RCRV, Inc. d/b/a Rock Revival v. Elizabeth Woodruff
Claim Number: FA1301001482512
Complainant is RCRV, Inc. d/b/a Rock Revival (“Complainant”), represented by Alan C. Veronick of Arnold & Porter LLP, New York, USA. Respondent is Elizabeth Woodruff (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rockrevivaljeanssale.org>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2013; the National Arbitration Forum received payment on January 29, 2013.
On January 29, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <rockrevivaljeanssale.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 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@rockrevivaljeanssale.org. Also on January 31, 2013, 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 March 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ROCK REVIVAL mark. Respondent’s domain name is confusingly similar to Complainant’s ROCK REVIVAL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <rockrevivaljeanssale.org> domain name, and that Respondent registered and uses the domain name 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.
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 claims rights in the ROCK REVIVAL trademark. Complainant’s claim is based on its registration of the ROCK REVIVAL (Reg. No. 3,319,860 registered October 23, 2007) and ROCK REVIVAL & Design (Reg. No. 3,939,054 registered March 29, 2011) marks. A complainant’s registration of a mark with a federal trademark authority is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Accordingly, the Panel finds that Complainant has established rights under 4(a)(i) in the ROCK REVIVAL and ROCK REVIVAL & Design marks through its registration of the marks with the USPTO.
Pursuant to Policy ¶ 4(a)(i), Complainant claims that the disputed domain name is confusingly similar to Complainant’s marks. The Panel may find that the design elements of a mark are irrelevant to a Policy ¶ 4(a)(i) analysis because images cannot be reflected in a domain name. See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”). Complainant notes that the <rockrevivaljeanssale.org> domain name contains the ROCK REVIVAL mark in its entirety. Complainant contends that the addition of the phrase “jeans sale” does not distinguish the disputed domain name from Complainant’s mark, as these are merely generic or descriptive words that describe Complainant’s business purpose (selling jeans). The addition of generic words does not save a disputed domain name from a finding of confusing similarity. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). The disputed domain name removes the space in Complainant’s ROCK REVIVAL trademark and adds the gTLD “.org;” however, past panels have found these changes to be irrelevant. 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). Based on this precedent, the Panel finds the disputed domain name to be confusingly similar to Complainant’s ROCK REVIVAL mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, pursuant to Policy ¶ 4(a)(ii). Complainant first argues that, pursuant to Policy ¶ 4(c)(ii), Respondent has not been commonly known by any variation of the disputed domain name. The WHOIS information shows the disputed domain name registrant to be “Elizabeth Woodruff.” The discrepancy between the domain name and WHOIS identification is strong evidence that a Respondent is not known by the disputed domain name. 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).
Complainant also claims it has not been affiliated with Respondent or authorized Respondent to use the ROCK REVIVAL trademark at any time which is further evidence that Respondent is not commonly known by the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Accordingly, the Panel finds that Respondent has not demonstrated that it is commonly known by the disputed domain name.
Complainant also claims that Respondent is attempting to pass itself off as Complainant, by purporting to sell Complainant’s products and using Complainant’s marks and logos throughout the disputed domain name’s resolving website which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Therefore Respondent has not demonstrated rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant notes that while Respondent purports to be selling Complainant’s products, it is actually using the site to steal money from users and obtain personal information. Fraudulently obtain personal and financial data from Internet users constitutes a phishing scheme demonstrating a lack of rights and legitimate interests in the domain name used to accomplish this purpose. See Homer TLC, Inc. v. Seed of Abraham Christian School, FA 1358569 (Nat. Arb. Forum Jan. 3, 2011) (determining that the respondent lacks rights and legitimate interests in the <thehomedepotgardenclub.com> domain name because the respondent attempted to acquire the personal information of Internet users accessing the resolving website). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant argues that, even if a user ultimately determines that the <rockrevivaljeanssale.org> domain name leads to an illegitimate web page, Complainant has been harmed by the initial interest confusion. Such potential confusion supports a finding of bad faith under Policy ¶ 4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use).
Complainant next alleges that Respondent is attempting to pass itself off as Complainant, and that this represents an intentional attempt to attract Internet users for commercial gain by creating confusion with Complainant’s known mark. Such activity has been found to be evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Therefore, the Panel finds that Respondent registered and is using the disputed domain name to benefit from confusion created with the ROCK REVIVAL mark, and finds that this is evidence of bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant alleges that Respondent is not actually using the resolving website to sell anything at all, but is simply stealing consumers’ money and collecting their personal and financial information. Such “phishing” activity has been found to be evidence of bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). The Panel therefore finds that Respondent is using the disputed domain name for fraudulent purposes, and holds that this is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the ROCK REVIVAL mark. Complainant argues that Respondent's purported offering of Complainant's own products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See so Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rockrevivaljeanssale.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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