DBD, Inc. v. yang li
Claim Number: FA1207001452960
Complainant is DBD, Inc. (“Complainant”), represented by Lisa J. Reppert of Reppert Kelly, LLC, New Jersey, USA. Respondent is yang li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mydavidsbridal.com>, registered with ENOM, INC.
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 11, 2012; the National Arbitration Forum received payment on July 12, 2012.
On July 11, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <mydavidsbridal.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 July 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@mydavidsbridal.com. Also on July 12, 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 August 7, 2012, 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.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
Respondent’s <mydavidsbridal.com>, domain name, the domain name at issue, is confusingly similar to Complainant’s DAVID’S BRIDAL mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the trademark registration for its DAVID’S BRIDAL mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,426,973 registered February 6, 2001). Complainant uses the DAVID’S BRIDAL mark to designate its bridal apparel and has been in the wedding apparel business since the 1950’s. Complainant’s product line is available only at its DAVID’S BRIDAL stores or through its online site at <davidsbridal.com>, where the DAVID’S BRIDAL mark is prominently displayed.
Respondent registered the <mydavidsbridal.com> domain name on September 29, 2011. The disputed domain name is confusingly similar to Complainant’s DAVID’S BRIDAL mark. The <mydavidsbridal.com> domain name resolves to a website that offers counterfeit wedding dresses using copyrighted imagery belonging to other entities, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent is not commonly known by the <mydavidsbridal.com> domain name and cannot claim rights or legitimate interests in the domain name. Respondent attracts Internet traffic to its website in order to market counterfeit versions of Complainant’s wedding dresses, which demonstrates Respondent’s bad faith registration and use. Respondent was familiar with Complainant’s DAVID’S BRIDAL mark and the fame associated with the brand name prior to the time Respondent registered the disputed domain name.
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 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.
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.”).
Complainant owns trademark rights in its DAVID’S BRIDAL mark via registrations with the USPTO (e.g., Reg. No. 2,426,973 registered February 6, 2001). The panel in Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), concluded that the complainant’s trademark registration with the USPTO of the DISNEY mark demonstrated the complainant’s rights in the mark. Complainant’s USPTO registration of the DAVID’S BRIDAL mark is sufficient to show that Complainant owns rights in the mark under Policy ¶ 4(a)(i). Under Policy ¶ 4(a)(i), Complainant is not required to register its mark in the country of Respondent’s residence. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
The <mydavidsbridal.com> domain name is confusingly similar to Complainant’s DAVID’S BRIDAL mark because the only difference between the domain name and Complainant’s mark is the addition of the word “my.” The <mydavidsbridal.com> domain name includes the generic top-level domain (“gTLD”) “.com,” and does not include the space between the words of the mark. The additions of a generic term and a gTLD to Complainant’s mark do not alter the disputed domain name’s confusing similarity to the mark pursuant to Policy ¶ 4(a)(i). See NIIT Ltd. v. Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”); 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).”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
The Panel notes that the WHOIS information for the disputed domain name identifies “yang li” as the registrant. The WHOIS information associated with the disputed domain name does not indicate that Respondent is commonly known by the <mydavidsbridal.com> domain name; therefore the Panel concludes that Respondent cannot claim rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). 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).
Respondent does not use the disputed domain name for a legitimate noncommercial or fair use because the Internet traffic attracted to the website consists of naïve consumers looking for bridal gowns marketed by Complainant. Respondent offers counterfeit versions of Complainant’s products, and consumers are diverted by Respondent’s competitive use of the <mydavidsbridal.com> domain name, which is not a bona fide offering of goods or services. Respondent’s competitive use of the disputed domain name to offer counterfeit goods purporting to come from Complainant’s business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Johnson & Johnson v. Breuer, FA 1240474 (Nat. Arb. Forum Feb. 16, 2009) (stating that the respondent’s use of the disputed domain name to sell counterfeit versions of the complainant’s products competes with the complainant’s business, and fails to meet the definition of a bona fide offering of goods or services, or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent takes advantage of Complainant’s DAVID’S BRIDAL marks to market its counterfeit versions of Complainant’s apparel and bridal wear, and Respondent’s registration and use amount to bad faith. Complainant’s DAVID’S BRIDAL mark is unique to its brand and has extensive publicity and recognition built as a result of its use, and Respondent’s use of the mark in the disputed domain name to attract Internet traffic demonstrates Respondent’s bad faith registration and use. The panel in Nervous Tattoo, Inc. v. zhong, FA 1252935 (Nat. Arb. Forum May 1, 2009), stated that by using the disputed domain name to sell counterfeit merchandise under a confusingly similar domain name to the complainant’s mark and make a profit, the respondent registered and used the domain name in bad faith. Respondent’s attempt to financially profit by creating confusion as to Complainant’s affiliation with the <mydavidsbridal.com> domain name demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Respondent was familiar with the notoriety and recognition of the DAVID’S BRIDAL mark at the time it registered the <mydavidsbridal.com> domain name. Respondent’s resolving website, which features counterfeit versions of its bridal gowns, demonstrates that Respondent had actual knowledge of Complainant’s rights in the DAVID’S BRIDAL mark. Accordingly, the Panel finds that Respondent registered the <mydavidsbridal.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mydavidsbridal.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 11, 2012
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