Schottenstein Stores Corporation d/b/a
American Signature Home v. Golden
Claim Number: FA0212000137031
PARTIES
Complainant
is Schottenstein Stores Corporation d/b/a American Signature Home, Columbus, OH (“Complainant”) represented
by Kathryn E. Smith, of Wood, Herron & Evans LLP. Respondent is Golden, Baltimore, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <americansignaturefurniture.com>
and <americansignaturehome.com>, registered with Bulkregister.com, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 9, 2002; the Forum received a hard copy of the
Complaint on December 13, 2002.
On
December 10, 2002, Bulkregister.com,
Inc. confirmed by e-mail to the Forum that the domain names <americansignaturefurniture.com> and <americansignaturehome.com> are registered with Bulkregister.com, Inc. and that
Respondent is the current registrant of the names. Bulkregister.com, Inc.
has verified that Respondent is bound by the Bulkregister.com, 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
December 16, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 6, 2003 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@americansignaturefurniture.com and
postmaster@americansignaturehome.com by e-mail.
Respondent
replied in a timely fashion; however,
Respondent’s submission contained no arguments or defenses under the UDRP
Policy and failed to refute Complainant’s allegations. The submission consists of a one-paragraph
email that was sent to the Case Coordinator.
In addition, Respondent submitted late exhibits on January 13,
2003. The Panel has considered
Respondent’s Response and exhibits.
On
January 17, 2003, 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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The <americansignaturefurniture.com> and
<americansignaturehome.com> domain names are confusingly similar to
Complainant’s AMERICAN SIGNATURE family of marks.
2. Respondent has no rights or legitimate
interests in the
<americansignaturefurniture.com>
and <americansignaturehome.com> domain names.
3.
Respondent
registered and used the <americansignaturefurniture.com>
and
<americansignaturehome.com> domain names in bad faith.
B.
Respondent submitted a one-paragraph email reply to the Complaint, which
alluded to rights in the domain names based on registration alone.
FINDINGS
Complainant, Schottenstein Stores
Corporation, owns trademark applications and registrations for the mark
AMERICAN SIGNATURE, AMERICAN SIGNATURE FURNITURE, and AMERICAN SIGNATURE HOME
(the “AMERICAN SIGNATURE family of marks”).
The AMERICAN SIGNATURE and AMERICAN SIGNATURE FURNITURE marks are
registered on the Principal Register of the United States Patent and Trademark
Office, as Reg. Nos. 2,386,599 and 2,556,760.
The AMERICAN SIGNATURE HOME mark is pending trademark registration. Complainant also owns numerous other
trademarks reflecting the AMERICAN SIGNATURE mark.
Complainant’s AMERICAN SIGNATURE family
of marks are used in connection with Complainant’s retail furniture
stores. Complainant uses its marks to
identify its furniture products in advertising and sales in interstate
commerce. In addition, Complainant uses
its AMERICAN SIGNATURE family of marks to promote the sales of its product line
on the Internet at the website <ashome.com>.
Complainant has used its AMERICAN
SIGNATURE family of marks in the United States since July, 1996. Complainant recorded $100 million in sales
of AMERICAN SIGNATURE branded furniture in 2002.
Complainant owns five AMERICAN SIGNATURE
HOME store locations in Franklin, Tennessee; Madison, Tennessee; Memphis,
Tennessee; Baltimore, Maryland; and Richmond, Virginia. Complainant’s Baltimore, Maryland store
opened on October 25, 2002 and was preceded by a news release and television ad
campaigns promoting the quality of AMERICAN SIGNATURE products.
Respondent registered the domain names on
May 30, 2002 through Bulkregister.com.
Respondent has not associated the domain names with any content on the
Internet. Respondent is located in
Baltimore, Maryland.
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.”
Paragraph
4(a) of the Policy requires that the 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 demonstrated its rights
in the AMERICAN SIGNATURE family of marks through proof of commercial use and
trademark registrations with the United States Patent and Trademark
Office.
Respondent’s <americansignaturefurniture.com> domain name contains
Complainant’s entire AMERICAN SIGNATURE FURNITURE mark with the inconsequential
addition of the generic top-level domain “.com.” The top-level domain is a required feature of a domain name and
is negligible in a Policy ¶ 4(a)(i) identical analysis. Therefore, Respondent’s domain name is
identical to Complainant’s AMERICAN SIGNATURE mark. See Pomellato S.p.A
v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
Likewise, Respondent’s <americansignaturehome.com>
domain name contains Complainant’s entire AMERICAN SIGNATURE HOME mark with the
inconsequential addition of the generic top-level domain “.com.” Thus, the domain name is identical to
Complainant’s AMERICAN SIGNATURE HOME mark.
