The Convertible Castle, Inc. d/b/a Bernie & Phyl's Furniture v. Omex Infotech / Jagdish Sagar
Claim Number: FA1204001441611
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 Omex Infotech / Jagdish Sagar (“Respondent”), represented by Omex Infotech, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bernieandphyls.net>, registered with Siliconhouse.Net Pvt Ltd.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2012; the National Arbitration Forum received payment on April 30, 2012.
On May 2, 2012, Siliconhouse.Net Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <bernieandphyls.net> domain name is registered with Siliconhouse.Net Pvt Ltd. and that Respondent is the current registrant of the name. Siliconhouse.Net Pvt Ltd. has verified that Respondent is bound by the Siliconhouse.Net Pvt 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 May 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@bernieandphyls.net. Also on May 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 May 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant, The Convertible Castle, Inc., has since November 1998 continuously used in trade and commerce the name "Bernie & Phyl 's Furniture" to identify itself as a commercial retail seller of a full line of home and office furniture and accessories. The Complainant has used the trademark in connection with the advertising and sale of furniture at its retail stores in Massachusetts, New Hampshire, and Rhode Island and since 1999 online at its website with the domain name bernieandphyls.com.
Complainant, The Convertible Castle, Inc. d/b/a Bernie & Phyl's Furniture, registered the name "Bernie & Phyl's Furniture" and a related mark with the United States Patent and Trademark Office (USPTO) on January 23, 2001 and was assigned Registration Number 2423282. The first use date was recorded as 1998-11-00. This registration was cancelled on August 26, 2011 in favor of a new registration with updated art design as described in paragraph (iii) below.
Complainant, The Convertible Castle, Inc. d/b/a Bernie & Phyl's Furniture, registered the words "Bernie & Phyl's Furniture Quality, Comfort & Price" and a related mark with the USPTO on August 5, 2008 and was assigned Registration Number 3479698. The first use date was recorded as 2007-06-06.
The Complainant, using its trade name "Bernie & Phyl's Furniture" registered the Domain Name, "Bemieandphyls.com" on December 9, 1999 with Network Solutions, LLC. The Complainant has continuously used the domain name "Bemieandphyls.com" in connection with its online e-commerce enabled website to sell a full line of home and office furniture and accessories.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] [Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.] UDRP Rule 3(b)(ix)(l); UDRP Policy ¶4(a)(i).
The Respondent, Omex lnfotech registered and/or its client is utilizing the obviously confusingly similar domain name "Bemieandphyls.net" to direct search traffic to a website which in tum directs customers to websites of direct competitors of the Complainant and to unrelated businesses. The name is identical to the Complainant's valid trademark "Bernie & Phyl's Furniture" with the substitution of the word "and" for the ampersand and is clearly designed to capture keystroke errors and/or customers searching for Complainant's furniture store website, Bernieandphyls.com.
[b.] [Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.} UDRP Rule 3(b)(ix)(2); UDRP(a)(ii).
Respondent's domain names have been utilized and continue to be utilized to direct internet users to various websites which advertise and sell furniture and other merchandise in direct competition with the Complainant in the same geographic area as the Complainant's businesses. The confusingly similar domain names clearly leverage the good will and palm off of the Complainant's successful online e-Commerce business. The Respondent's website to which internet traffic is directed under either domain name purports to sell "Living Room Furniture", "Formal Living Room Furniture" "Furniture Living" etc ... ; all in direct competition with the Complainant.
In fact, the Respondent directs internet traffic to Complainant's competitors, such as Lowe's Department Stores.
. Respondent is clearly not in the business of selling furniture and is improperly utilizing Complainant's hard earned reputation to palm off and otherwise dilute Complainant's trademark rights by directing internet traffic to competitors and other unrelated businesses.
"Bernie & Phyl's Furniture" was created by the founders of The Convertible Castle, Inc., Bernard and Phyllis Rubin, to reflect their commonly used first names. For the Respondent to suggest that it came up with its Domain names for any reason other than to leverage the Company's good will and valuable trademark rights would strain credulity.
Respondent is not in the business of selling furniture and is not known by the domain name it is utilizing.
Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the reputation of the trademark
[c.] [Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith.] UDRP Rule 3(b)(ix)(3); UDRP(a)(iii).
The domain name is virtually identical to the Complainant's registered trademark and the Complainant's validly registered domain name used to identify its furniture store e-commerce website.
The domain name was registered in India yet drives internet traffic to retailers in the United States.
Respondent has no rights or legitimate interests in respect of the domain name it has registered for the illegal purpose of intentionally causing confusion in the marketplace and otherwise leverage the Complainant's hard earned reputation and good will.
Respondent's use of the confusingly similar domain names has disrupted the business of the Complainant.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to on-line locations which sell competing products and accessories thereby by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of those websites or locations or of the products or services on those websites or locations.
