Mason Companies, Inc. v. Joy Monk
Claim Number: FA1004001317159
Complainant is Mason
Companies, Inc. (“Complainant”) represented by William D. Schultz, of Merchant
& Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <brandshoemall.com>, registered with Wild West Domains, Inc.
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 (the "Forum") electronically on April 2, 2010.
On April 4, 2010, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <brandshoemall.com> is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 April 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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 postmaster@brandshoemall.com. Also on April 7, 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, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On April 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <brandshoemall.com> domain name is confusingly similar to Complainant’s SHOE MALL mark.
2. Respondent does not have any rights or legitimate interests in the <brandshoemall.com> domain name.
3. Respondent registered and used the <brandshoemall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mason Companies, Inc., sells name brand shoes and clothing items for men and women. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SHOE MALL mark (e.g., Reg. No. 2,605,442 registered on August 6, 2002).
Respondent, Joy Monk, registered the <brandshoemall.com> domain name on April 21, 2008. The disputed domain name resolves to a website that provides advertisements and links to third-party websites, some of which compete with Complainant’s 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.
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 asserts rights in its SHOE MALL mark through its registration of its SHOE MALL mark with the USPTO (e.g., Reg. No. 2605442 registered on August 6, 2002). The Panel finds this registration with the USPTO sufficiently establishes Complainant’s rights in its mark under Policy ¶ 4 (a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues Respondent’s <brandshoemall.com> domain name is confusingly similar to
Complainant’s SHOE MALL mark. Respondent
incorporates Complainant’s mark in its entirety in the disputed domain
name. Respondent then adds the generic
term “brand” and the generic top-level domain (“gTLD”) “.com” to Complainant’s
mark in the disputed domain name. The
Panel finds these additions do not render Respondent’s disputed domain name
distinct from Complainant’s mark. Therefore,
the Panel finds Respondent’s <brandshoemall.com>
domain name is confusingly similar to Complainant’s SHOE MALL mark under Policy
¶ 4(a)(i). See Am. Express Co. v. MustNeed.com,
FA 257901 (Nat. Arb. Forum June 7,
2004) (finding the respondent’s <amextravel.com> domain name confusingly
similar to Complainant’s AMEX mark because the “mere addition of a generic or
descriptive word to a registered mark does not negate” a finding of confusing
similarity under Policy ¶ 4(a)(i)); see
also Arthur Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must first establish a prima facie case showing Respondent lacks rights or legitimate interests in the <brandshoemall.com> domain name pursuant to Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. Prior Panels have viewed Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent failed to submit a response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Joy Monk” as the registrant of the <brandshoemall.com> domain name. Complainant also asserts Respondent has no connection or affiliation with Complainant nor is Respondent licensed or otherwise authorized to use its SHOE MALL mark in a domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name under 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 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).
Complainant also argues Respondent does not have a bona fide interest in
the disputed domain name under Policy ¶ 4(c)(i) nor
does Respondent use the disputed domain name for a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s disputed domain name resolves to
a website that lists links to third-party websites and links to websites that
compete with Complainant’s business. Complainant
claims Respondent capitalizes on the confusingly similar disputed domain name
to attract Internet users seeking Complainant’s website. Complainant also argues Respondent profits
from providing advertising and competitive products. The Panel finds such use of the disputed
domain name for Respondent’s commercial gain does not constitute 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 Bank of Am. Corp. v. Nw. 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).”); see also Jerry Damson, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s use of the confusingly similar <brandshoemall.com> domain name to redirect Internet users to third-party websites, including websites of Complainant’s competitors, disrupts Complainant’s business and constitutes registration and use in bad faith 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).
In addition, Complainant argues Respondent has intentionally attempted to attract, for commercial gain, Internet users to the <brandshoemall.com> domain name, by creating a likelihood of confusion with Complainant’s SHOE MALL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. As previously discussed, Respondent’s disputed domain name is confusingly similar to Complainant’s mark. Furthermore, Respondent’s disputed domain name resolves to a website that lists links to other websites and links to websites that compete with Complainant’s business. Respondent presumably profits from this use. Therefore, the Panel finds Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site for Respondent’s commercial gain. Therefore, the Panel concludes Respondent’s use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brandshoemall.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 5, 2010
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