Yurman Design, Inc. v. Melissa Campbell
Claim Number: FA1012001365754
Complainant is Urman Design, Inc. (“Complainant”), represented by Lora A. Moffatt of Salans LLP, New York, USA. Respondent is Melissa Campbell (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidyurmanclub.com>, registered with NAME.COM LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2010; the National Arbitration Forum received payment on December 31, 2010.
On January 3, 2011, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <davidyurmanclub.com> domain name is registered with NAME.COM LLC and that Respondent is the current registrant of the name. NAME.COM LLC has verified that Respondent is bound by the NAME.COM LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 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@davidyurmanclub.com. Also on January 10, 2011, 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 February 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant is a leading America jewelry design company.
Complainant owns the DAVID YURMAN mark and uses this mark for the design, manufacture, distribution, and sale of its jewelry product.
Complainant owns trademarks for its DAVID YURMAN mark, registered with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,014,167, issued Nov. 5, 1996).
Respondent registered the <davidyurmanclub.com> domain name on September 29, 2010.
The disputed domain name resolves to a website which mimics Complainant’s official website in order to promote and sell knock-off or counterfeit goods similar to Complainant’s jewelry products.
Respondent’s <davidyurmanclub.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark.
Respondent is not commonly known by the disputed <davidyurmanclub.com> domain name.
Complainant has not licensed or otherwise authorized Respondent’s use of the DAVID YURMAN trademark in any manner, including its use in Respondent’s domain name.
Respondent does not have any rights to or legitimate interests in the domain name <davidyurmanclub.com>.
Respondent registered and uses the disputed <davidyurmanclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its DAVID YURMAN mark via registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Respondent’s <davidyurmanclub.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark. The disputed domain name incorporates Complainant’s mark in its entirety and only differs from the mark by the deletion of a space between the words of the mark, the addition of the generic term “club,” and the addition of a generic top-level domain (“gTLD”) “.com.” These differences fail adequately to distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a mark and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i).
Similarly, the addition of a generic term to a mark does not differentiate the resulting domain name sufficiently to avoid a finding of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contained the identical mark of a complainant combined with a generic word or term).
The Panel therefore concludes that Respondent’s <davidyurmanclub.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the <davidyurmanclub.com> domain name pursuant to paragraph 4(a)(ii) of the Policy. Once a complainant has made out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to show that it does have rights to or legitimate interests in a contested domain name. See, for example, Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008).
Complainant has established a prima facie case in support of its allegations on the point of Respondent’s rights to or legitimate interests in the contested domain. Owing to Respondent’s failure to submit a response to the Complaint, we are free to conclude that Respondent lacks rights to and legitimate interests in its domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response to a complaint filed under the Policy, a respondent has failed to invoke any circumstance which could demonstrate its rights to or legitimate interests in a contested domain name).
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant argues, and Respondent does not deny, that Complainant has not licensed or otherwise authorized Respondent’s use of the DAVID YURMAN mark in any manner, including its use in Respondent’s domain name, and that Respondent is not commonly known by the <davidyurmanclub.com> domain name. Moreover, the pertinent WHOIS information identifies Respondent only as “Melissa Campbell,” which is not similar to the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We also observe that Complainant alleges, without objection from Respondent, that Respondent uses the <davidyurmanclub.com> domain name to operate a website which attempts to sell knock-off or counterfeit products similar to Complainant’s jewelry designs. Respondent’s use of a domain name which is confusingly similar to Complainant’s mark in the manner alleged 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 Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002):
Respondent’s use of the confusingly similar domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
See also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that a respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
We must also take into account that there is no dispute as to Complainant’s allegation that the disputed domain name resolves to a website which mimics Complainant’s official website. Respondent’s attempt thus to pass itself off as Complainant is further evidence that Respondent lacks rights to and legitimate interests in the <davidyurmanclub.com> domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent attempted to pass itself off as a complainant online, in a blatant unauthorized use of that complainant’s mark, which was evidence that that respondent had no rights to or legitimate interests in a disputed domain name); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a complainant online, in a blatant unauthorized use of that complainant’s mark, evidenced that that respondent had no rights to or legitimate interests in a disputed domain).
The Panel thus finds that Policy ¶4(a)(ii) has been satisfied.
Respondent’s use of the <davidyurmanclub.com> domain name, which is confusingly similar to Complainant’s DAVID YURMAN mark, disrupts Complainant’s business because the resolving website sells counterfeit products in competition with Complainant’s jewelry business. Internet users intending to purchase Complainant’s products may inadvertently find Respondent’s website and instead purchase similar items from Respondent. This use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to that respondent’s competing website).
Respondent uses the <davidyurmanclub.com> domain name to mimic Complainant’s website, thus to sell counterfeit versions of Complainant’s jewelry. Internet users searching for Complainant’s website may thus find Respondent’s site and be confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving site, and products there offered for sale. Respondent attempts to profit from this confusion through the sale of its counterfeit jewelry. Respondent’s use of the disputed domain name in this manner constitutes evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that the evidentiary requirements of Policy ¶ 4(a)(iii) has been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <davidyurmanclub.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 17, 2011
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