Winmark Corporation (dba Once Upon A Child) v. Dr. James Smith
Claim Number: FA1302001485119
Complainant is Winmark Corporation (dba Once Upon A Child) (“Complainant”), represented by Tamara L. Harmon of Winmark Corporation, Minnesota, USA. Respondent is Dr. James Smith (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onceuponachildcollierville.com>, registered with DYNADOT, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2013; the National Arbitration Forum received payment on February 14, 2013.
On February 13, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <onceuponachildcollierville.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, 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 February 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@onceuponachildcollierville.com. Also on February 19, 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 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:
1. Respondent’s <onceuponachildcollierville.com> domain name is confusingly similar to Complainant’s ONCE UPON A CHILD mark.
2. Respondent does not have any rights or legitimate interests in the <onceuponachildcollierville.com> domain name.
3. Respondent registered and used the <onceuponachildcollierville.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, Winmark Corporation (dba Once Upon A Child), is the franchisor of 266 “Once Upon A Child” stores that sell children’s clothing, furniture, and equipment. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ONCE UPON A CHILD mark (e.g., Reg. No. 1,668,930, registered December 17, 1991). Complainant also uses the domain name <onceuponachild.com> as its website.
Respondent registered the <onceuponachildcollierville.com> domain name on October 29, 2012, and uses it to resolve to third-party hyperlinks, some of which compete with Complainant.
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.”).
The Panel finds that Complainant’s USPTO trademark registration adequately demonstrates Complainant’s rights in its ONCE UPON A CHILD mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s domain name includes Complainant’s ONCE UPON A CHILD mark in its entirety, and adds the geographic descriptor “Collierville.” The Panel finds that the addition of a geographic term does not distinguish the disputed domain name from Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Respondent also removes the spaces between Complainant’s ONCE UPON A CHILD mark and adds the generic top-level domain (“gTLD”) “.com,” insignificant in a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), where the panel found that the elimination of spaces between the words of the 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). Thus, the Panel finds that Respondent’s <onceuponachildcollierville.com> domain name is confusingly similar to Complainant’s ONCE UPON A CHILD mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
In this case, Complainant’s arguments under Policy ¶ 4(a)(ii) pertain to the actions of a previous owner of the disputed domain name who attempted to sell the domain name to Complainant for an amount exceeding his out-of-pocket expenses. Although Complainant makes no arguments regarding the named Respondent in this case, the Complainant did submit evidence that the disputed domain name resolves to a list of hyperlinks, some of which directly compete with Complainant. The Panel finds that Respondent’s use of the domain name to feature competing and other hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <onceuponachildcollierville.com> domain name is used to list third-party hyperlinks, some of which compete with Complainant. Respondent no doubt collects click-through fees generated from the hyperlinks. This demonstrates that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found 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. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onceuponachildcollierville.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 29, 2013
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