Avenue Stores, LLC v. Brian Edwards
Claim Number: FA1212001476523
Complainant is Avenue Stores, LLC (“Complainant”), New Jersey, USA. Respondent is Brian Edwards (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <avenueclearance.com> and <avenueoutlet.com>, registered with GODADDY.COM, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his 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 December 18, 2012; the National Arbitration Forum received payment on December 18, 2012.
On December 18, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <avenueclearance.com> and <avenueoutlet.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 December 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2013 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@avenueclearance.com, postmaster@avenueoutlet.com. Also on December 19, 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 January 18, 2013, 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of numerous trademark registrations in the United States, Canada and Europe that consist of the brand AVENUE joined with related businesses, goods and services with the U.S. Patent and Trademark Office’s (USPTO), the Canadian Intellectual Property Office (CIPO) and the Office for Harmonization in the Internal Market (OHIM). Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s Marks.” The trademarks relevant to this instant matter are:
[i]. AVENUE for women's clothing, namely, sweaters, pants, shorts, sweatshirts, sweatpants, coats, swimwear, suits, dresses, separates, blouses, bras, control tops, slips, camisoles, teddies, shirts, shoes, pajamas, and robes (U.S. Reg. No. 1563443);
[ii]. AVENUE for retail store services, in the following fields - women's clothing; women's footwear; bags, namely, handbags, [sport bags,] purses, tote bags, [duffel bags,][weekend bags,] [wallet on a string bags, back packs,] [sling bags,] [macrame bags, and canvas bags; perfumes, colognes, cosmetics,] bath and beauty aids, [shampoos, hair treatment products,] and personal care products [scented candles; and sunglass cases] (U.S. Reg. No. 2,218,272);
[iii]. AVENUE for women's clothing, namely, dresses and pants; tops, jackets, shorts, skirts, swimwear and coats. (U.S. Reg. No. 2,445,518);
[iv]. AVENUE.COM for retail store services, available through computer communications and other interactive devices, on-line retail store services, and electronic retailing services via computer featuring women's clothing, women's footwear, bags, namely handbags. (U.S. Reg. No. 2,472,442);
[v]. AVENUE for retail store services, available through computer communications and other interactive devices, on-line retail store services, and electronic retailing services via computer featuring women's clothing, women's footwear, namely, [handbags,] purses,[sling bags]. (U.S. Reg. No. 2,474,547);
[vi]. AVENUE for retail store services, available through computer communications and other interactive devices, on-line retail store services, and electronic retailing services via computer featuring [sport bags, tote bags, duffel bags, weekend bags,] wallet on a string bags [back packs, macrame bags, and canvas bags, perfumes, colognes, cosmetics, bath and beauty aids, shampoos, hair treatment products, and personal care products, scented candles, and sunglass cases]. (U.S. Reg. No. 2,601,626);
[vii]. AVENUE for Blazers, blouses, capris, dresses, ladies' suits, pants, shirts, shorts, sweaters, coats, scarves, gloves (CIPO Reg. No. TMA548132);
[viii]. AVENUE for operation of a financial institution comprising operation of a trust company and operation of a loan company; services to corporations, namely, accepting deposits, lending money, investment advising and managing, acting as receivers, managers, and escrow agents; providing the services of automated teller machines; insurance services; mutual fund investment services; vehicle leasing services (CTM 009952995); and
[ix]. AVENUE for Online retail store services featuring clothing, outerwear, footwear, handbags, jewelry, writing instruments, fragrances and accessories; Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddler; and Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments (CTM 010254514).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Avenue Stores LLC, based in Rochelle Park, New Jersey, is a specialty retailer. Founded in the United States in 1987, the company serves a target audience of women aged between 25 and 55, wearing apparel sized 14 or larger. AVENUE is a fun, trend-right, multi-channel source for affordable fashion for real size women with a youthful attitude. Avenue offers clothing and accessories to fit every lifestyle need from home to the office to a night out on the town.
Avenue Stores LLC operates 500 stores in 37 states, all under the name AVENUE. Avenue has also been operating their main website <www.avenue.com> since 1998. <www.avenue.com> lists all the clothing, shoes and jewelry available in the stores for sale online 24 hours a day 7 days a week.
According to Compete.com, the Complainant’s website <avenue.com> attracts over 800,000 unique visitors per month, spiking to over 1.1 million during the Christmas Holiday season.
In summary, the Complainant’s brand is well recognized by consumers, industry peers and the broader community.
The Complainant owns the Marks for which it has obtained numerous trademark registrations. None of these registrations have been abandoned, cancelled or revoked.
Lastly, the Complainant has made significant investments over the years to advertise, promote and protect Complainant’s Marks through various forms of media including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the AVENUE marks for retail store services and on-line retail store services for women's clothing.
