Francesca's Collections, Inc. v. Blackstone Trust yolo@hush.ai
Claim Number: FA1101001368315
Complainant is Francesca's Collections, Inc. (“Complainant”), represented by Charles E. Phipps of Locke Lord Bissell & Liddell LLP, Texas, USA. Respondent is Blackstone Trust yolo@hush.ai (“Respondent”), represented by Randall Moeller of Newman & Newman, LLP, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <francescas.com>, registered with Moniker Online Services, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2011; the National Arbitration Forum received payment on January 24, 2011.
On January 19, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <francescas.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 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@francescas.com. Also on January 25, 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 timely response from Respondent,[1] the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. Complainant filed with the Forum a timely Additional Submission on March 1, 2011.
On February 22, 2011, 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" 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:
1. Respondent’s <francescas.com> domain name is confusingly similar to Complainant’s FRANCESCA’S COLLECTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <francescas.com> domain name.
3. Respondent registered and used the <francescas.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, Francesca's Collections, Inc., is the owner and operator of fashion boutiques nationwide. Complainant markets and sells a full line of women’s apparel and related fashion items and accessories, including jewelry, footwear, and handbags. Complainant owns a United States Patent and Trademark Office trademark registration for the FRANCESCA’S COLLECTION mark (Reg. No. 3,542,854 issued December 9, 2008). Complainant asserts common law rights dating back to 1999.
Respondent, Blackstone Trust yolo@hush.ai, registered the <francescas.com> domain name on June 16, 2004. The disputed domain name resolves to a directory page of pay-per-click links that are related to, and competitive with, Complainant.
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 argues that it has rights in the FRANCESCA’S COLLECTION mark because it has registered the mark with the USPTO (Reg. No. 3,542,854 filed January 9, 2008; issued December 9, 2008). The Panel finds that registering a mark with the USPTO conclusively proves Complainant’s rights in the FRANCESCA’S COLLECTION mark for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Because Respondent has failed to respond timely to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 American 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.”). However, the Panel will examine whether the record shows Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant contends that there is no indication that Respondent’s personal or corporate name has ever included the term “francesca’s” or any variation thereof. The WHOIS information for the <francescas.com> domain name identifies the registrant as “Blackstone Trust yolo@hush.ai,” a name which has no apparent connection to the disputed domain name. The Panel accordingly finds that Respondent is not commonly known by the <francescas.com> domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s <francescas.com> domain name resolves to a commercial website providing multiple links to third-party websites, many of which offer goods competing with Complainant’s products and services. The Panel finds that Respondent’s use of the 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 under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The domain name was registered in 2004. To establish bad faith registration Complainant must establish that it had common law rights in its mark at that time (as the registration of its mark with the USPTO came several years later), or that the Respondent was clearly aware of the Complainant when the domain name was registered, and that the aim of the registration was to take advantage of the confusion between the domain name and any potential rights that Complainant may have had. There is no evidence in the record to support either theory of bad faith registration.
Complainant contends it has common law rights in the FRANCESCA’S COLLECTION mark dating back to 1999 when Complainant alleges it first engaged in commerce by using the FRANCESCA’S COLLECTION trademark. Complainant alleges it has continuously used the mark in commerce since that time, expending considerable economic resources in expanding its brand recognition and opening an average of 40 or more stores annually since 2006. Complainant also contends it has operated numerous websites using its mark to promote and develop its business, the earliest of which, <francescas.net>, was registered on May 14, 2002. Based on its Internet presence and its continuous use of the mark for more than ten years, Complainant alleges that it has acquired secondary meaning and goodwill in the FRANCESCA’S COLLECTION mark sufficient to prove common law rights under Policy ¶ 4(a)(i).
The Panel finds, however, that Complainant has not provided evidence that would warrant a finding of common law rights prior to the registration of the domain name in 2004. For example, Complainant did not demonstrate a significant web presence at that time, only arguing that a domain name was registered that year, and did not describe any evidence of expansion or development aside from stating that it began opening numerous stores annually in 2006, two years after the registration of the domain name. The Panel thus finds that Complainant has not established common law rights in the mark with proof of secondary meaning prior to the registration of the domain name in 2004. Moreover, Complainant has failed to show that Respondent had any awareness of Complainant’s business at the time the domain name was registered.
Accordingly, the Panel has concluded that Complainant’s rights in the mark date back only to January 9, 2008, the filing date of the FRANCESCA’S COLLECTION trademark registration. Respondent, however, registered the <francescas.com> domain name on June 16, 2004, at least four years prior to Complainant’s trademark registration. Accordingly, the Panel finds that Respondent’s predating registration of the disputed domain name indicates that Respondent did not register the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <francescas.com> domain name REMAIN WITH Respondent.
Bruce E. Meyerson, Panelist
Dated: March 9, 2011
[1] Respondent states that it did not submit a timely Response because its principal became seriously ill shortly after receiving the Complaint. Because of these circumstances, the Panel, in the exercise of its discretion, will consider the Response as necessary.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page