Liz Clairborne Inc. v. CSRUS Enterprises / Gerente de Dominia
Claim Number: FA1104001385238
Complainant is Liz Clairborne Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is CSRUS Enterprises / Gerente de Dominia (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monetjewelry.com>, registered with Power Brand Center Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2011; the National Arbitration Forum received payment on April 21, 2011.
On April 26, 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 April 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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.com. Also on April 27, 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 May 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <monetjewelry.com> domain name is confusingly similar to Complainant’s MONET mark.
2. Respondent does not have any rights or legitimate interests in the <monetjewelry.com> domain name.
3. Respondent registered and used the <monetjewelry.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liz Clairborne Inc., owns the MONET mark, which has been used as a trademark for jewelry since 1937. Complainant’s jewelry is now recognized and sold worldwide. Complainant holds 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, CSRUS Enterprises / Gerente de Dominia, registered the <moneyjewelry.com> domain name on June 25, 2002. The disputed domain name resolves to a commercial search engine which displays a list of third-party links that directly compete with Complainant’s jewelry business.
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 established rights in the MONET mark. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel decided 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 it is not necessary for a complainant to register its mark within the country where respondent operates or resides. See 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Here, Complainant holds numerous trademark registrations for its MONET mark with the USPTO (e.g., Reg. No. 719,979 issued August 15, 1961). Therefore, the Panel finds that Complainant has demonstrated its rights in the MONET mark through its registration with a national trademark authority pursuant to Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s <monetjewelry.com> domain name is confusingly similar to its MONET mark. The domain name incorporates the MONET mark in its entirety and only changes the mark by adding the descriptive word “jewelry” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive words, which in this case obviously relates to Complainant’s jewelry line, do not serve to avoid a finding of confusing similarity. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). Additionally, the Panel finds that the application of a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s MONET mark under Policy ¶ 4(a)(i).
The Panel finds that the element of Policy ¶ 4(a)(i) have been met.
Complainant contends that Respondent lacks rights and legitimate interests in the <monetjewelry.com> domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel decided that “Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.” Here, Complainant has made a prima facie showing in support of its claims against Respondent. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent has no right or legitimate interests as they pertain to 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 elects to first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before making any decisions.
Complainant asserts that Respondent is not commonly known by the <monetjewelry.com> domain name. The WHOIS information identifies Respondent as “CSRUS Enterprises / Gerente de Dominia,” which is not similar to the disputed domain name. Complainant further asserts that it has not given permission or authorization to Respondent to use its MONET mark within the disputed domain name. The Panel concludes that Respondent is not commonly known by the disputed domain name, according to Policy ¶ 4(c)(ii), as there is no affirmative evidence in the record that indicates otherwise. See 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); 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).
Respondent’s <monetjewelry.com> domain name resolves to a commercial search engine which displays third-party links to other jewelry websites in direct competition with Complainant’s business. Respondent likely profits from click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to operate a website to re-route Internet users to Complainant’s competitors in the jewelry industry 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant claims that Respondent’s registration and use of the disputed domain name is intentionally deceptive and disrupts its business. Respondent uses the confusingly similar disputed domain name to display links to Complainant’s competitors within the jewelry industry. Internet users intending to purchase Complainant’s goods may purchase similar goods from a competitor as a result. The Panel finds that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); 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).
Respondent’s <monetjewelry.com> domain name resolves to a commercial search engine displaying links that directly compete with Complainant’s jewelry business. The Panel infers that Respondent likely receives click-through fees from these links. Respondent’s use of a confusingly similar domain name and links that would be of interest to Complainant’s jewelry customers, create a strong likelihood of confusion as to Complainant’s affiliation with, or sponsorship of, the resolving website and products offered on the linked websites. Respondent attempts to capitalize off this confusion through the receipt of click-through fees. The Panel finds that such registration and use constitutes bad faith 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <monetjewelry.com> domain name be TRANSFERRED to Respondent.
John J. Upchurch, Panelist
Dated: June 1, 2011
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