Red Carter, LLC v. Charles Carter / POST RESTANTE
Claim Number: FA1403001550489
Complainant is Red Carter, LLC (“Complainant”), represented by Julia K. Sutherland of Seyfarth Shaw LLP, Illinois, USA. Respondent is Charles Carter / POST RESTANTE (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redcarter.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2014; the National Arbitration Forum received payment on March 24, 2014.
On March 28, 2014, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <redcarter.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 April 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@redcarter.com. Also on April 9, 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 April 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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. Complainant has rights in the RED CARTER mark under Policy ¶ 4(a)(i).
a. Complainant is the manufacturer, seller, and owner of the well-known RED CARTER SOUTH BEACH brand for swimwear, beachwear and cover-ups. Complainant’s products are available at leading retailers in the United States as well as Complainant’s website <redcartercollections.com>.
b. Complainant provides evidence of its registration with the United States Patent and Trademark Office (“USPTO”) for the RED CARTER SOUTH BEACH mark (Reg. No. 2,922,742 registered February 1, 2005) and (Reg. No. 2,922,742 registered February 1, 2005).
c. Respondent’s <redcarter.com> domain name is confusingly similar to Complainant’s RED CARTER SOUTH BEACH mark. Respondent displays the “RED CARTER” portion of Complainant’s mark with the addition of the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <redcarter.com> domain name.
a. Respondent is not a licensee of Complainant and has no relationship or association with Complainant and is not authorized to use Complainant’s mark in any way.
b. Respondent uses the disputed domain name in connection with a pay-per-click site that generates revenue based on users clicking on links to access sites that sell Complainant’s products and products of competitors.
c. Complainant owned the <redcarter.com> domain name from at least October 2003 to October 2012, and used it to view the RED CARTER SOUTH BEACH swimsuit collections. See Complainant’s Exhibit 7. Due to a mere oversight, complainant failed to renew the disputed domain name and the domain name was released to the public.
3. On February 12, 2013 Respondent registered the <redcarter.com> domain name.
4. Respondent registered and is using the <redcarter.com> domain name in bad faith.
a. Complainant uses the disputed domain name to divert Internet users to its website for commercial gain.
b. Based on Complainant’s extensive publicity associated with the RED CARTER SOUTH BEACH marks and complainant’s success in sales, including sales in association with its website, Complainant claims that it is obvious that Respondent had actual knowledge of complainant’s mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Red Carter, LLC, USA, who claims common law and USA federal registration rights in the mark RED CARTER and related marks. Complainant has used the RED CARTER SOUTH BEACH mark since at least as early as 2005 in connection with its business of manufacturing and selling sophisticated swimwear and other women’s apparel.
Respondent is Charles Carter / POST RESTANTE of Woodgreen, London, United Kingdom. Respondent’s registrar’s address is listed as Shanghai, China. Respondent registered the disputed domain name on or about February 12, 2013.
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 contends that it is the manufacturer, seller, and owner of the well-known RED CARTER SOUTH BEACH brand for swimwear, beachwear and cover-ups. Complainant explains that its products are available at leading retailers in the United States as well as Complainant’s website <redcartercollections.com>. Complainant asserts that it has rights in the RED CARTER SOUTH BEACH mark under Policy ¶ 4(a)(i). Complainant provides evidence of its registrations for the RED CARTER SOUTH BEACH mark (Reg. No. 2,922,742 registered February 1, 2005) and (Reg. No. 2,922,742 registered February 1, 2005). Panels have previously concluded that providing evidence of a registration for a mark is sufficient to establish rights in that mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel notes that it is irrelevant whether Compliant registered the mark in the location of Respondent. See 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). The Panel here finds that Complainant has rights in the RED CARTER SOUTH BEACH mark.
Complainant asserts that Respondent’s <redcarter.com> domain name is confusingly similar to Complainant’s RED CARTER SOUTH BEACH mark. Complainant explains that Respondent displays a portion of Complainant’s mark with the addition of the gTLD “.com.” Prior panels have found that adding a gTLD has no effect on the confusing similarity between a registered mark and a disputed domain name. See 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). Additionally, the Panel notes that Respondent removes the words “South” and “Beach” from Complainant’s mark as well as the spaces in-between the words. Past panels have noted that these variations are insufficient to differentiate a disputed domain name from a given mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s <redcarter.com> domain name is confusingly similar to Complainant’s RED CARTER SOUTH BEACH mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims that Respondent has no rights or legitimate interests in the <redcarter.com> domain name. Complainant asserts that Respondent is not a licensee of Complainant and has no relationship or association with Complainant and is not authorized to use Complainant’s mark in any way. The Panel notes “Charles Carter / POST RESTANTE” is the listed registrant of this domain name. Panels have found that a respondent has no rights or legitimate interests in a domain name if it is not commonly known by it under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel here finds that Respondent has no rights or legitimate interests in the <redcarter.com> domain name under Policy ¶ 4(c)(ii).
Complainant next asserts that Respondent uses the disputed domain name in connection with a pay-per-click site that generates revenue based on users clicking on links to access sites that sell Complainant’s products and products of competitors. The Panel notes that screenshots of Respondent’s website display links such as “Red Carter Swimwear,” “Underwired Swimsuits,” “Strapless Swimsuits,” “Thong Swimsuits,” “Plus Size Swimwear,” “Maternity Swimwear,” and “Padded Bikinis.” The Panel further notes that Respondent displays links to third-party businesses that compete with Complainant, “Swimwear at Macy’s,” “Shop Miraclesuit Swimwear,” “Nautica Swimwear,” and “Venus Buy more Save More.” Previous panels have concluded that using a domain name to resolve to a website displaying competing pay-per-click links does not indicate that a respondent has rights or legitimate interests in a domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel here finds that Respondent has no rights or legitimate interests in the <redcarter.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Next, Complainant asserts that it owned the <redcarter.com> domain name from at least October 2003 to October 2012, and used it to view the RED CARTER SOUTH BEACH swimsuit collections. Due to a mere oversight, complainant failed to renew the disputed domain name and the domain name was released to the public. Additionally, Complainant points out that on February 12, 2013 Respondent registered the <redcarter.com> domain name. Panels have previously found that a respondent has no rights or legitimate interests in a disputed domain name where it seems the respondent took advantage of a complainant’s mistaken failure to reregister a domain name previously held by that respondent. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”). The Panel here finds that Respondent has no rights or legitimate interests in the <redcarter.com> domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent’s disputed domain name resolves to a website displaying links that compete with Complainant. Panels have previously found that using a disputed domain name to resolve to a website displaying links that compete with a complainant, disrupts a complainant’s business by diverting Internet users away from complainant’s legitimate business. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel here finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further contends that Respondent registered and is using the <redcarter.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent uses the disputed domain name to divert Internet users to its website for commercial gain through pay-per-click links. Previous panels have found bad faith use and registration when a respondent uses a confusingly similar domain name to attract Internet users to its website and confuse them as to complainant’s association with the resolving website, resulting in the collection of revenue. 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). The Panel here finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
As previously discussed Complainant asserts that it owned the <redcarter.com> domain name from at least October 2003 to October 2012, and used it to view the RED CARTER SOUTH BEACH swimsuit collections. Panels have found bad faith use and registration when a respondent had knowledge that a domain name was previously registered and took advantage of a complainant’s failure to renew it. See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name). The Panel here finds that Respondent’s behavior indicates bad faith use and registration under Policy 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <redcarter.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 14, 2014
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