national arbitration forum

 

DECISION

 

Charlotte Russe Merchandising, Inc. v. Samir Kumar c/o samirnet -domain names for sale

Claim Number: FA1001001302325

 

PARTIES

Complainant is Charlotte Russe Merchandising, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Samir Kumar c/o samirnet -domain names for sale (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <charlotterusseclothing.com>  registered with Sitename.com Llc, and <charlotterussestores.com> registered with Galcomm, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 12, 2010.

 

On January 12, 2010, Sitename.Com Llc, confirmed by e-mail to the National Arbitration Forum that the <charlotterusseclothing.com> domain name is registered with Sitename.Com Llc and that Respondent is the current registrant of the name.  Sitename.Com Llc has verified that Respondent is bound by the Sitename.Com 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 January 12, 2010, Sitename.Com Llc, Galcomm, Inc. confirmed by e-mail to the National Arbitration Forum that the <charlotterussestores.com> domain name is registered with Galcomm, Inc. and that Respondent is the current registrant of the name.  Galcomm, Inc. has verified that Respondent is bound by the Galcomm, 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 February 2, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 22, 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@charlotterusseclothing.com and postmaster@charlotterussestores.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <charlotterusseclothing.com> and <charlotterussestores.com> domain names are confusingly similar to Complainant’s CHARLOTTE RUSSE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <charlotterusseclothing.com> and <charlotterussestores.com> domain names.

 

3.      Respondent registered and used the <charlotterusseclothing.com> and <charlotterussestores.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Charlotte Russe Merchandising, Inc., is a mall-based retailer of apparel and accessories.  Complainant has operated its mall-based stores since 1975 and now owns over five hundred different stores.  Complainant has used its CHARLOTTE RUSSE mark to offer its apparel products since it began operation.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its CHARLOTTE RUSSE mark (e.g., Reg. No. 1,485,692 issued April 19, 1988).

 

Respondent, Samir Kumar, registered the <charlotterusseclothing.com> and <charlotterussestores.com> domain names no earlier than April 17, 2008.  The disputed domain names resolve to websites containing lists of hyperlinks that resolve to third-parties, including Complainant’s competitors in the mall-based apparel store business.

 

Respondent has been the respondent in other UDRP proceedings in which disputed domain names were transferred from Respondent to the respective complainants in those cases.  See Neiman Marcus Group, Inc. v. Kumar, FA 1267257 (Nat. Arb. Forum July 22, 2009); see also Balenciaga S.A. v. Kumar, D2009-0758 (WIPO July 30, 2009).

 

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

 

Previous panels have found that a complainant establishes rights in a mark through registration of a mark with a governmental trademark authority.  Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the CHARLOTTE RUSSE mark through its registrations with the USPTO (e.g., Reg. No. 1,485,692 issued April 19, 1988).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant argues that Respondent’s <charlotterusseclothing.com> and <charlotterussestores.com> domain names are confusingly similar to Complainant’s CHARLOTTE RUSSE mark.  The disputed domain names combine Complainant’s entire mark with a descriptive term, either “stores” or “clothing,” that relates to Complainant’s apparel store business and the generic top-level domain (“gTLD”) “.com.”  The Panel finds the addition of a descrptive term is insufficient to adequately distinguish the disputed domain name from Complainant’s mark and that the addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  Therefore, the Panel concludes that Respondent’s  <charlotterusseclothing.com> and <charlotterussestores.com> domain names are confusingly similar to Complainant’s CHARLOTTE RUSSE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not have rights or legitimate interests in the <charlotterusseclothing.com> and <charlotterussestores.com> domain names.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

The WHOIS information, provided by Complainant, lists the domain name registrant as “Samir Kumar.”  Respondent fails to offer evidence contradicting this information and showing Respondent is commonly known by the <charlotterusseclothing.com> and <charlotterussestores.com> domain names.  There is no other evidence on the record showing Respondent is commonly known by the disputed domain names.  Complainant further asserts that Respondent is not authorized to use the CHARLOTTE RUSSE mark.  Therefore the Panel finds that Respondent is not commonly known by the <charlotterusseclothing.com> and <charlotterussestores.com> domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

 

Respondent’s <charlotterusseclothing.com> and <charlotterussestores.com> domain names resolve to websites featuring lists of hyperlinks, including links to Complainant’s competitors in the mall-based apparel store industry.  Complainant alleges Respondent profits from the hyperlinks through the receipt of click-through fees.  The Panel finds Respondent’s use of the confusingly similar 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 of the disputed domain name under Policy ¶ 4(c)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).

 

The Panel finds Complainant has satisfied Policy ¶ 4(c)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges Respondent’s use of the <charlotterusseclothing.com> and <charlotterussestores.com> domain names are a part of a pattern of bad faith use and registration.  Respondent has been a respondent in multiple other UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.  See Neiman Marcus Group, Inc. v. Kumar, FA 1267257 (Nat. Arb. Forum July 22, 2009); see also Balenciaga S.A. v. Kumar, D2009-0758 (WIPO July 30, 2009).  The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).

 

Previous panels have found a respondent’s use of a confusingly similar website featuring a list of hyperlinks to third-parties which compete with Complainant constitutes a disruption of a complainant’s business.  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).  Respondent’s <charlotterusseclothing.com> and <charlotterussestores.com> domain names resolve to websites that feature lists of hyperlinks to third-parties, including hyperlinks to Complainant’s competitors in the mall-based apparel store business.  The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s mall-based apparel store business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii).

 

Complainant alleges, and the Panel infers, that Respondent profits from its receipt of click-through fees from its list of hyperlinks.  Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and resolving websites.  Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

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 <charlotterusseclothing.com> and <charlotterussestores.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 16, 2010

 

 

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