national arbitration forum

 

DECISION

 

Hudson Clothing, LLC v. Cyber Domain Services Pvt. Ltd.

Claim Number: FA1001001304604

 

PARTIES

 

Complainant is Hudson Clothing, LLC (“Complainant”), represented by John J. Dabney, of McDermott Will & Emery LLP, Washington, D.C, USA.  Respondent is Cyber Domain Services Pvt. Ltd. (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <hudsonjean.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 25, 2010.

 

On January 25, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <hudsonjean.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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@hudsonjean.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 1, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <hudsonjean.com> domain name is confusingly similar to Complainant’s HUDSON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hudsonjean.com> domain name.

 

3.      Respondent registered and used the <hudsonjean.com> domain name in bad faith.

 

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

 

FINDINGS

 

Complainant, Hudson Clothing, LLC, is a prominent apparel company, specializing in premium denim jeans.  Complainant holds trademark registrations for the HUDSON and related marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,273,129 filed April 19, 2002).

 

Respondent, Cyber Domain Services Pvt. Ltd., registered the <hudsonjean.com> domain name on October 4, 2006.  Respondent’s disputed domain name resolves to a website featuring links to third-party websites, some of which compete with Complainant.  Respondent has offered to sell the disputed domain name on  the domain name broker site Sedo’s Domain Marketplace.

 

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 owns trademark registrations for the HUDSON and related marks with the USPTO (e.g., Reg. No. 3,273,129 filed April 19, 2002).  Although the HUDSON mark was not registered until August 7, 2007, for the purposes of Policy ¶ 4(a)(i) Complainant’s rights in the mark need not predate Respondent’s registration of the disputed domain name which occurred on October 14, 2006.  The Panel finds that Complainant’s trademark registrations sufficiently establish Complainant’s rights in the mark.   See Javacool Software Dev., LLC v. Elbanhawy Invs.,  FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)); see also Metropolitan 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)).  The Panel further finds that Complainant’s rights in the mark are conclusively established through its federal trademark despite that Respondent operates in a different country and Complainant’s mark is not registered in the country.  See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s HUDSON mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain name incorporates Complainant’s mark in full, attempting to distinguish the disputed domain name only by adding the generic term “jean” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a generic term to Complainant’s mark fails to differentiate the disputed domain name from Complainant’s mark, especially because the generic term added in this case, “jean,” refers to Complainant’s business.  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). 

 

Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HUDSON mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant puts forth a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain according to Policy ¶ 4(c).  Due to Complainant’s sufficient prima facie case in these proceedings and Respondent’s subsequent failure to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name.  See America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  The Panel, however, elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights and legitimate interests in the disputed domain name.

 

Complainant asserts that Respondent is not commonly known by the disputed domain name.  The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name.  The Panel finds that this failure to identify, in conjunction with the lack of other supporting evidence, is sufficient to conclude that Respondent is not commonly known by the disputed domain name and therefore cannot claim rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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).

 

Respondent’s disputed domain name resolves to a website promoting links to third-party websites, some of which compete with Complainant.  The Panel finds that this use of the disputed domain name and webpage to conduct Internet users to websites unrelated to Complainant 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

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

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s offers to sell the disputed domain name through the domain name broker site Sedo’s Domain Marketplace is evidence of Respondent’s bad faith registration and use of the disputed domain name.  The Panel finds that such offers to sell the disputed domain support the conclusion that Respondent has registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).

 

Respondent’s disputed domain name resolves to a webpage promoting the websites and goods of companies other than Complainant, some of which are Complainant’s competitors.  This promotion of other goods and companies clearly disrupts Complainant’s business as the Internet users diverted to Respondent’s website are Complainant’s potential customers.  The Panel finds that using the disputed domain name in this manner to divert Complainant’s intending customers to other websites shows bad faith registration and use under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).

 

Respondent’s inclusion of Complainant’s well-known HUDSON mark in the disputed domain is intended to attract Complainant’s customers and make them think they are visiting a website sponsored by Complainant.  These redirected Internet users presumably benefit Respondent commercially through “click-through” fees if they click on any of the links located on Respondent’s website.  The Panel finds Respondent’s efforts to lead Internet users to Respondent’s website under false pretenses in order to receive commercial gain demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

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 <hudsonjean.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 15, 2010

 

 

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