national arbitration forum

 

DECISION

 

1STDIBS.COM, INC. v. Pham Dinh Nhut

Claim Number: FA1308001514077

 

PARTIES

Complainant is 1STDIBS.COM, INC. (“Complainant”), New York, USA.  Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <istdibs.com>, registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2013; the National Arbitration Forum received payment on August 20, 2013. The Complaint was submitted in both Vietnamese and English.

 

On August 12, 2013, APRIL SEA INFORMATION TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <istdibs.com> domain name is registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name.  APRIL SEA INFORMATION TECHNOLOGY CORPORATION has verified that Respondent is bound by the APRIL SEA INFORMATION TECHNOLOGY CORPORATION 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 23, 2013, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of September 12, 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@istdibs.com.  Also on August 23, 2013, the Vietnamese language 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 September 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Language of the Proceedings

The Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Policy ¶ 4(a)(i)

a.    Complainant owns and operates the website <1stdibs.com>, which grants customers instant access to luxury goods by bringing together more than 1,700 international dealers of antiques, vintage furniture and design, fine art, estate jewelry, vintage couture and fine homes.

b.    Complainant registered the <1stdibs.com> domain name in 1998, and the domain now attracts over 132,000 unique visitors monthly.

c.    Complainant is the owner of numerous trademark registrations in the United States, Europe, and Canada for the 1STDIBS mark. See, e.g., United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,593,643 filed February 1, 2007, registered March 24, 2009); see also Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 7,576,721 filed February 2, 2009, registered December 23, 2009); see also Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA774150 filed February 5, 2009, registered August 10, 2010).

d.    Complainant has made significant investments over the years to advertise, promote, and protect Complainant’s mark through various forms of media including the Internet.

e.    Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the 1STDIBS mark in a number of different classes, namely online retail store services featuring jewelry, and fashion, namely, bags, clothes, shoes, belts and accessories.

f.      Respondent’s <istdibs.com> domain name is confusingly similar to Complainant’s 1STDIBS mark.

2.    Policy ¶ 4(a)(ii)

a.    Respondent has not been commonly known by the <istdibs.com> domain name.

                                                  i.    Respondent is not sponsored by or affiliated with Complainant in any way.

                                                 ii.    Complainant has not given Respondent permission to use Complainant’s mark in a domain name.

b.    Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii).

                                                  i.    Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites.

3.    Policy ¶ 4(a)(iii)

a.    Respondent is a serial cybersquatter. See Thrivent Financial for Lutherans v. Pham Dinh Nhut, FA1460791 (Nat. Arb. Forum Oct. 10, 2012); see also The Charlotte-Mecklenburg Hospital Authority d/b/a Carolinas HealthCare System v. Pham Dinh Nhut, FA1434556 (Nat. Arb. Forum May 28, 2012); see also TaxHawk, Inc. v. Pham Dinh Nhut, FA1431444 (Nat. Arb. Forum May 28, 2012).

b.    Respondent is using the fame of Complainant’s mark to improperly increase traffic to the website at the <istdibs.com> domain name, for commercial gain, by redirecting unsuspecting Internet users to a website featuring advertising links to third-party websites and presumably receiving pay-per-click fees in the process.

c.    Respondent must have been aware of Complainant and its rights in the 1STDIBS mark prior to Respondent’s registration of the <istdibs.com> domain name.

                                                  i.    By registration of a domain name composed of Complainant’s mark “1STDIBS” and posting a website with links to “Chinese furniture,” “French Antique Reproduction Furniture,” and “Antique Furniture,” the Respondent has demonstrated a thorough knowledge of the 1STDIBS brand and business.

                                                 ii.    The <istdibs.com> domain name can only refer to Complainant. The terms “IST” and “DIBS” have no natural meaning on their own and when placed together create a virtual visual match to Complainants mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, 1STDIBS.COM, INC., owns and operates the website <1stdibs.com>, which grants customers instant access to luxury goods by bringing together more than 1,700 international dealers of antiques, vintage furniture and design, fine art, estate jewelry, vintage couture and fine homes. Complainant registered the <1stdibs.com> domain name in 1998, and the domain now attracts over 132,000 unique visitors monthly. Complainant is the owner of numerous trademark registrations in the United States, Europe, and Canada for the 1STDIBS mark. See, e.g., United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,593,643 filed February 1, 2007, registered March 24, 2009); see also Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 7,576,721 filed February 2, 2009, registered December 23, 2009); see also Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA774150 filed February 5, 2009, registered August 10, 2010). Complainant has made significant investments over the years to advertise, promote, and protect Complainant’s mark through various forms of media including the Internet.

 

Respondent, Pham Dinh Nhut, is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites.

 

While Complainant claims that Respondent acquired the <istdibs.com> domain name on October 28, 2011, the WHOIS information provided by Complainant e that the domain was registered on September 7, 2004. 

 

 

DISCUSSION

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.”).

