Sterling Jewelers Inc v. Domain Manager / samirnet -domain names for sale
Claim Number: FA1402001542613
Complainant is Sterling Jewelers Inc (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is Domain Manager / samirnet -domain names for sale (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jaredjewelry.org>, registered with Gal Communication (CommuniGal) Ltd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2014; the National Arbitration Forum received payment on February 7, 2014.
On February 17, 2014, Gal Communication (CommuniGal) Ltd. confirmed by e-mail to the National Arbitration Forum that the <jaredjewelry.org> domain name is registered with Gal Communication (CommuniGal) Ltd. and that Respondent is the current registrant of the name. Gal Communication (CommuniGal) Ltd. has verified that Respondent is bound by the Gal Communication (CommuniGal) Ltd. 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 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2014 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@jaredjewelry.org. Also on February 17, 2014, 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 14, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant is in the business of providing jewelry and jewelry store services, operating over 1,300 jewelry stores throughout the United States.
b. Complainant has used the JARED and JARED THE GALLERIA OF JEWELRY marks since 1993.
c. Complainant owns rights in the JARED and JARED THE GALLERIA OF JEWELRY marks through its trademark registrations around the world, including registrations with the United States Patent and Trademark Office (“USPTO”).
i. JARED mark: See, e.g., Reg. No. 3,052,726 registered Jan. 31, 2006.
ii. JARED THE GALLERIA OF JEWELRY mark: See Reg. No. 1,872,975 registered Jan. 10, 1995.
d. Respondent’s <jaredjewelry.org> domain name is confusingly similar to Complainant’s marks.
2. Policy ¶ 4(a)(ii)
a. Respondent has not been commonly known by the <jaredjewelry.org> domain name.
i. Respondent is neither licensed nor authorized by Complainant to use the marks JARED or JARED THE GALLERIA OF JEWELRY in connection with jewelry or jewelry store services.
b. Respondent does not provide any bona fide offering of goods or services on the website associated with <jaredjewelry.org>.
i. The domain resolves to a pay-per-click link farm parking page.
3. Policy ¶ 4(a)(iii)
a. Respondent’s website features a banner stating that the corresponding domain is for sale.
b. Respondent's initial use in connection with a pay-per-click link farm parking page sought to take advantage of Complainant's well-known mark by creating Internet user confusion as to Complainant's sponsorship or association with the parking page. Respondent is using Complainant's marks in order to attract internet traffic to its website and thereby generate revenue.
c. Respondent registered <jaredjewelry.org> on October 25, 2013, with at least constructive knowledge of Complainant and its marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Sterling Jewelers Inc, is in the business of providing jewelry and jewelry store services, operating over 1,300 jewelry stores throughout the United States. Complainant has used the JARED and JARED THE GALLERIA OF JEWELRY marks since 1993. Complainant owns rights in the JARED and JARED THE GALLERIA OF JEWELRY marks through its trademark registrations around the world, including registrations with the United States Patent and Trademark Office (“USPTO”)(JARED mark: See, e.g., Reg. No. 3,052,726 registered Jan. 31, 2006); (JARED THE GALLERIA OF JEWELRY mark: See Reg. No. 1,872,975 registered Jan. 10, 1995).
Respondent, Domain Manager / samirnet -domain names for sale, registered <jaredjewelry.org> on October 25, 2013. The domain resolves to a pay-per-click link parking page. Respondent’s website features a banner stating that the corresponding domain is for sale.
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’s trademark registrations for the JARED and JARED THE GALLERIA OF JEWELRY marks establishes rights in the marks under Policy ¶ 4(a)(i), regardless of the fact that Respondent appears to reside in India. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <jaredjewelry.org> domain name is confusingly similar to Complainant’s JARED mark under Policy ¶ 4(a)(i). Respondent’s domain is comprised of Complainant’s JARED mark in its entirety, the descriptive term “jewelry,” and the generic top-level domain (“gTLD”) “.org.” The term “jewelry” in the disputed domain name is meant as a reference to Complainant’s principal line of business, and as such does not distinguish the domain from Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Also, gTLDs are irrelevant to an analysis of confusing similarity. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
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).
Respondent is neither licensed nor authorized by Complainant to use the marks JARED or JARED THE GALLERIA OF JEWELRY in connection with jewelry or jewelry store services. Respondent is not commonly known by the <jaredjewelry.org> domain name under 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).
Respondent does not provide any bona fide offering of goods or services on the website associated with <jaredjewelry.org>. The domain resolves to a pay-per-click link parking page. Complainant’s Annex C shows the disputed domain name resolving to website that features links titled “Designers Jewelry,” “Jewelry and Rings,” and “Stores That Buy Jewelry,” among others. The panel in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) explained that a respondent is not using a disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use where the respondent’s domain name resolves 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 by the complainant under its mark. Respondent is using the <jaredjewelry.org> domain name to advertise links to third-party competitors of Complainant in the jewelry business. Therefore, Respondent use of the domain constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent registered and uses the disputed domain name in bad faith by featuring a banner on the corresponding website stating that the domain is for sale. See Complainant’s Annex C, which purports to show a screenshot of Respondent’s website with a linked banner titled “Buy this domain.” Complainant claims that clicking on the “for sale” link leads the user to a <sedo.com> auction site, where <jaredjewelry.org> is offered for 399 USD. See id. Respondent’s general offer to sell the <jaredjewelry.org> domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent’s use of the disputed domain name in connection with a pay-per-click link parking page takes advantage of Complainant's well-known mark by creating Internet user confusion as to Complainant's sponsorship or association with the parking page. The Panel infers that Respondent is using Complainant's marks in order to attract Internet traffic to its website for commercial gain. Respondent registered and uses <jaredjewelry.org> in bad faith according to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Respondent had actual knowledge of the mark and Complainant's rights upon registration. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <jaredjewelry.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 28, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page