Glamorise Foundations, Inc. v. Direct Privacy LTD Direct Privacy ID 27F71
Claim Number: FA1103001375952
Complainant is Glamorise Foundations, Inc. (“Complainant”), represented by Mari-Elise Gates of Stites & Harbison, PLLC, Virginia, USA. Respondent is Direct Privacy LTD Direct Privacy ID 27F71 (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glamorisebras.org>, registered with DirectNIC, Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2011; the National Arbitration Forum received payment on March 3, 2011.
On March 3, 2011, DirectNIC, Ltd confirmed by e-mail to the National Arbitration Forum that the <glamorisebras.org> domain name is registered with DirectNIC, Ltd and that Respondent is the current registrant of the name. DirectNIC, Ltd has verified that Respondent is bound by the DirectNIC, Ltd 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 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@glamorisebras.org. Also on March 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 April 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <glamorisebras.org> domain name is confusingly similar to Complainant’s GLAMORISE mark.
2. Respondent does not have any rights or legitimate interests in the <glamorisebras.org> domain name.
3. Respondent registered and used the <glamorisebras.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Glamorise Foundations, Inc., designs and sells shapewear, including brassieres, girdles, corsets, corselets, foundation garments and panties, to serve the needs of full-figured women. Complainant owns the following trademark registrations for the GLAMORISE mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No.0790043 issued May 25, 1965 and
Reg. No. 2,908,003 issued December 7, 2004.
Respondent, Direct Privacy LTD Direct Privacy ID 27F71, registered the <glamorisebras.com> domain name on February 3, 2006. The disputed domain name resolves to a directory of pay-per-click links that reference Complainant’s GLAMORISE marks and advertise third-party websites selling competing lingerie.
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.
The Panel finds that Complainant’s trademark registrations conclusively prove Complainant’s rights in the GLAMORISE mark for the purposes of Policy ¶ 4(a)(i), even when Respondent lives or operates outside the country where the mark is registered. 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s <glamorisebras.com> domain name is confusingly similar to Complainant’s GLAMORISE mark because the disputed domain name merely combines Complainant’s mark with the descriptive term “bras” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a single descriptive term to Complainant’s mark does not eliminate the confusing similarity. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also 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 determines that the added gTLD has no effect on the confusingly similar analysis for the purposes of Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel accordingly finds that Respondent’s <glamorisebras.com> domain name is confusingly similar to Complainant’s GLAMORISE 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 puts forth a prima facie case, the burden shifts to Respondent under Policy ¶ 4(a)(ii) to demonstrate that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has put forth a sufficient prima facie case. As Respondent failed to respond to the allegations made against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the domain name). The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.
There is no information in the record suggesting a nominal association between Respondent and the disputed domain name. The WHOIS information for the <glamorisebras.com> domain name lists the registrant as “Direct Privacy LTD Direct Privacy ID 27F71.” Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant states that Respondent’s <glamorisebras.com> domain name diverts Internet users to a portal website, advertising pay-per-click links to companies that appear to sell Complainant’s lingerie products along with the products of other competing lingerie companies. The operation of such a website presumably benefits Respondent financially through “click-through” fees. The Panel finds that this use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); 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).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <glamorisebras.com> domain name redirects Internet users to a website featuring advertisements in the form of pay-per-click links to third-party providers of lingerie in competition with Complainant. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors demonstrate bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use to Policy ¶ 4(b)(iii).”).
Respondent’s <glamorisebras.com> domain name hosts a website that provides links to third-party websites where consumers can purchase Complainant’s products, along with the products of Complainant’s competitors, creating a misleading impression that Respondent is affiliated with Complainant. The Panel finds Respondent’s efforts to mislead Complainant’s potential customers so that Respondent can profit via pay-per-clicks constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <glamorisebras.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 8, 2011
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