School Specialty, Inc. v. West Coast School Specialties
Claim Number: FA1101001367598
Complainant is School Specialty, Inc. (“Complainant”), represented by Andrew C. Landsman of Godfrey & Kahn, S.C., Wisconsin, USA. Respondent is West Coast School Specialties (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wcschoolspecialties.com>, registered with In2net Network, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2011; the National Arbitration Forum received payment on January 14, 2011.
On January 20, 2011, In2net Network, Inc. confirmed by e-mail to the National Arbitration Forum that the <wcschoolspecialties.com> domain name is registered with In2net Network, Inc. and that Respondent is the current registrant of the name. In2net Network, Inc. has verified that Respondent is bound by the In2net Network, Inc. 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 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2011 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@wcschoolspecialties.com. Also on January 25, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 February 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <wcschoolspecialties.com> domain name is confusingly similar to Complainant’s SCHOOL SPECIALTY mark.
2. Respondent does not have any rights or legitimate interests in the <wcschoolspecialties.com> domain name.
3. Respondent registered and used the <wcschoolspecialties.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, School Specialty, Inc., offers mail order services in the field of school and office supplies, office and school furniture, and audio-visual equipment. Complainant uses the SCHOOL SPECIALTY mark in connection with these services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SCHOOL SPECIALTY mark (e.g., Reg. No. 2,086,842 issued August 12, 1997).
Respondent, West Coast School Specialties, registered the <wcschoolspecialties.com> domain name on July 19, 2008. The disputed domain name resolves to a website that provides information relating to Respondent’s business of selling, repairing, and installing cafeteria tables, benches, and marker boards in schools.
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."
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.”).
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.
Complainant asserts rights in the SCHOOL SPECIALTY mark through its registrations of the mark with the USPTO (e.g., Reg. No. 2,086,842 issued August 12, 1997). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the SCHOOL SPECIALTY mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant avers Respondent’s <wcschoolspecialties.com> domain name is confusingly similar to its SCHOOL SPECIALTY mark. Complainant argues that Respondent changes “specialty,” the second term in its mark, to “specialties” in the disputed domain name. In addition, Respondent omits the space between the terms in Complainant’s mark and adds the letters “wc” to its mark in the disputed domain name. Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds these alterations do not negate a finding of confusingly similar. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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). Therefore, the Panel concludes that Respondent’s <wcschoolspecialties.com> domain name is confusingly similar to Complainant’s SCHOOL SPECIALTY mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <wcschoolspecialties.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information lists “West Coast School Specialties” as the registrant of the <wcschoolspecialties.com> domain name. Additionally, screen shots of the website resolving from the disputed domain name show a business that sells, repairs, and installs cafeteria tables, benches, and marker boards in schools. These images show that Respondent offers its products and services under the name “West Coast School Specialties.” Based on the evidence in the record, the Panel finds that Respondent is a legitimate business that operates under the name “West Coast School Specialties.” The Panel also finds that “wc” is a likely abbreviation for the “West Coast” portion of Respondent’s name. Therefore, the Panel concludes that Respondent is commonly known by the <wcschoolspecialties.com> domain name pursuant to Policy ¶ 4(c)(ii). As a result, the Panel holds that Complainant has failed to establish that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Credit Union Buyers Ass’n v. Acuba Ltd., FA 164306 (Nat. Arb. Forum July 16, 2003) (finding that complainant’s allegations that “[n]o evidence indicates that Respondent has been known . . . by the Domain Name” did not acknowledge or address evidence that respondent was known by the disputed domain name, having registered <acuba.com> under the name Acuba Limited, and, therefore, were not a prima facie showing under Policy ¶ 4(a)(ii)); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name).
The Panel finds that Complainant failed to satisfy Policy ¶ 4(a)(ii).
Respondent uses the <wcschoolspecialties.com> domain name in connection with its business. Although this is a commercial use, the Panel finds that Complainant has failed to provide evidence sufficient to establish that Respondent registered the disputed domain with the intent to create confusion with Complainant’s SCHOOL SPECIALTY mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Therefore, the Panel finds that Respondent did not register or use the disputed domain name with the intent to disrupt or divert business from Complainant. Accordingly, the Panel holds that Complainant has failed to establish Respondent’s registration and use of the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also Accu-Find Internet Servs. v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant failed to satisfy Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wcschoolspecialties.com> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
Dated: March 1, 2011
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