to a registered trademark in a contested domain name is not enough
to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a
domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that the <shoesmall.info>
domain name is confusingly similar to Complainant’s SHOE MALL mark under Policy
¶ 4(a)(i).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Upon making such a 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). The burden now shifts to Respondent, from whom no response was received. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”). Although Respondent has not made any assertions that it has rights or legitimate interests in the disputed domain name, the Panel elects to examine the record under Policy ¶ 4(c).
The WHOIS information for the <shoesmall.info> domain name does not indicate that it is commonly known by the disputed domain name. Respondent has not provided any evidence that Policy ¶ 4(c)(ii) applies in this case. Complainant asserts that it has not licensed or otherwise authorized Respondent to use the SHOE MALL mark. Therefore, the Panel finds that Respondent is not commonly known by the <shoesmall.info> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was 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).
Respondent’s <shoesmall.info> domain name resolves to a website containing adult-oriented content. The Panel finds that such a use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); see also Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent registered the <shoesmall.info> domain name on February 9, 2009, the disputed domain name has resolved to an adult-oriented website. The Panel finds that Respondent’s use of the disputed domain name in such a manner constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
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 <shoesmall.info> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 3, 2010
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