national arbitration forum

 

DECISION

 

Herff Jones, Inc. v. Whois Manager / Whois Privacy Management Service

Claim Number: FA1201001427060

 

PARTIES

Complainant is Herff Jones, Inc. (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA.  Respondent is Whois Manager / Whois Privacy Management Service (“Respondent”), Delaware, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <herffones.com>, registered with Epag Domainservices GMBH.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2012; the National Arbitration Forum received payment on January 31, 2012.

 

On February 3, 2012, Epag Domainservices GMBH confirmed by e-mail to the National Arbitration Forum that the <herffones.com> domain name is registered with Epag Domainservices GMBH and that Respondent is the current registrant of the name.  Epag Domainservices GMBH has verified that Respondent is bound by the Epag Domainservices GMBH 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 February 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2012 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@herffones.com.  Also on February 3, 2012, 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 March 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <herffones.com> domain name is confusingly similar to Complainant’s HERFF JONES mark.

 

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

 

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

 

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

 

FINDINGS

Complainant registered its HERFF JONES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,247,648 registered August 9, 1983).  Complainant uses its HERFF JONES mark in connection with academic-related products, such as graduation products, class rings and jewelry, yearbooks, educational publishing, motivation and recognition products, robes and apparel, globes, sports jewelry and awards, and fraternity and sorority jewelry.

 

Respondent registered the <herffones.com> domain name on October 15, 2009.  The disputed domain name resolves to a website that contains a search engine and monetized hyperlinks that resolve to Complainant’s competitors.

 

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

 

The Panel first seeks to determine if Complainant owns rights in its HERFF JONES mark under Policy ¶ 4(a)(i).  Complainant presents the Panel with evidence of its trademark registrations for said mark with the USPTO (e.g., Reg. No. 1,247,648 registered August 9, 1983).  The Panel examined the evidence and finds that Complainant is the owner of valid USPTO trademark registrations for its HERFFJONES mark.  Based on these trademark registrations, the Panel concludes that Complainant owns rights in its HERFF JONES mark under Policy ¶ 4(a)(i).  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

The Panel next examines whether or not Respondent’s <herffones.com> domain name is identical or confusingly similar to Complainant’s HERFF JONES mark pursuant to Policy ¶ 4(a)(i).  After comparing the two, the Panel finds that the only differences are the removal of the space and the letter “j” and the addition of the generic top-level domain (“gTLD”) “.com.”  The Panel determines that the removal of a single letter from Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).  Similarly, the Panel finds that the removal of a space and the addition of the gTLD are inconsequential to a Policy ¶ 4(a)(i) analysis because spaces are impermissible in a domain name and a top-level domain is required.  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)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).  In accordance with the Panel’s findings and UDRP precedent, the Panel holds that Respondent’s <herffones.com> domain name is confusingly similar to Complainant’s HERFF JONES mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant satisfied the two elements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <herffones.com> domain name.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <herffones.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

The Panel begins with the question of whether or not Respondent is commonly known by the <herffones.com> domain name for the purposes of Policy ¶ 4(c)(ii).  Complainant contends that Respondent does not own a trademark or any intellectual property rights in the <herffones.com> domain name.  Complainant further alleges that Respondent is not a licensee of Complainant.  Respondent did not respond to the Complaint and, therefore, did not present any arguments or evidence that it is commonly known by the domain name.  As for the WHOIS information, it lists “Whois Manager / Whois Privacy Management Service” as the registrant of the disputed domain name, which is not evidence that Respondent is commonly known by the domain name.  Based on this evidence, the Panel finds that Respondent is not commonly known by the <herffones.com> domain name for the purposes of 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 of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

The Panel next analyzes if Respondent makes a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <herffones.com> domain name.  Complainant asserts that Respondent’s disputed domain name resolves to a website that contains a search engine and hyperlinks that resolve to third-party websites, some of which compete with Complainant.  Complainant provides the Panel with a screen shot of the resolving website that supports Complainant’s assertion.  Complainant further contends that Respondent profits from the hyperlinks by receiving click-through fees, which the Panel presumes to be true.  In light of this evidence, the Panel determines that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <herffones.com> domain name.  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does 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 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)).

 

The Panel finds that Complainant sufficiently demonstrated that Respondent lacks rights and legitimate interests in the <herffones.com> domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Under the many options under the Policy that Complainant may use to prove Respondent’s bad faith registration and use, Complainant argues that Respondent registered and uses the <herffones.com> domain name in bad faith under Policy ¶ 4(b)(iv).  Complainant claims that Respondent attempts to create confusion as to Complainant’s affiliation with the disputed domain name by registering the confusingly similar domain name and using Complainant’s HERFF JONES mark at the resolving website.  Complainant alleges that Respondent commercially profits from this confusion by receiving click-through fees.  The Panel determines that the confusingly similar <herffones.com> domain name and Complainant’s screenshot of the resolving website sufficiently demonstrate that Respondent is attempting to create confusion as to Complainant’s affiliation with the domain name and resolving website.  As the Panel accepts Complainant’s claim that Respondent receives click-through fees from the aforementioned hyperlinks, the Panel holds that Respondent registered and uses the <herffones.com> domain name in bad faith under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to 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).

 

Complainant also contends that in light of the fame and notoriety of Complainant's HERFF JONES mark, it is inconceivable that Respondent could have registered the <herffones.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

The Panel finds that Complainant sufficiently proved Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).

 

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 <herffones.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  March 16, 2012

 

 

 

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