The Convertible Castle, Inc. d/b/a Bernie & Phyl's Furniture v. Above.com Domain Privacy
Claim Number: FA1106001392652
Complainant is The Convertible Castle, Inc. d/b/a Bernie & Phyl's Furniture (“Complainant”), represented by Kevin C. Cain of Peabody & Arnold LLP, Massachusetts, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bernieandphylsfurniture.com>, registered with Above.Com Pty Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011; the National Arbitration Forum received payment on June 8, 2011.
On June 8, 2011, Above.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <bernieandphylsfurniture.com> domain name is registered with Above.Com Pty Ltd and that Respondent is the current registrant of the name. Above.Com Pty Ltd has verified that Respondent is bound by the Above.Com Pty 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 June 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@bernieandphylsfurniture.com. Also on June 9, 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 July 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bernieandphylsfurniture.com> domain name is confusingly similar to Complainant’s BERNIE & PHYL’S FURNITURE mark.
2. Respondent does not have any rights or legitimate interests in the <bernieandphylsfurniture.com> domain name.
3. Respondent registered and used the <bernieandphylsfurniture.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Convertible Castle, Inc. d/b/a Bernie & Phyl's Furniture, owns the BERNIE & PHYL’S FURNITURE mark, which it has used since November 1998 in connection with its full line of home and office furniture and accessories. Complainant registered its official website <bernieandphyls.com> on December 9, 1999. Complainant holds a trademark registration for its BERNIE & PHYL’S FURNITURE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,423,282 issued January 23, 2001).
Respondent, Above.com Domain Privacy, registered the <bernieandphylsfurniture.com> domain name on August 16, 2008. Respondent’s website resolves to a directory site containing third-party links which directly compete with Complainant’s furniture 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 demonstrated its rights in the BERNIE & PHYL’S FURNITURE mark. Past panels have decided that rights in a mark can be established through trademark registration within a federal jurisdiction. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The Panel finds that Complainant does not need a trademark registration in Australia, where Respondent is located, in order to establish rights in its mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also 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). Complainant holds a registered trademark for the BERNIE & PHYL’S FURNITURE mark with the USPTO (Reg. No. 2,423,282 issued January 23, 2001). The Panel concludes that Complainant has proven its rights in the BERNIE & PHYL’S FURNITURE mark, pursuant to Policy ¶ 4(a)(i), through its trademark registration with the USPTO.
Complainant additionally claims that Respondent’s <bernieandphylsfurniture.com> domain name is confusingly similar to its BERNIE & PHYL’S FURNITURE mark. The disputed domain name utilizes Complainant’s entire mark and differs only by deleting the apostrophe and spaces between words of the mark, replacing the ampersand with the word “and,” and affixing the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting spaces and adding a gTLD do not adequately distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel also finds that removal of punctuation marks does not help to avoid a finding of confusing similarity. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Finally, the Panel finds that replacing an ampersand with the word “and” does not sufficiently differentiate the disputed domain name. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). Respondent’s disputed domain name is also phonetically similar to Complainant’s BERNIE & PHYL’S FURNITURE mark, which the Panel finds to satisfy the confusing similarity element. See Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25, 2002) (“The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant’s marks.”). Therefore, the Panel holds that Respondent’s disputed domain name is confusingly similar to Complainant’s BERNIE & PHYL’S FURNITURE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant claims that Respondent lacks rights and legitimate interests in the disputed domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated, “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.” Complainant has made a prima facie case. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent has waived an assertion of rights or legitimate interests under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <bernieandphylsfurniture.com> domain name. The WHOIS information indicates that Respondent used a privacy shield which does not provide any evidence that Respondent’s name is similar to the disputed domain name. Complainant additionally asserts that Complainant does not operate in the furniture business. The Panel finds that Respondent is not commonly known by the disputed domain name, under Policy ¶ 4(c)(ii), as nothing in the record supports finding otherwise. See 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); 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 the respondent was commonly known by the disputed domain name).
The <bernieandphylsfurniture.com> domain name resolves to a directory website which reroutes Internet users to Complainant’s competitors in the furniture industry through third-party links. Respondent likely receives click-through fees from these links. The Panel concludes that Respondent’s use of the disputed domain name to operate a website which advertises Complainant’s direct competitors 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant maintains that Respondent’s <bernieandphylsfurniture.com> domain name disrupts its business. Potential customers intending to purchase furniture goods and accessories from Complainant may find Respondent’s website and be inclined to 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 within the furniture industry and constitutes bad faith pursuant to 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).
The Panel assumes that Respondent generates click-through fees from the previously mentioned third-party links. Internet users may become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and featured links given Respondent’s use of Complainant’s mark within the domain name. Respondent tries to capitalize off this confusion by collecting click-through fees. The Panel concludes that such a plan is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See 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); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
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 <bernieandphylsfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 5, 2011
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