[a.] The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i)):
[i]. By virtue of its federal trademark and service mark registrations, the Complainant is the owner of the Complainant’s Mark. See, United Way of America v. Alex Zingaus, FA1036202 (NAF Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”).
[ii]. When comparing the Disputed Domain Names to the Complainant’s Mark, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and the Complainant’s Mark. Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA0153545 (NAF May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
[iii]. Furthermore, the addition of the non-distinctive descriptive terms “outlet” and “clearance” to Complainant’s famous AVENUE trademark does not negate the confusing similarity between <avenueoutlet.com>, <avenueclearance.com> and the Complainant’s Marks under Policy ¶4(1)(i). See Exxon Mobil Corporation v. mga enterprises limited, FA1273445 (NAF Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark); Homer TLC, Inc. v. Whois Guard, FA619597 (NAF Feb. 14, 2006) (finding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity). Complainant’s AVENUE mark was in use for over 16 years prior to Respondent’s registration of the disputed domain names <avenueoutlet.com> and <avenueclearance.com>. Furthermore, consumers seeking information on AVENUE products could easily assume that a site with the domain name <avenueoutlet.com> or <avenueclearance.com> would be associated with AVENUE, and would be highly surprised to discover that the owner of the domain name has no relationship to AVENUE. Respondent is not a licensee and is not affiliated with Complainant in any manner. Respondent’s continued use of the domain names <avenueoutlet.com> and <avenueclearance.com> is likely to confuse Complainant’s customers and potential customers into believing that there is some affiliation, connection, sponsorship, approval or association between the Respondent and Complainant when in fact none exists.
[b.] Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons (UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii)):
[i]. Respondent has not been commonly known by the Disputed Domain Names. See Policy, ¶4(c)(ii). Where, as here, “the WHOIS information suggests Respondent is known as” an entity other than the trademark associated with Complainant, and Complainant has not “licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s… mark,” a Panel should find that the Respondent is not commonly known by the Disputed Domain Name(s). See United Way of America v. Alex Zingaus, FA1036202 (NAF Aug. 30, 2007).
[ii]. Respondent is not sponsored by or affiliated with Complainant in any way.
[iii]. Complainant has not given Respondent permission to use Complainant’s Marks in a domain name.
[iv]. Respondent has failed to make an active use of the Disputed Domain Names, which indicates a lack of rights and legitimate interests under Policy ¶4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA204112 (NAF Dec. 6, 2003) (“[T]he Panel concludes that Respondent’s [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶4(a)(ii).”); See also Am. Online, Inc. v. Kloszewski, FA204148 (NAF Dec. 4, 2003) (“Respondent’s [failure to make an active use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
[v]. Furthermore, prior to the domain names not resolving, the disputed domain names contained hyperlinks that were linked to Avenue URL’s associated with LinkShare Affiliate ID of S80n3R16Bqc&. Respondent was profiting from this use of “click through fraud” by routing Internet users through this affiliate program and then onto Complainant’s website. Panels have found that routing Internet users through an affiliate program in order to profit through Complainant’s affiliate program, and in violation of such an agreement, is not 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 Barnesandnoble.com LLC v. Your One Stop Web Shop, FA670171 (NAF May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii)); see also Deluxe Corp. v. Dallas Internet, FA105216 (NAF Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program).
[vi].
Respondent
registered the Disputed Domain Names on December 10, 2002, which is
significantly after the Complainant’s registration of AVENUE.COM on November 6,
1998.
[vii]. Respondent registered the Disputed Domain Names on December 10, 2002, which is significantly after the Complainant filed for registration of their relevant Marks with the CIPO and USPTO and also significantly after the Complainant’s first use in commerce of the AVENUE Mark in 1986.
[c.] The domain name should be considered as having been registered and being used in bad faith for the following reasons (UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii)):
[i]. The Respondent has ignored Complainant’s attempts to resolve the dispute outside of this administrative proceeding. Failure to respond to a cease and desist letter indicates bad faith registration and use of a domain name. See, Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond provides “strong support for a determination of ‘bad faith’ registration and use.”); see also, RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
[ii]. The Complainant and the AVENUE brands are known internationally. The Complainant has marketed and sold services using the Complainant’s Marks since 1986. Indeed, by registration of “AVENUEOUTLET” and “AVENUECLEARANCE” by the Respondent has demonstrated a thorough knowledge of the AVENUE brand and business. Thus, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000).
[iii]. Respondent’s failure to make a bona fide use of the Domain Names by not resolving to an active website constitutes “passive holding” in bad faith because the Domain Name incorporates Complainant’s Marks and there is no conceivable use of the Domain Name for a website by Respondent that would be legitimate. See, Indymac Bank v. Ebeyer FA175292 (NAF Sept. 19, 2003) (finding respondent registered the domain names <indymax.com> among others in bad faith and holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use.”)
