national arbitration forum

 

DECISION

 

Liz Claiborne Inc. v. Private Whois Service / CSRUS Enterprises

Claim Number: FA1103001375456

 

PARTIES

Complainant is Liz Claiborne Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA.  Respondent is Private Whois Service / CSRUS Enterprises (“Respondent”), Bahamas / Chile.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <monetjewelry.net> registered with Internet.bs Corp.

 

The domain name at issue is <monetjewelry.com> registered with POWER BRAND CENTER CORP.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2011; the National Arbitration Forum received payment on March 1, 2011.

 

On March 3, 2011, Internet.bs Corp., confirmed by e-mail to the National Arbitration Forum that the <monetjewelry.net> domain name is registered with Internet.bs Corp., and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp., 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 March 4, 2011, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <monetjewelry.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the name.  POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. 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 March 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@monetjewelry.net and postmaster@monetjewelry.com.  Also on March 11, 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 April 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <monetjewelry.net> and <monetjewelry.com> domain names are confusingly similar to Complainant’s MONET mark.

 

2.    Respondent does not have any rights or legitimate interests in the <monetjewelry.net> and <monetjewelry.com> domain names.

 

3.    Respondent registered and used the <monetjewelry.net> and <monetjewelry.com> domain names in bad faith.

 

B.   Respondent failed to submit a Response in this proceeding.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  The Panel finds that while there may be some similarities between the disputed domain names, these facts to do not sufficiently support a finding that Private Whois Services and CSRUS Enterprises are the same entity operating under different aliases.  Complainant has not provided any evidence, such as similar registrant or contact information, or registration date/pattern, or server/webhosting information indicating that the similarities are more than just mere coincidences.  Therefore, the Panel finds that the multiple Respondent’s are not the same entity or person operating under different aliases.  See Yahoo! Inc. v. Zviely, FA 162060 (Nat. Arb. Forum July 24, 2003) ("[W]here it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registrant names."); see also  Adobe Sys. Inc. v. Domain OZ, D2000-0057 (WIPO Mar. 22, 2000) (decision rendered against multiple respondents where respondents shared the same post office box number and e-mail address in their registration information).

 

Complainant requests that the Panel focus its decision on the <monetjewelry.net> domain name in the event the Panel does not find that Respondents are operating under the same entity.  Therefore, the Panel dismisses, without prejudice, the Complaint regarding <monetjewelry.com> and makes no mention of the domain name in the proceedings below.

 

FINDINGS

Complainant, Liz Claiborne Inc., owns the MONET mark and has used the mark since 1937 in connection with its fashion jewelry brand.  Complainant holds numerous trademark registrations for its MONET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 719,979 issued August 15, 1961).

 

Respondent , Private Whois Service, registered the <monetjewelry.net> domain name on August 18, 2010.  The disputed domain name resolves to a directory website which offers third-party links to commercial jewelry websites in direct competition with Complainant’s jewelry brand.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has demonstrated its rights in the MONET mark.  In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel determined that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations.  See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Previous panels have also found that a complainant is not required to register its mark within the country of the respondent.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).  Here, Complainant has numerous trademark registrations for its MONET mark with the USPTO  (e.g., Reg. No. 719,979 issued August 15, 1961).  Therefore, the Panel concludes that Complainant has established its rights in the MONET mark through trademark registration pursuant to Policy ¶ 4(a)(i).

 

Complainant maintains that Respondent’s <monetjewelry.net> domain name is confusingly similar to its MONET mark.  The disputed domain name incorporates the mark entirely and merely adds the descriptive word “jewelry,” which describes the products offered under Complainant’s MONET mark, and adds the generic top-level domain (“gTLD”) “.net.”  The Panel finds that the addition of a descriptive term with a clear relation to Complainant’s business does not sufficiently distinguish the disputed domain name from Complainant’s mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).  The Panel also finds that the affixation of a gTLD does not serve to avoid a finding of confusing similarity.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant maintains that Respondent lacks rights and legitimate interests in the <monetjewelry.net> domain name.  In F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007), the panel found that a proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the complainant to the respondent once the complainant has made out a prima facie case that the respondent has no rights or interests in the domain names.  Here, Complainant has demonstrated a prima facie case in support of its allegations against Respondent.  Respondent’s did not submit a timely response to the Complainant. The Panel may interpret this as evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions.

 

Complainant asserts that Respondent is not commonly known by the <monetjewelry.net> domain name.  Nothing in the WHOIS information indicates any connection between Respondent and the disputed domain name. Complainant further asserts that it has not authorized or permitted Respondent to use its MONET mark within the disputed domain name.  All additional information in the record indicates that Respondent is not commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <monetjewelry.net> domain name 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 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 uses the <monetjewelry.net> domain name to host a directory website featuring third-party links.  Some of these featured links compete with Complainant’s jewelry business.  Respondent likely receives click-through fees from the links.  The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a website redirecting Internet users to third-party sites competing with Complainant 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)); Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

 

The Panel finds that Policy 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s use of the <monetjewelry.net> domain name disrupts its business.  Internet users intending to purchases Complainant’s jewelry products may find Respondent’s website due to the confusingly similar domain name.  Users may then purchase similar products from one of the commercial third-party links as a result.  The Panel finds that such use of the disputed domain name does disrupt Complainant’s business and is evidence of bad faith use and registration 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

The Panel infers that Respondent receives click through fees from the previously mentioned links.  Respondent’s <monetjewelry.net> domain name resolves to a website listing third-party links, some which directly compete with Complainant’s jewelry business and sales.  Internet users who find Respondent’s website may become confused as to Complainant’s sponsorship of, or affiliation with, the Complainant due to the use of Complainant’s MONET mark within the disputed domain name.  Respondent attempts to capitalize off this confusion through the receipt of click-through fees.  The Panel concludes that Respondent’s registration and use of the disputed domain name for its own financial gain is evidence of bad faith use and registration 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 MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met. 

 

DECISION

As discussed above, the Panel hereby dismisses without prejudice the complaint against <monetjewelry.com> and Orders that the domain name REMAIN WITH THE RESPONDENT.

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED with respect to the <monetjewelry.net> domain name.

 

Accordingly, it is Ordered that the <monetjewelry.net> domain name be TRANSFERRED from Respondent to Complainant. 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  April 11, 2011

 


 

 

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