 

 

Identical and/or Confusingly Similar

 

Complainant has rights in the 1STDIBS mark through its registration of the mark with the USPTO (Reg. No. 3,593,643 filed February 1, 2007, registered March 24, 2009), the European Union’s OHIM (Reg. No. 7,576,721 filed February 2, 2009, registered December 23, 2009), and the CIPO (Reg. No. TMA774150 filed February 5, 2009, registered August 10, 2010). Complainant’s trademark registrations in the United States, Canada, and Europe establish Complainant’s rights in the 1STDIBS mark under Policy ¶ 4(a)(i) dating back to the date of filing, regardless of the fact that Respondent lives in Vietnam. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the USPTO”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The WHOIS information indicates that the <istdibs.com> domain name was registered on September 7, 2004. Although the disputed domain name’s September 7, 2004 registration predates the rights conferred by Complainant’s trademark registrations, Complainant can establish prior rights in the 1STDIBS mark for the purposes of Policy ¶ 4(a)(i) even in the absence of a registered trademark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Accordingly, Complainant has rights in the 1STDIBS mark based on its extensive use of the mark in a number of different classes, namely online retail store services featuring jewelry, and fashion, namely, bags, clothes, shoes, belts and accessories. Complainant made significant investments over the years to advertise, promote, and protect Complainant’s mark through various forms of media, including the Internet. The Panel finds that the 1STDIBS mark has achieved secondary meaning associating the mark with Complainant. Therefore, Complainant has protectable common law rights in the 1STDIBS mark under Policy ¶ 4(a)(i). See Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”); see also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).

 

Complainant contends that Respondent’s <istdibs.com> domain name is confusingly similar to Complainant’s 1STDIBS mark. Complainant contends that that the disputed domain name is a purposeful misspelling of Complainant’s 1STDIBS mark, replacing the number “1” in Complainant’s mark with the Roman numeral “i.” Complainant also argues that Respondent’s affixation of the generic top-level domain “.com” in forming the disputed domain name does nothing to distinguish the disputed domain name from Complainant’s mark. The Panel finds that Respondent’s <istdibs.com> domain name is confusingly similar to Complainant’s 1STDIBS mark pursuant to Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

Rights or Legitimate Interests

 

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).

 

Complainant contends that Respondent has not been commonly known by the <istdibs.com> domain name under Policy ¶ 4(c)(ii). Complainant asserts that it has not given Respondent permission to use the 1STDIBS mark in a domain name. Complainant says that Respondent is not sponsored by or affiliated with Complainant. The Panel finds that Respondent is not commonly known by the <istdibs.com> domain name for the purposes of Policy ¶ 4(c)(ii). 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).

 

Complainant next contends that Respondent is not using the <istdibs.com> domain name to provide 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). Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business, and from which Respondent presumably receives pay-per-click fees. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008)(a respondent’s use of disputed domain names to resolve to websites featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered under the complainant’s mark, did not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Respondent’s use of the <istdibs.com> domain name for a similar purpose constitutes 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).

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent is a serial cybersquatter, citing three previous UDRP decisions in which Respondent was found to have registered domain names in bad faith. In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel construed the respondent’s past involvement in numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants as evidence that respondent registered and used the domain name presently in dispute in bad faith pursuant to Policy ¶ 4(b)(ii). Accordingly, the Panel finds that Respondent’s history of registering domain names that would later be transferred through UDRP proceedings establishes a pattern of bad faith registration and use, thereby showing bad faith registration and use of the <istdibs.com> domain name.

 

Complainant alleges that Respondent is using the fame of Complainant’s 1STDIBS mark to improperly increase traffic to the website at the <istdibs.com> domain name by redirecting unsuspecting Internet users to a website featuring advertising links to third-party websites. Complainant contends that Respondent has done so for commercial gain by presumably receiving pay-per-click fees in the process. Respondent’s use of <istdibs.com> domain name to divert Internet users searching for Complainant to Respondent’s own website, where Respondent was likely profiting, evidences bad faith registration and use under Policy ¶ 4(b)(iv). See, e.g., DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

Finally, Complainant contends that Respondent must have been aware of Complainant and its rights in the 1STDIBS mark prior to Respondent’s registration of the <istdibs.com> domain name. Complainant argues that by registering a domain name composed of Complainant’s 1STDIBS mark and by posting a website with links to “Chinese furniture,” “French Antique Reproduction Furniture,” and “Antique Furniture,” the Respondent has demonstrated a thorough knowledge of the 1STDIBS brand and business. Complainant further argues that the <istdibs.com> domain name can only refer to Complainant, as the terms “IST” and “DIBS” have no natural meaning on their own, and when placed together the terms create a virtual visual match to Complainant’s mark. The Panel finds that the circumstances surrounding Respondent’s registration and use of the disputed domain name show that Respondent had actual knowledge of Complainant and its rights in the 1STDIBS mark. Therefore, Respondent registered the <istdibs.com> domain name in bad faith under Policy ¶ 4(a)(iii) on this ground. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

DECISION

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 <istdibs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 3, 2013

 

 

 

 

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