Furthermore, since the AMERICAN SIGNATURE
HOME mark has yet to receive trademark registration status, it is appropriate
to conduct a Policy ¶ 4(a)(i) analysis in relation to Complainant’s AMERICAN
SIGNATURE mark. The <americansignaturehome.com>
domain name differs only from the AMERICAN SIGNATURE mark by the addition of
the word “home.” Complainant uses its
mark in conjunction with its home furnishing stores and thus the word “home” is
related to Complainant’s commercial use of the AMERICAN SIGNATURE mark. Therefore, Respondent’s <americansignaturehome.com>
domain name is confusingly similar to Complainant’s AMERICAN SIGNATURE
mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant has successfully alleged a prima
facie Complaint, which shifts the burden on Respondent to challenge
Complainant’s contention by demonstrating rights or legitimate interests in the
disputed domain names. Respondent has
failed to specifically address Complainant’s arguments and essentially implores
the Panel to find in its favor because Respondent is “just a little guy that
owns two domain names.” Respondent does
not put forward any arguments that support a finding of rights or legitimate
interests in its favor, and relies on its registration alone to establish such
right or interests. Respondent cannot
primarily rely on its registration to establish rights or legitimate interests
in the <americansignaturefurniture.com>
and <americansignaturehome.com> domain names, and without any
further arguments the Panel will presume that Respondent has no such rights or
interests. See Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has
advanced no basis on which the Panel could conclude that it has a right or
legitimate interest in the domain names, and no use of the domain names has
been established); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy”).
Respondent does not actively use the <americansignaturefurniture.com> and <americansignaturehome.com> domain names and has not
presented the Panel with demonstrable preparations to use the domain
names. Respondent merely stated, in its
informal Response, that Complainant owns hundreds of domain names in an
apparent effort to establish Complainant’s lack of interest or value in the
disputed domain names. Without
establishing at the minimum a planned legitimate use of the disputed domain
names, the Panel finds that Respondent’s passive holding of the domain names
does not establish rights or legitimate interests in the domain names under
Policy ¶¶ 4(c)(i) and (iii). See
Chanel, Inc. v. Heyward, D2000-1802
(WIPO Feb. 23, 2001) (finding no rights or legitimate interests where
“Respondent registered the domain name and did nothing with it”); see also
Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that the Respondent made preparations
to use the domain name or one like it in connection with a bona fide offering
of goods and services before notice of the domain name dispute, the domain name
did not resolve to a website).
Furthermore, Respondent is not commonly
known by the <americansignaturefurniture.com>
and <americansignaturehome.com> domain names and has provided no
evidence to support a finding to the contrary.
Thus, Policy ¶ 4(c)(ii) does not provide support in Respondent’s
favor. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate
interests in the disputed domain names.
The Policy ¶ 4(b) sets out a list of
circumstances that merit a finding of bad faith. This particular paragraph, however, is without limitation as the
Panel is permitted to look at the totality of circumstances in deciding the bad
faith issue under Policy ¶ 4(a)(iii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive”); see also Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”).
Respondent is located in Baltimore,
Maryland where Complainant recently opened a new AMERICAN SIGNATURE HOME
furniture store. Respondent registered
the <americansignaturefurniture.com>
and <americansignaturehome.com> domain names nearly six months
before the new store opened but in its email reply Respondent intimated that it
was aware of Complainant’s advertising in the television, radio and print
outlets. Furthermore, Complainant’s
AMERICAN SIGNATURE and AMERICAN SIGNATURE FURNITURE marks are registered on the
Principal Register of the United States Patent and Trademark Office. Such registration status imparts
constructive knowledge onto a party registering a domain name of a mark that is
similar to a desired domain name. A
rudimentary trademark search would have shown Complainant’s interests in the
aforementioned marks, and Respondent has the burden to clear rights in a domain
name prior to registering it.
Therefore, the Panel concludes that Respondent registered the disputed
domain name in bad faith with constructive knowledge of Complainant’s interests
in the AMERICAN SIGNATURE family of marks.
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Victoria’s
Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Respondent’s lack of use of the <americansignaturefurniture.com> and <americansignaturehome.com> domain names along with
Respondent’s failure to establish demonstrable plans to use the domain names warrants
a finding of bad faith use. In
addition, Respondent’s constructive knowledge of Complainant’s interests in the
AMERICAN SIGNATURE family of marks further supports a passive holding bad faith
use determination. Respondent’s
allusion to Complainant’s hundreds of domain names and lack of interest in the
disputed domain names without demonstrating its planned legitimate use also
supports a finding of bad faith use. See
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is
possible, in certain circumstances, for inactivity by the Respondent to amount
to the domain name being used in bad faith”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <americansignaturefurniture.com> and <americansignaturehome.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: January 24, 2003
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