The Natori Company c/o Kenneth C Natori v.
Claim Number: FA1003001313255
Complainant is The Natori Company c/o Kenneth C Natori (“Complainant”), represented by Kenneth
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <josienatori.com>, registered with Directnic, Ltd.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2010.
On March 16, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <josienatori.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd 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 March 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on March 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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" through submission of a Written Notice, as defined in Rule 1. 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 <josienatori.com> domain name is confusingly similar to Complainant’s NATORI mark.
2. Respondent does not have any rights or legitimate interests in the <josienatori.com> domain name.
3. Respondent registered and used the <josienatori.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Natori Company c/o Kenneth C Natori, has registered its NATORI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,458,917 issued September 29, 1987). Complainant holds registration for its JOSIE mark (Reg. No. 2,184,488 issued August 25, 1998) and has applied for registration of JOSIE NATORI mark with the USPTO. Complainant also holds registration of NATORI, JOSIE, and JOSIE NATORI marks around the world. Complainant uses the mark in connection with women’s luxury items such as perfume, lotion, linens, and clothing.
Respondent, Belize Domain WHOIS Service Lt, registered the disputed domain name on November 22, 2005. The disputed domain name resolves to a parked website that displays links to third-party websites unrelated to Complainant’s goods under its mark.
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.
Complainant has registered its NATORI mark with the USPTO (Reg. No. 1,458,917 issued September 29, 1987). The Panel finds that Complainant’s registrations of its NATORI mark with the USPTO are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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).”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Respondent’s disputed domain name is confusingly similar to
Complainant’s NATORI mark because Respondent’s <josienatori.com> domain incorporates the dominant
features of Complainant’s mark, adds a descriptive term related to
Complainant’s business (“Josie” of Complainant’s “by Josie Natori” product
line), and adds the generic top-level domain “.com.” The Panel finds that such
minor alterations to Complainant’s registered mark do not negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Westfield
Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case in support of this allegation, the burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of 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) (“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 that Respondent is not commonly known by the disputed domain name. Further, Complainant asserts no license or other authorization has been given to Respondent to use the NATORI mark. The WHOIS information for the disputed domain name lists “Belize Domain WHOIS Service Lt” as the registrant, which indicates that Respondent is not commonly known by the <josienatori.com> domain name, and Respondent has not offered any affirmative evidence to suggest otherwise. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See 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); see also 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).
Respondent’s disputed domain name resolves to a parked
website that displays links to third-party websites unrelated to Complainant’s
goods under its mark. The Panel concludes that the Respondent has not used the
disputed domain name in connection with a bona
fide offering of goods and services or for a legitimate noncommercial
purpose under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
See Charles Letts &
Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17,
2006) (finding that the respondent’s parking of a domain name containing the
complainant’s mark for the respondent’s commercial gain did not satisfy Policy
¶ 4(c)(i) or ¶ 4(c)(iii)); see also Constellation
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent uses the disputed domain name to resolve to a parked website that displays links to third-party websites unrelated to Complainant’s goods under its mark. Internet users, interested in Complainant and Complainant’s related services, may become confused as to Complainant’s sponsorship and affiliation of the resolving website. Respondent attempts to profit from this confusion by presumably earning referral fees for redirecting traffic to third-party websites. The Panel finds Respondent’s registration and use of the <josienatori.com> domain name creates a likelihood of confusion with the Complainant’s mark and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also 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).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <josienatori.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 28, 2010
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