national arbitration forum

 

DECISION

 

Brookstone Company, Inc. v. Domain Admin

Claim Number: FA1108001405196

 

PARTIES

Complainant is Brookstone Company, Inc. (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA.  Respondent is Domain Admin (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brookstoneoutlet.com>, registered with Internet.bs 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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2011; the National Arbitration Forum received payment on August 29, 2011.

 

On August 30, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <brookstoneoutlet.com> 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 August 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@brookstoneoutlet.com.  Also on August 30, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <brookstoneoutlet.com> domain name is confusingly similar to Complainant’s BROOKSTONE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <brookstoneoutlet.com> domain name.

 

3.    Respondent registered and used the <brookstoneoutlet.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Brookstone Company, Inc., is a large general retailer operating primarily in malls and airport settings.  Complainant owns many trademark registrations from the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,270,358 registered March 13, 1984) for the BROOKSTONE mark.  Complainant’s primary use of the mark is the branding of its retail storefronts, along with its own domain name through which it derives a lot of business, <brookstone.com>.

 

Respondent, Domain Admin, registered the disputed domain name on August 9, 2004.  The disputed domain name resolves to a website offering links to third-party websites, many of which are competitors of Complainant’s in the retail industry.

 

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 claims that it has established its rights in the BROOKSTONE mark by registering it with the USPTO (e.g., Reg. No. 1,270,358 registered March 13, 1984).  Complainant has submitted sufficient proof in the form of trademark certificates, to substantiate its claim that the mark is duly registered and that it is the owner of said registrations.  The Panel finds that Complainant has established its rights in the BROOKSTONE mark under Policy ¶ 4(a)(i) by registering it with the USPTO.  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also 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).

 

Complainant also claims that Respondent’s <brookstoneoutlet.com> domain name is confusingly similar to its BROOKSTONE mark.  The disputed domain name includes the entire mark, while adding the generic top-level domain “.com” and the generic term “outlet.”  By adding the term “outlet” to the mark, Respondent is actually suggesting that it may be a discount seller of Complainant’s retail goods, because stores often have an outlet store which sells its product overruns, outdated goods, and other general items.  Therefore, the Panel finds that the changes made to Complainant’s mark fail to remove the disputed domain name from the realm of confusingly similarity under Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

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

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has successfully shifted the burden of proof under Policy ¶ 4(a)(ii) to Respondent by making a prima facie case, indicating that Respondent lacks rights or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“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.”).  Unfortunately, Respondent has failed to offer a Response in this matter which allows the Panel to assume it lacks rights or legitimate interests in the disputed domain name without further deliberation.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”),  However, the Panel will still examine the entire record in accordance with Policy ¶ 4(c) before making such a determination under Policy ¶ 4(a)(ii). 

 

Complainant alleges that Respondent is not commonly known by the disputed domain name.  Respondent has offered no evidence to rebut Complainant’s allegation.  Also, the WHOIS information appears to support Complainant’s contentions, identifying the registrant of the disputed domain name as “Domain Admin,” what appears to be a privacy service.  Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was 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 also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  The disputed domain name resolves to a website offering links to businesses that also offer products for sale in an online retail setting.  These businesses would be characterized as competitors of Complainant because of the retail-based nature of the resultant sites.  Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).

 

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

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent is disrupting its business by diverting potential customers to <brookstoneoutlet.com>.  Respondent’s disputed domain name resolves to a website providing links to third-parties offering retail services.  Complainant is in both the online and storefront-based retail business.  This fact makes the websites to which the disputed domain name links, competitors of Complainant.  Internet users may be diverted to these linked sites and purchase whatever retail goods they were seeking out from these other businesses instead of Complainant.  Because of this fact, the Panel finds that Respondent is disrupting Complainant’s business indicating that the disputed domain name was registered and is being used in bad faith 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 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).

 

Complainant also claims that Respondent is gaining commercially from the disputed domain name, constituting bad faith registration and use.  The disputed domain name resolves to a site offering links to third-party businesses, many of which compete with Complainant.  Presumably, Respondent receives a click-through fee for each Internet user that utilizes one of the links offered to move on to a third-party site.  Therefore, the Panel finds that Complainant is gaining commercially from the operation of the confusingly similar domain name, constituting bad faith registration and use 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

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

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 8, 2011

 

 

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