The Respondent has copied and republished certain copyrighted content taken from the Complainant's website.
B. Respondent
Respondent failed to submit a Response in this proceeding although Respondent submitted several emails which do not constitute a formal response to the Complaint.
The only relevant portion of these emails reads: “I am ready to give you [Complainant] full ownership on this domain.” While this sentence is written in the conditional, in the context it was written it appears to be an absolute authorization to transfer.
The parties were unable to effectuate a transfer directly because of the lock placed on the domain name by the registrar. Neither party moved to stay these proceedings so they could resolve this matter on their own (probably in recognition a decision might be the simplest and fastest way to transfer the domain name).
(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.
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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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.
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.”).
While the Panel believes it has been authorized to summarily order the transfer of the domain name, it will nevertheless go through the analysis out of an abundance of caution.
Complainant claims to own rights in the BERNIE & PHYL’S FURNITURE mark through its trademark registration with the USPTO (Reg. No. 2,423,282 registered January 23, 2001). The panel in Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), held that a complainant’s trademark registrations with the USPTO properly demonstrates rights in the complainant’s mark under Policy ¶4(a)(i). This Panel agrees and concludes Complainant has established sufficient rights in its BERNIE & PHYL’S FURNITURE mark through registration of the mark with the USPTO. Policy ¶4(a)(i) does not require Complainant to register a mark in the country where Respondent resides and operates. See 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); 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).
Complainant claims the <bernieandphyls.net> domain name is identical to its BERNIE & PHYL’S FURNITURE mark. Complainant points out the ampersand from its mark is replaced with the word “and” in the disputed domain name (the Panel notes in passing an ampersand is not part of the valid character set for domain names). The disputed domain name does not include the word “furniture,” excludes the spaces in the mark, and adds the generic top-level domain (“gTLD”) “.net.” The panel in McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) domain name is confusingly similar to the complainant’s McKinsey & Company mark, because an ampersand does not affect a user’s understanding of the domain name. The panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), found that spaces are impermissible in domain names, and therefore the disputed domain name was confusingly similar to the complainant’s American General mark. In Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005), the panel stated that the domain name at issue, which eliminated one word from the mark, was confusingly similar to the complainant’s mark. In Advanta Corp v. Gilmore, FA 1129726 (Nat. Arb. Forum Feb. 28, 2008), the panel stated that the gTLD “.net” does not influence the outcome of whether a domain name is confusingly similar to a mark because a gTLD is required in a domain name. The Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent has no rights or legitimate interests in the <bernieandphyls.net> domain name because it is derived from a mark originating from the given names of Complainant’s founders and could not have been created by Respondent. The Panel notes Complainant provided the WHOIS information associated with the disputed domain name, which identified “Omex Infotech / Jagdish Sagar” as the registrant. The WHOIS information clearly does not support a finding Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). Respondent does not possess rights and legitimate interests in the disputed domain name under Policy ¶4(c)(ii). See 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant claims Respondent uses the <bernieandphyls.net> domain name to direct Internet users to various websites advertising and selling furniture in competition with Complainant. Complainant submitted screenshots showing the resolving website, which the Panel notes displays content regarding furniture sales and hyperlinks to competing stores (as well as appearing to palm the domain name off as being operated by Complainant). The panel in Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005), held the respondent’s use of the domain name to advertise competing services was not a bona fide offering of goods or services, because the respondent was using the complainant’s mark in order to profit from the mark. The panel in Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) found using a confusingly similar domain name to misdirect Internet traffic to competing websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s use of the disputed domain name to host competing hyperlinks and advertise competing services 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 Policy ¶4(a)(ii) satisfied.
Complainant alleges its business is disrupted due to Respondent’s registration and use of the <bernieandphyls.net> domain name. Complainant points out the resolving website was registered in India but directs Internet traffic to competing United States retailers. The web site is presented in such a way that it appears to be controlled by Complainant. This Panel concludes Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iii) by operating a website that redirects consumers to websites belonging to Complainant’s competitors, thereby disrupting Complainant’s business. 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 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).
Complainant argues Respondent “has intentionally attempted to attract, for commercial gain,” Internet traffic to its website, which Complainant claims sells competing products and accessories. Complainant claims this use risks causing confusion as to the possible affiliation between the disputed domain name and Complainant. The contents of the web site suggests it is controlled by Complainant. The Panel finds Respondent registered and uses the <bernieandphyls.net> domain name in bad faith under Policy ¶4(b)(iv) by attracting consumers to its resolving web page and causing confusion, which results in profit to Respondent. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); 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 Policy ¶4(a)(iii) satisfied.
Aside from the foregoing, Respondent consents to the transfer of the domain name.
Having established all three elements required under the ICANN Policy and with Respondent’s consent, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bernieandphyls.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, June 6, 2012
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