Sterling Jewelers Inc. v. Jared Lundgren / We went to Jared
Claim Number: FA1412001596792
Complainant is Sterling Jewelers Inc. (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is Jared Lundgren / We went to Jared (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wewenttojared.com>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2014; the National Arbitration Forum received payment on December 23, 2014.
On December 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wewenttojared.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 20, 2015 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@wewenttojared.com. Also on December 30, 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.
Even though the Respondent was in default under the Rules, on January 22, 2015, one day after Respondent entered default, the Respondent filed a single Additional Submission in the form of an e-mail communication addressed to the Forum and cc-ed to Complainant which states as follows in its entirety:
I have $1000's of dollars in real estate signs, marketing material and Internet marketing with my web domain name. My name is Jared. I was born 3/21/1968. I sell real estate, this has absolutely nothing to do with jewelry. If they want to purchase the name from me for a reasonable price, I may be willing to sell. If not, I will have an attorney deal with this issue.
Sincerely,
Jared Lundgren
As this Response is neither timely nor in the appropriate form, this Panel deems this to be a non-responsive Response.
On January 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port 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
Complainant owns the HE WENT TO JARED mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,321,229, registered Apr. 16, 2013). Complainant uses HE WENT TO JARED on or in connection with retail jewelry stores. The mark HE WENT TO JARED or derivatives thereto have been registered in numerous countries around the world. Complainant alleges that the <wewenttojared.com> domain name is confusingly similar to the HE WENT TO JARED mark as the domain name replaces the “he” pronoun with “we,” a minor deviation considering the otherwise inclusion of the mark.
The Complainant further alleges that the Respondent has no right or legitimate interest in the domain name <wewenttojared.com> and has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
However, one day after being found in default, Respondent sent a mere email to the Forum quoted above. In this email, Respondent claims to have legitimate commercial interests in and to <wewenttojared.com>.
C. Additional Submissions
As Respondent’s response was not timely and not in compliance with Rule 7 of the Supplemental Rules, this Panel deems this Response to be non-responsive.
The Panel finds the domain name <wewenttojared.com> to be obviously confusingly similar if not nearly identical to Complainant’s registered trademark(s) HE WENT TO JARED. Further, the Respondent’s nonresponsive Response is not supported by any documents or substantiating evidence. As such, it is irrelevant at best. The Panel finds that the Respondent has no legitimate commercial interest in the domain name. As the trademark HE WENT TO JARED is well known, the Panel finds that Respondent’s use of the domain name <wewenttojared.com> acts to redirect purchasers away from the Complainant to the Respondent and, as such, has acted in bad faith.
In view of Respondent's failure to submit a timely and responsive 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.”).
The domain name <wewenttojared.com> is identical or confusingly similar to the Complainant’s trademark HE WENT TO JARED. The domain name replaces the “he” pronoun with “we,” a minor deviation considering the otherwise inclusion of the mark. The disputed domain name merely adds the generic top-level domain (“gTLD”) “.com,” to the registered trademark and omits the spacing from HE WENT TO JARED. The addition of a gTLD is irrelevant to the confusing similarity analysis. The omission of spacing is similarly inconsequential. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). A minor alteration, such as the substitution of a single letter from the mark, generally fails to distinguish the domain name from the otherwise incorporated mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark).
Accordingly, the Panel find that the <wewenttojared.com> domain name is confusingly similar to the HE WENT TO JARED mark under Policy ¶ 4(a)(i).
Although it is supported in the record that Respondent’s first name does appear to be “Jared,” as Respondent failed to respond in a timely fashion and incompliance with the Rules, there is no evidence to suggest that Respondent is commonly known as “wewenttojared.” Further, Respondent has no authorization to use the trademark at issue and there is no relationship between the Complainant and the Respondent. As there is no evidence to the contrary, the Panel determines that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Cricket Techs., L.L.C. v. Martin, FA 311353 (Nat. Arb. Forum Sept. 27, 2004) (“Although Respondent is listed as the Administrative contact in the WHOIS domain name registration information, nothing suggests that Respondent is commonly known by the <crickettechnologies.com> domain name pursuant to Policy ¶ 4(c)(ii).”).
Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent’s domain name resolves to Respondent’s real estate brokerage website. See Compl., at Attached Ex. C. The Panel finds that Respondent’s use of the <wewenttojared.com> domain name to redirect users to Respondent’s own real estate brokerage website amounts to neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use within the confines of Policy ¶ 4(c)(i) or (iii), respectively. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Further, Respondent’s non-responsive Response, if proven true and accurate, may establish that Respondent has a commercial interest in the domain name. Whether that is legitimate or not appears to be a question for a court of law to determine and beyond the scope of the UDRP. Respondent is highly recommended to consult an attorney as it threatens to do. If an attorney had been consulted prior to the registration, adoption and apparent use of <wewenttojared.com>, this entire dispute may have been avoided and Respondent would not have wasted its time and money. Respondent would have been encouraged to refrain from offering the domain name for sale as this may be used to further establish its bad faith in registering the domain name.
It is abundantly clear that Respondent is using the disputed domain name to attract Internet traffic to its own website and thereby generate business by reference to Complainant’s trademark. Respondent’s efforts to mislead and divert users to Respondents own website for commercial gain establish bad faith in violation of Policy ¶ 4(b)(iv). Evidence of bad faith under Policy ¶ 4(b)(iv) is adequately demonstrated where the respondent uses the confusingly similar domain name to promote its own website for commercial gain. To illustrate, the Panel in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), wrote, “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).”
The Panel finds that Respondent’s efforts in connection with the <wewenttojared.com> domain name to redirect users to Respondent’s own real estate brokerage website constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is ordered that the <wewenttojared.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: January 25, 2015
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