DBD, Inc. as the Intellectual Property Holding Company for David's Bridal, Inc. v. The Bridal Shop
Claim Number: FA1208001457759
Complainant is DBD, Inc. as the Intellectual Property Holding Company for David's Bridal, Inc. (“Complainant”), represented by Lisa J. Reppert of Reppert Kelly, LLC, New Jersey, USA. Respondent is The Bridal Shop (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidsbridalgowns.com>, registered with Network Solutions, LLC.
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.
Dr. Reinhard Schanda, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2012; the National Arbitration Forum received payment on August 13, 2012.
On August 13, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <davidsbridalgowns.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@davidsbridalgowns.com. Also on August 13, 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.
A timely Response was received and determined to be complete on September 4, 2012.
On September 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends, in relevant parts, as follows:
1. Complainant has rights in the DAVID’S BRIDAL mark.
2. The mark is used in connection with bridal gowns, apparel, and accessories.
3. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) trademark registrations for the DAVID’S BRIDAL mark (e.g., Reg. No. 2,426,973 registered February 6, 2001).
4. The <davidsbridalgowns.com> domain name is confusingly similar to the DAVID’S BRIDAL mark.
5. Respondent lacks rights and legitimate interests in the disputed domain name
6. Respondent is not commonly known by the <davidsbridalgowns.com> domain name.
7. The <davidsbridalgowns.com> domain name is used to sell competing wedding gowns via <foreverbridals.com> and linking Internet users to third-party websites selling wedding dresses.
8. Respondent registered and is using the disputed domain name in bad faith.
9. Respondent registered and uses the disputed domain name to profit from the goodwill associated with Complainant’s mark by registering a confusingly similar domain name and selling competing products.
10. In 2010, Respondent agreed to transfer the <davidsbridalgowns.com> domain name to Complainant but failed to transfer the domain name.
11. Respondent was familiar with Complainant’s mark at the time it registered the disputed domain name.
B. Respondent
In its Response, Respondent contends, in relevant parts, as follows:
1. Respondent has been in the bridal industry making bridal veils and dresses for 40 years as the manufacturer Sweetheart Gowns.
2. Respondent owns a few websites related to its business.
3. Respondent’s website relates to building the Temple for King David.
4. Complainant’s first Chinese factory was Respondent’s exclusive factory, but Complainant was selling its gowns out of the back door.
The Panel finds that:
1. the Domain Name <davidsbridalgowns.com>, is confusingly similar to Complainant’s marks,
2. the Respondent has not established any right or legitimate interest in the Domain Name <davidsbridalgowns.com>, and
3. the Respondent has registered and is using the Domain Name <davidsbridalgowns.com>, 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 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 asserts that it has rights in the DAVID’S BRIDAL mark. Complainant notes that it uses its mark in connection with bridal gowns, apparel, and accessories. Complainant contends that it is the owner of USPTO trademark registrations for the DAVID’S BRIDAL mark (e.g., Reg. No. 2,426,973 registered February 6, 2001). Panels have held that the registration of a mark with a national trademark authority, such as the USPTO, is evidence of rights in that mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Therefore, the Panel finds that Complainant has rights in the DAVID’S BRIDAL mark under Policy ¶ 4(a)(i).
Complainant next alleges that Respondent’s <davidsbridalgowns.com> domain name is confusingly similar to the DAVID’S BRIDAL mark. Complainant asserts that the only substantive difference between the disputed domain name and Complainant’s mark is the addition of the generic term “gowns.” The Panel notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com” and does not feature the space or apostrophe found in Complainant’s mark. Panels have found that the addition of a descriptive term does not bar a panel from finding a domain name to be confusingly similar. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also held that the deletion of punctuation, such as an apostrophe, fails to distinguish a disputed domain name from the mark within it. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark). Finally, panels have held that the deletion of a space in a mark and the addition of a generic top-level domain (“gTLD”) are irrelevant to a Policy ¶ 4(a)(i). 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)). Therefore, the Panel finds that Respondent’s <davidsbridalgowns.com> domain name is confusingly similar to the DAVID’S BRIDAL mark pursuant to Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent has neither rights nor legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record for the <davidsbridalgowns.com> domain name lists “The Bridal Shop” as the domain name registrant. Panels have found that the WHOIS record is strong evidence of whether or not a respondent is commonly known by the disputed domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the <davidsbridalgowns.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the <davidsbridalgowns.com> domain name is further evidence of its lack of rights and legitimate interests. Complainant notes that the <davidsbridalgowns.com> domain name is used to sell competing wedding gowns via <foreverbridals.com> and linking Internet users to third-party websites selling wedding dresses. Panels have held that the use of a domain name to sell competing products or display links to competing products is not a use protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the <davidsbridalgowns.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent registered and is using the <davidsbridalgowns.com> domain name in bad faith. Complainant asserts that the disputed domain name sells competing wedding dresses and links to websites selling competing wedding dresses. Complainant contends that Respondent registered and uses the disputed domain name to profit from the goodwill associated with Complainant’s mark by registering a confusingly similar domain name and selling and linking to competing products. The Panel determines that Respondent registered and uses the disputed domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source of the domain name. Therefore, the Panel finds that Respondent registered and is using the <davidsbridalgowns.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant also argues that Respondent’s past actions constitute bad faith. Complainant alleges that, in 2010, Respondent agreed to transfer the <davidsbridalgowns.com> domain name to Complainant but never actually transferred the disputed domain name. Complainant asserts that it only now discovered that the transfer was never made and that Respondent’s failure to complete the transfer previously is addition evidence of bad faith. The Panel finds that Respondent’s registration and use of the <davidsbridalgowns.com> domain name are in bad faith under Policy ¶ 4(a)(iii) given Respondent’s theoretical consent to previously transfer the domain name coupled with its continued holding and infringing use of the <davidsbridalgowns.com> domain name.
Complainant lastly asserts that Respondent was familiar with Complainant’s DAVID’S BRIDAL mark at the time it registered the disputed domain name. Although the Panel finds that constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark. As a result the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <davidsbridalgowns.com> domain name be TRANSFERRED from Respondent to.
Dr. Reinhard Schanda, Panelist
Dated: September 10, 2012
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