National Arbitration Forum

 

DECISION

 

eLuxury.com Inc. v. ITWEB Domain Protection

Claim Number: FA0805001195132

 

PARTIES

Complainant is eLuxury.com, Inc. (“Complainant”), represented by Jiyun Cameron Lee, of Folger Levin & Kahn LLP, California, USA.  Respondent is ITWEB Domain Protection (“Respondent”), represented by James D. Hornbuckle, of Dixon Law Corporation, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <eluxurytrade.com> and <eluxurysupplier.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

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.

 

Debrett Gordon Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 27, 2008.

 

On May 28, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <eluxurytrade.com> and <eluxurysupplier.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that the 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-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 25, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@eluxurytrade.com and postmaster@eluxurysupplier.com by e-mail.

 

On June 25, 2008, the National Arbitration Forum granted Respondent’s June 25, 2008 request for an Extension of Time to Respond to Complaint, thereby setting a deadline of July 15, 2008 by which Respondent could file a Response to the Complaint.

 

A timely Response was received and determined to be complete on July 15, 2008.

 

On July 21, 2008, Complainant made an Additional Submission in a timely manner pursuant to the National Arbitration Forum’s Supplemental Rule 7.

 

On July 25, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant asserts trademark rights and alleges that the disputed domain names are confusingly similar to its trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. 

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

 

Respondent states that a “person or entity other than Respondent is the owner of the domain name <eluxurytrade.com> and we understand that the owner of <eluxurytrade.com> has been in contact with counsel for Complainant.  Therefore, this response only responds to the allegations in the Complaint that pertain to Respondent’s domain name <eluxurysupplier.com>.”

 

Respondent broadly denies all three of Complainant’s allegations with respect to <eluxurysupplier.com>.  As foreshadowed, no submissions are made in relation to <eluxurytrade.com>.

 

C. Additional Submissions

 

Complainant made additional submissions which are considered to the extent necessary in the Discussion which follows.

 

FINDINGS

 

So far as is necessary to reach its decision, the Panel finds:

 

Complainant has an online business in the marketing and sale of luxury and fashion items such as handbags, jewelry, shoes, cosmetics, fragrances and designer clothing.  It does not sell its own brand items but the goods of makers such as Dior, Louis Vuitton, Marc Jacobs, Tod’s and Juicy Couture.

 

Complainant’s online business was launched in June 2000 at <eluxury.com> and has been prominently advertised since then using the trademark ELUXURY.

 

Complainant is the owner of relevant US Federal trademark registrations for ELUXURY in both plain and stylized forms.

 

There is no evidence to impeach the validity of those registrations.

 

Respondent registered the domain name <eluxurytrade.com>  on March 20, 2007 and <eluxurysupplier.com> on July 11, 2007.

 

Both domain names remained in the name of Respondent at the time of filing of the Complaint.

 

The domain names resolve to websites which offer copies of famous brand luxury items of the same kind offered by Complainant at its website.

 

Respondent has no license or permission to use Complainant’s trademark in any fashion.

 

Pre-Complaint correspondence failed to resolve the dispute.

 

DISCUSSION

 

Preliminary Procedural Issue

 

Respondent attempts to disown the disputed domain name, <eluxurytrade.com>.  There is no evidence of either the sale or transfer of that domain name away from Respondent, either at the time of the Complaint or now. 

 

The Policy is a contract between a registrar and the registrant.  It requires mandatory submission by the registrant to an administrative proceeding in the event that a complaint is filed.  Administrative proceedings are regulated by the Policy, but also by ICANN’s Rules and by any Supplemental Rules of the provider administering the proceedings.

 

The ICANN Rules define a “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.”  The National Arbitration Forum’s Supplemental Rule 1(d) defines “The Holder of a Domain Name Registration” to mean “the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with the Forum.”

 

At the time of filing of the Complaint and, still now, Respondent is the entity listed in the WHOIS information as the owner of both the disputed domain names.

