Target Brands, Inc. v. Phayze, Inc.
Claim
Number: FA0306000161564
Complainant is Target Brands, Inc., Minneapolis, MN,
(“Complainant”) represented by Eunice P.
de Carvalho, of Faegre & Benson LLP. Respondent is Phayze 1 Phayze 2 Phayze Inc., Paris, France (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <marshelfields.com> and <marshellfield.com>,
registered with Computer Services Langenbach Gmbh Dba Joker.Com.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 3, 2003; the Forum received a hard copy of the Complaint
on June 5, 2003.
On
June 5, 2003, Computer Services Langenbach Gmbh Dba Joker.Com confirmed by
e-mail to the Forum that the domain names <marshelfields.com> and <marshellfield.com>
are registered with Computer Services Langenbach Gmbh Dba Joker.Com and that
Respondent is the current registrant of the names. Computer Services Langenbach
Gmbh Dba Joker.Com has verified that Respondent is bound by the Computer
Services Langenbach Gmbh Dba Joker.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 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 30, 2003 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@marshelfields.com
and postmaster@marshellfield.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 9, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents submitted
and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <marshelfields.com>
and <marshellfield.com> domain names are confusingly similar to
Complainant’s MARSHALL FIELD’S mark.
2. Respondent does not have any rights or
legitimate interests in the <marshelfields.com> and <marshellfield.com>
domain names.
3. Respondent registered and used the <marshelfields.com>
and <marshellfield.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Target Brands, Inc., operates sixty-four
premier department stores in eight states under the MARSHALL FIELD’S mark. Complainant holds numerous registrations for
the MARSHALL FIELD’S mark including United States Patent and Trademark Office
Registration Nos. 1,273,988 and 1,273,987.
Both of the registrations for the MARSHALL FIELD’S mark were registered
on the Principal Register on April 10, 1984.
Complainant uses the MARSHALL FIELD’S mark in connection with retail
department store sales services.
Complainant also uses the MARSHALL FIELD’S mark in electronic commerce
on its informational and on-line shopping web site located at the <marshallfields.com>
domain name.
Respondent registered the
<marshelfields.com> and <marshellfield.com> domain
names on March 4, 2002. When an Internet user inputs the disputed
domain names, the user is transferred to a web site featuring pornographic
images at the <hanky-panky-college.com> domain name.
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.
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 has
established rights in the MARSHALL FIELD’S mark through continuous use in
commerce and registration of the mark with the United States Patent and Trademark Office. See The Men’s Wearhouse, Inc. v. Brian Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name
[<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law).
Respondent’s <marshelfields.com>
and <marshellfield.com> domain names are confusingly similar to
Complainant’s MARSHALL FIELD’S mark.
Respondent has merely misspelled the “MARSHALL” portion of the mark in
the <marshelfields.com> domain name. In addition to misspelling the MARSHALL mark in the <marshellfield.com>
domain name, Respondent has also omitted the letter “s.” Such differences are insufficient to create
domain names that are distinct from Complainant’s MARSHALL FIELD’S mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent did
not submit a response in this proceeding.
The Panel can accept all reasonable allegations and inferences submitted
by Complainant in the absence of a response.
Since Respondent failed to submit a response, it has not shown any
circumstances that could substantiate its rights or legitimate interests in the
<marshelfields.com> and <marshellfield.com> domain
names. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true).
No evidence has been presented to show that Respondent is commonly known
by either of the disputed domain names.
Both the fame of Complainant’s mark and the name given in the WHOIS
contact information for the <marshelfields.com>
and <marshellfield.com> domain names supports the
reasonable inference that Respondent is not commonly known as either of the
disputed domain names. The Panel
reasonably infers the Policy ¶ 4(c)(ii) does not apply to Respondent. Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding
sufficient proof that Respondent was not commonly known by a domain name
confusingly similar to Complainant’s VICTORIA’S SECRET mark because of
Complainant’s well-established use of the mark).
Respondent does
not have any rights or legitimate interests in the <marshelfields.com>
and <marshellfield.com> domain names. Respondent is using the disputed domain names to redirect
Internet users to a web site featuring
pornographic images located at the <hanky-panky-college.com> domain name. The Panel reasonably infers that Respondent
is financially benefitting by taking advantage of Complainant’s famous mark to
redirect unsuspecting Internet users to the pornographic web site. In addition, Respondent is tarnishing
Complainant’s MARSHALL FIELD’S mark by subjecting unknowing Internet users to
sexually explicit images. Thus, the
Panel finds that Respondent’s use of the disputed domain names does not
establish rights or legitimate interests in the domain name under Policy ¶¶
4(c)(i) and (iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11,
2000) (finding that it is not a bona fide offering of goods or services to use
a domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material where such use is
calculated to mislead consumers and to tarnish Complainant’s mark); see also
Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent
had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where Respondent linked
these domain names to its pornographic website).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respodent is
using the <marshelfields.com> and <marshellfield.com>
domain names to redirect Internet users to a pornographic web site
associated with the <hanky-panky-college.com> domain name. Respondent’s redirection to this
pornographic web site itself constitutes bad faith. Wells Fargo & Co. v. Party Night Inc. and Peter Carrington,
FA 144647 (Nat. Arb. Forum March 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); see also Six Continents Hotels, Inc. v. Seweryn
Nowak, D2003-0022 (WIPO March 4, 2003) (stating that “whatever the
motivation of Respondent, the diversion of the domain name to a pornographic
site is itself certainly consistent with the finding that the Domain Name was
registered and is being used in bad faith”).
Respondent registered and is using the <marshelfields.com> and <marshellfield.com>
domain names in bad faith under Policy ¶ 4(b)(iv). Respondent is creating a likelihood of confusion as to the source
of sponsorship when it uses misspellings of Complainant’s well-known MARSHALL
FIELD’S mark to redirect unsuspecting Internet users to the <hanky-panky-college.com> domain name
which hosts a pornographic web site. Based on the material displayed on the
pornographic web site, the Panel reasonably infers that Respondent is
commercially benefitting from its use of the disputed domain names. Thus, the Panel finds that Respondent’s use
of complainant’s well-known mark is evidence of bad faith registration and use.
See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that the association of a confusingly similar domain name with a
pornographic website can constitute bad faith); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of bad faith registration and
use).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <marshelfields.com> and <marshellfield.com>
domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: July 23, 2003
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