Sterling Jewelers Inc v. Bruce Powell / XIBITMAX
Claim Number: FA1107001400740
Complainant is Sterling Jewelers Inc (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is Bruce Powell / XIBITMAX (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kaysjewelersinfo.org>, registered with Name.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2011; the National Arbitration Forum received payment on July 28, 2011.
On July 28, 2011, Name.com, LLC confirmed by e-mail to the National Arbitration Forum that the <kaysjewelersinfo.org> domain name is registered with Name.com, LLC and that Respondent is the current registrant of the name. Name.com, LLC has verified that Respondent is bound by the Name.com, LLC 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 August 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@kaysjewelersinfo.org. Also on August 3, 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 August 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <kaysjewelersinfo.org> domain name is confusingly similar to Complainant’s KAY JEWELERS mark.
2. Respondent does not have any rights or legitimate interests in the <kaysjewelersinfo.org> domain name.
3. Respondent registered and used the <kaysjewelersinfo.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sterling Jewelers Inc, is in the business of providing jewelry and jewelry store services. Complainant owns the KAY JEWELERS mark, which has been in use since at least 1919 in connection with its jewelry services. Complainant holds a trademark registration for its KAY JEWELERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,222,703 registered February 9, 1999).
Respondent, Bruce Powell / XIBITMAX, registered the <kaysjewelersinfo.org> domain name on September 24, 2010. The disputed domain name appears to be a blog or informational website providing commentary and links to various other third-party websites, including those in direct competition 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 owns the KAY JEWELERS mark and claims that it has established rights in the mark. In Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006), the Panel found that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office. See also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”). Here, Complainant holds a USPTO trademark registration for its KAY JEWELERS mark (Reg. No. 2,222,703 registered February 9, 1999). The Panel concludes that Complainant has demonstrated its rights in the KAY JEWELERS mark, pursuant to Policy ¶ 4(a)(i), by registering with the USPTO.
Complainant also contends that Respondent’s <kaysjewelersinfo.org> domain name is confusingly similar to its KAY JEWELERS mark. The disputed domain name uses Complainant’s whole mark and alters it by deleting the space between the words of the mark, adding a single letter “s,” adding the generic word “info,” and by adding the generic top-level domain (“gTLD”) “.org.” Deleting spaces and adding a gTLD are irrelevant changes as they pertain to a Policy ¶ 4(a)(i) analysis. 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)). Moreover, the Panel finds that adding a generic word such as “info” and adding the letter “s” do not adequately distinguish the disputed domain name from Complainant’s mark. See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <kaysjewelersinfo.org> domain name is confusingly similar to Complainant’s KAY JEWELERS mark pursuant to Policy ¶ 4(a)(i).
The Panel held that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent does not have rights or 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.” The Panel finds that Complainant has established a prima facie case. However, Respondent failed to submit a response to the Complaint which may be interpreted as evidence that Respondent lacks rights and 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). Nevertheless, the Panel elects to examine the record and decide whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the <kaysjewelersinfo.org> domain name. The WHOIS information identifies Respondent as “Bruce Powell / XIBITMAX,” which is not similar to the disputed domain name. Additionally, Complainant makes no mention of ever having authorized or licensed Respondent to use its KAY JEWELERS mark in the disputed domain name. The Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), as nothing in the record indicates otherwise. 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 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 of that it is commonly known by the disputed domain name).
Respondent’s <kayjewelersinfo.org> domain name resolves to website that appears to be a blog, offering commentary and general information about Complainant and designed to attract Internet traffic for advertising purposes. The resolving website contains numerous third-party links to jewelry sites in direct competition with Complainant’s business. Respondent likely collects click-through fees from these links. The Panel concludes that Respondent’s use of the confusingly similar disputed domain name to operate a website which redirects Internet users to Complainant’s competitors and also features information about 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant asserts that Respondent is attempting to misleadingly divert Internet users to Complainant’s competitors. Users searching for Complainant online or intending to purchase Complainant’s goods may find Respondent’s disputed domain name and purchase similar jewelry goods from a competitor as a result. The Panel finds that Respondent’s registration and use of the <kaysjewelersinfo.org> domain name does disrupt Complainant’s business in the jewelry industry and is evidence of bad faith 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel infers that Respondent generates click-through or referral fees from the aforementioned third-party links. Complainant alleges that Respondent’s confusingly similar disputed domain name and resolving website with information and commentary about Complainant’s business leads to confusion among Internet users as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and website content. Respondent tries to commercially benefit from this confusion by collecting click-through fees. The Panel finds that this constitutes 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
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 <kaysjewelersinfo.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 27, 2011
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