Charming Shoppes, Inc. v. - / Domain Name
Claim Number: FA1210001469451
Complainant is Charming Shoppes, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is - / Domain Name (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kanebryant.com>, <laebryant.com>, <lanebeyant.com>, <lanebrryant.com>, <lanebrtant.com>, <lanebryaant.com>, <lanebryabt.com>, <lanebryaht.com>, <lanebryamt.com>, <lanebryand.com>, <lanebryandt.com>, <lanebryane.com>, <lanebryannt.com>, <lanebryanyt.com>, <lanebryatn.com>, <lanebrynat.com>, <lanebrysnt.com>, <lanebrytant.com>, <lanebtyant.com>, <lanegryant.com>, and <lanenryant.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2012; the National Arbitration Forum received payment on October 30, 2012.
On November 1, 2012; Nov 2, 2012;Nov 19, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <kanebryant.com>, <laebryant.com>, <lanebeyant.com>, <lanebrryant.com>, <lanebrtant.com>, <lanebryaant.com>, <lanebryabt.com>, <lanebryaht.com>, <lanebryamt.com>, <lanebryand.com>, <lanebryandt.com>, <lanebryane.com>, <lanebryannt.com>, <lanebryanyt.com>, <lanebryatn.com>, <lanebrynat.com>, <lanebrysnt.com>, <lanebrytant.com>, <lanebtyant.com>, <lanegryant.com>, and <lanenryant.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com 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 November 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@kanebryant.com, postmaster@laebryant.com, postmaster@lanebeyant.com, postmaster@lanebrryant.com, postmaster@lanebrtant.com, postmaster@lanebryaant.com, postmaster@lanebryabt.com, postmaster@lanebryaht.com, postmaster@lanebryamt.com, postmaster@lanebryand.com, postmaster@lanebryandt.com, postmaster@lanebryane.com, postmaster@lanebryannt.com, postmaster@lanebryanyt.com, postmaster@lanebryatn.com, postmaster@lanebrynat.com, postmaster@lanebrysnt.com, postmaster@lanebrytant.com, postmaster@lanebtyant.com, and postmaster@lanegryant.com and postmaster@lanenryant.com. Also on November 21, 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 December 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 issues 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant
a) Complainant conducts retail store services for women’s clothing under the LANE BRYANT mark. The LANE BRYANT mark (e.g., Reg. No. 1,293,460 registered September 4, 1984) is registered with the United States Patent and Trademark Office (“USPTO”), the registration owned by Complainant.
b) The <kanebryant.com>, <laebryant.com>, <lanebeyant.com>, <lanebrryant.com>, <lanebrtant.com>, <lanebryaant.com>, <lanebryabt.com>, <lanebryaht.com>, <lanebryamt.com>, <lanebryand.com>, <lanebryandt.com>, <lanebryane.com>, <lanebryannt.com>, <lanebryanyt.com>, <lanebryatn.com>, <lanebrynat.com>, <lanebrysnt.com>, <lanebrytant.com>, <lanebtyant.com>, <lanegryant.com>, and <lanenryant.com> domain names are confusingly similar to the LANE BRYANT mark. The disputed domain names differ from the LANE BRYANT mark merely by a minor misspelling and the addition of the generic top-level domain (“gTLD”) “.com.”
c) Respondent is not commonly known by the disputed domain names. Respondent has not been authorized or licensed to use the LANE BRYANT mark and is not sponsored by or legitimately affiliated with Complainant.
d) The disputed domain names resolve to websites which are not associated with any content.
e) Respondent has engaged in typosquatting of the LANE BRYANT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 asserts that it conducts retail store services for women’s clothing under the LANE BRYANT mark. Complainant provides the Panel with evidence that the LANE BRYANT mark (e.g., Reg. No. 1,293,460 registered September 4, 1984) is registered with the USPTO, and the registration is owned by Complainant. Panels have found that, regardless of the location of the parties, the registration of a mark is evidence of having rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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). Therefore, the Panel finds that Complainant has rights in the LANE BRYANT mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <kanebryant.com>, <laebryant.com>, <lanebeyant.com>, <lanebrryant.com>, <lanebrtant.com>, <lanebryaant.com>, <lanebryabt.com>, <lanebryaht.com>, <lanebryamt.com>, <lanebryand.com>, <lanebryandt.com>, <lanebryane.com>, <lanebryannt.com>, <lanebryanyt.com>, <lanebryatn.com>, <lanebrynat.com>, <lanebrysnt.com>, <lanebrytant.com>, <lanebtyant.com>, <lanegryant.com>, and <lanenryant.com> domain names are confusingly similar to the LANE BRYANT mark. Complainant notes that the disputed domain names differ from the LANE BRYANT mark merely by a minor misspelling and the addition of the gTLD “.com.” Panels have found that misspelling a mark does not distinguish the mark from the domain name it is incorporated within. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Additionally, the Panel finds that the addition of a gTLD to a mark, and the removal of the space from between the terms of the mark, in a domain name is irrelevant to a determination of confusing similarity. 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 the disputed domain names are confusingly similar to the LANE BRYANT mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain names. According to Complainant, Respondent is not commonly known by the disputed domain names. Complainant states that Respondent has not been authorized or licensed to use the LANE BRYANT mark and is not sponsored by or legitimately affiliated with Complainant. Furthermore, the Panel notes that the WHOIS record for the disputed domain names list “- / Domain Name” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names 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).
Next, Complainant contends that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. Complainant demonstrates that the disputed domain names resolve to websites which are not associated with any content. Panels have found that non-use of a domain name is evidence of a lack of rights and legitimate interests. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that Respondent’s failure to use the disputed domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant has proven this element.
Complainant asserts that Respondent registered and is using the disputed domain names in bad faith. Panels reference the four factors which demonstrate bad faith outlined in Policy ¶ 4(b). However, these factors were not meant to make up an exclusive list. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). As such, the Panel considers the totality of the circumstances when determining if Complainant acted in bad faith.
Complainant contends that Respondent’s non-use of the disputed domain names also demonstrates bad faith. Complainant notes that the disputed domain names resolve to completely blank websites. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant asserts that Respondent’s bad faith is further evidenced by Respondent’s typosquatting of the LANE BRYANT mark in the disputed domain names. Complainant notes that each of the disputed domain names are made up of the LANE BRYANT mark, misspelled by a single letter, and the gTLD “.com.” Therefore, the Panel finds that Respondent’s registration and use of the disputed domain names are a product of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <kanebryant.com>, <laebryant.com>, <lanebeyant.com>, <lanebrryant.com>, <lanebrtant.com>, <lanebryaant.com>, <lanebryabt.com>, <lanebryaht.com>, <lanebryamt.com>, <lanebryand.com>, <lanebryandt.com>, <lanebryane.com>, <lanebryannt.com>, <lanebryanyt.com>, <lanebryatn.com>, <lanebrynat.com>, <lanebrysnt.com>, <lanebrytant.com>, <lanebtyant.com>, <lanegryant.com>, and <lanenryant.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 28, 2012
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