[iv]. Furthermore, the Respondents previous abusive use and the failure to make a current active use of the Disputed Domain Names indicates that the Respondent has engaged in bad faith registration and use under Policy ¶4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Disney Enters. Inc. v. Meyers, FA697818 (NAF June 26, 2006) (holding that the non-use of a Disputed Domain Name(s) for several years constitutes bad faith registration and use under Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 all of the following three elements to obtain an order cancelling or transferring 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.”).
Complainant presents evidence it registered the AVENUE mark with the USPTO (Reg. No. 1,563,443 registered Oct. 31, 1989); CIPO (Reg. No. TMA548132 registered July 13, 2001); and OHIM (Reg. No. 10254514 registered Sept. 9, 2011). Previous panels have found registration for a given mark with a recognized trademark agency normally indicates rights in that mark. See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶4(a)(i).”); see also Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)). This Panel concurs with the prior UDRP panel holdings and finds Complainant has rights in the AVENUE mark under Policy ¶4(a)(i).
Complainant claims the <avenueclearance.com> and<avenueoutlet.com> domain names are confusingly similar to Complainant’s AVENUE mark. Complainant claims the addition of the descriptive terms “outlet” or “clearance” to Complainant’s AVENUE mark in the disputed domain names does not adequately distinguish the disputed domain names from Complainant’s registered mark. Complainant argues the addition of a generic top-level domain (“gTLD”) “.com” also does not adequately distinguish a disputed domain name from a mark. Previous panels have found these variations are insufficient to distinguish a disputed domain name from a given mark because every domain name must have a TLD (whether a gTLD or a ccTLD). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). This Panel concurs with the previous panel rulings and holds the <avenueclearance.com> and <avenueoutlet.com> domain names are confusingly similar to Complainant’s AVENUE mark.
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 names 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 claims Respondent is not commonly known by the <avenueclearance.com> and <avenueoutlet.com> domain names. The WHOIS information lists “Brian Edwards” as the registrant, which isn’t similar to the disputed domain names. Complainant claims it has not licensed, authorized, or permitted Respondent to use its AVENUE mark. The Panel finds Respondent is not commonly known by the <avenueclearance.com> and <avenueoutlet.com> domain names pursuant to Policy ¶(c)(ii).
Complainant claims Respondent lacks rights and legitimate interests in the <avenueclearance.com> and <avenueoutlet.com> domain names because it does not make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and ¶4(c)(iii). Complainant submits current screenshots from the sites resolving from the disputed domain names indicating that they resolve to a nonfunctional web page. Complainant argues Respondent has failed to make an active use of the <avenueclearance.com> and <avenueoutlet.com> domain names. Failing to make an active use of a domain name (the most visible way is by constructing a web site, although there are other ways) which contains complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Complainant further claims Respondent’s previously used the <avenueclearance.com> and <avenueoutlet.com> domain names to resolve to pages containing links connected to Complainant’s business. Complainant argues Respondent was profiting by routing Internet users through its affiliate program and then to Complainant’s webpage. The evidence submitted for the website previously resolving from the <avenueclearance.com> and <avenueoutlet.com> domain names comes from the “Wayback Machine,” (the Internet archive tool), with the text, “Page cannot be crawled or displayed due to robots.txt,” and multiple links. Previous panels have typically found a respondent has no rights or legitimate interests when it uses a confusingly similar domain name to redirect Internet users to a complainant’s webpage and receive commission through complainant’s affiliate program. See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program). This Panel agrees and finds Respondent lacked rights and legitimate interests in its previous use of the <avenueclearance.com> and <avenueoutlet.com> domain names because it was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Bad faith registration and use can be inferred from the totality of the circumstances because Paragraph 4(b) is intended to be illustrative, rather than exclusive. See Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Complainant argues Respondent is passively holding the <avenueclearance.com> and <avenueoutlet.com> domain names in bad faith. Respondent’s disputed domain names contain Complainant’s AVENUE mark in its entirety. Complainant claims there is no possible legitimate use of Respondent’s resolving websites. Previous panels have found that inactively holding a confusingly similar domain name is bad faith pursuant to 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). When combined with the additional fact Respondent previously took advantage of Complainant’s affiliate program, this Panel finds Respondent’s inactive holding of the <avenueclearance.com> and <avenueoutlet.com> domain names sufficiently indicates bad faith registration and use pursuant to Policy ¶4(a)(iii).
Complainant asserts that its trademark registrations for the AVENUE mark are well known internationally. Complainant further claims that the registrations for the AVENUE mark existed well before the registration of the disputed domain name, stating that it has used the mark for marketing and sales since 1986. Based upon Respondent’s unauthorized participation in Complainant’s referral program, the Panel finds Respondent had actual knowledge of the mark and Complainant's rights. Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). 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."); 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <avenueclearance.com> and <avenueoutlet.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, January 31, 2013
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