 

Accordingly, the Complaint has been correctly brought against Respondent in relation to both disputed domain names and the effect of this decision will be against both domain names.

 

Primary Issue

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

 

The Panel has in the following analysis considered the operation of the Policy in regard to both disputed domain names, notwithstanding that the Response made no submissions in connection with <eluxurytrade.com>. 

 

Identical and/or Confusingly Similar

 

As a threshold matter, Complainant must have rights in a trademark.  Complainant is the proprietor of United States Trademark Registration No. 2,518,286 issued December 11, 2001 for the word mark, ELUXURY.  Accordingly, Complainant has established its rights.[1]

 

Complainant argues that since Respondent’s <eluxurytrade.com> and <eluxurysupplier.com> domain names include Complainant’s entire trade mark, merely adding the generic terms “trade” and “supplier,” together with the non-distinctive gTLD “.com,” the domain names are confusingly similar to its trademark.

 

Previous decisions under the Policy have found that these additions do not distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i).  The gTLD, “.com,” can be ignored for the purpose of comparison of the disputed domain name with the trademark.[2]  The question is whether “eluxury” is confusingly similar to “eluxurytrade” and “eluxurysupplier.”  Additionally, prior decisions under the Policy have found confusing similarity where a domain name has combined a generic term with the complainant’s trademark.[3]

 

Respondent’s arguments that Complainant has not shown actual confusion and that the parties’ respective website content differs in some ways are irrelevant to the question of confusing similarity under Policy ¶ 4(a)(i).

 

The Panel finds the domain names confusingly similar to a trademark in which Complainant has rights.  Accordingly, Complainant has established the first element under the Policy.

 

Rights or Legitimate Interests

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii) and so the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name.[4]

 

Policy ¶ 4(c) states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):

 

(i)   before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent does not qualify under either Policy ¶ 4(c)(ii) or (iii).    

 

In relation to Policy ¶ 4(c)(i), Complainant argues that Respondent’s actions are not bona fide since the goods it is offering for sale from its website are patently counterfeit goods.  Policy ¶ 4(c)(i) requires that the offering be bona fide, not that the goods offered be bona fide.  The Policy is not concerned with the battle against counterfeit goods, but with abusive domain name registration.  The bona fides is only relevant to the legitimacy of Respondent’s claim to the domain name.  Nevertheless, where Respondent’s offering fails to be bona fide is found in the use of Complainant’s trademark to attract customers to its website, irrespective of the authenticity of the goods there offered.[5]

 

Respondent has no demonstrable rights or legitimate interests in the disputed domain name and so Complainant has established the second limb of the Policy.

 

Registration and Use in Bad Faith

 

Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration or use of a domain name in bad faith and so the Panel considers it logical to first compare them to the facts of the case.  They are:

 

(i)   circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out‑of‑pocket costs directly related to the domain name; or

 

(ii)  you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or

 

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

 

What is noteworthy about Policy ¶ 4(b) is that all four bad faith examples there described are cases of both registration and use in bad faith.

 

Complainant submits that Respondent’s actions fall under Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant alleges that Respondent is using the domain names to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark.  The evidence before the Panel supports that claim.  The Panel has already found a likelihood of confusion between the domain names and Complainant’s trademark.  Moreover, Respondent’s websites exist for a commercial purpose.  The Panel finds bad faith under Policy ¶ 4(b)(iv).[6]

 

Complainant argues that Respondent’s use of the disputed domain names to sell counterfeit versions of the products that it sells has disrupted its business and so Respondent’s actions also fall under Policy ¶ 4(b)(iii).  The Panel notes that there need not be evidence of that claim, provided that it is more likely than not that use of the disputed domain names will have that consequence.  The Panel finds that to be the case and so additionally finds bad faith under Policy ¶ 4(b)(iii).

 

Complainant has satisfied the third and final aspect of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <eluxurytrade.com> and <eluxurysupplier.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist
Dated: August 7, 2008.