DECISION

 

The Pros Closet, Inc. v. Above.com Domain Privacy

Claim Number: FA1504001616518

PARTIES

Complainant is The Pros Closet, Inc. (“Complainant”), represented by Rachel A. Rice of Modus Law, Ltd., Colorado, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <proscloset.com>, registered with ABOVE.COM PTY LTD..

 

PANEL

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 Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 27, 2015; the Forum received payment on April 27, 2015.

 

On April 28, 2015, ABOVE.COM PTY LTD. confirmed by e-mail to the Forum that the <proscloset.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name.  ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY 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 May 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@proscloset.com.  Also on May 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.

 

On June 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant

Complainant made the following contentions.

    1. Policy ¶ 4(a)(i)

                                        a.    Complainant has common law rights in the THE PROS CLOSET mark through significant media recognition, sales, and advertising using the mark.

                                        b.    Respondent’s disputed <proscloset.com> domain name is confusingly similar to Complainant’s THE PROS CLOSET mark.  The disputed domain name resembles Complainant’s mark except for lacking the word “the,” the removal of spaces between the words of the mark and the inclusion of the generic top-level domain (“gTLD”) “.com.” 

    1. Policy ¶ 4(a)(ii)

                                        a.    Based on WHOIS information and other available evidence Respondent is not commonly known by the <proscloset.com> domain name. 

                                        b.    Respondent’s use of the <proscloset.com> domain name to host advertisements for products and services that compete with Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

    1. Policy ¶ 4(a)(iii)

                                        a.    Respondent uses the confusing similarity between <proscloset.com> and Complainant’s THE PROS CLOSET mark for commercial gain through advertising products and services of Complainant’s competitors.

B. Respondent

    Respondent failed to submit a Response in this proceeding.

FINDINGS

 

    1. Complainant is a United States company engaged in reselling new and used cycling gear and related products.
    2. Complainant has common law trademark rights in the THE PROS CLOSET mark through significant media recognition, sales, and advertising using the mark.
    3. The disputed domain name was registered on February 27, 2010. It is used by Respondent to host advertisements for products and services that compete with Complainant, including bicycles and bicycle gear.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. The Panel notes that Complainant has registered the THE PROS CLOSET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,890,273, registered December 14, 2010).  See Compl. Ex. G.  The Panel further notes that Complainant filed to register the mark on May 11, 2010.  See Id.  Both the USPTO registration date and the filing date of the THE PROS CLOSET mark were after Respondent’s registration of the disputed <proscloset.com> domain name on February 27, 2010.  Previous panels have held that registration of a mark with the USPTO is sufficient to demonstrate a complainant’s rights in a mark.  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).    The Panel finds that Complainant has established rights in the THE PROS CLOSET mark based on USPTO registration pursuant to Policy ¶ 4(a)(i).

 

Complainant also argues that it has rights in the THE PROS CLOSET mark, due to common law rights.  The Panel notes that a complainant may establish common law rights in a mark without any type of trademark registration.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant asserts its common law rights in the THE PROS CLOSET mark dating back to the first use of the mark in commerce on July 2005. See Compl., at attached Ex. B.  Complainant claims that it has completed over 657,000 transactions through their eBay store.  See Compl. Ex. B.  Complainant has also received publicity related to the THE PROS CLOSET mark in the form of media coverage from multiple sources serving the Colorado area.  See Compl. Ex. B.; Compl. Ex. F. Panels have found secondary meaning sufficient to establish common law rights in a mark can be shown through sales, advertisements, and media recognition.  See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). As the Panel finds Complainant’s evidence to be sufficient, the Panel finds that Complainant has adequately established common law trademarks rights in the THE PROS CLOSET mark pursuant to Policy ¶ 4(a)(i) and dating back to July 2005.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s THE PROS CLOSET mark. Complainant argues that Respondent’s disputed <proscloset.com> domain name is confusingly similar to Complainant’s THE PROS CLOSET mark.  The Panel notes that Respondent’s disputed domain name closely resembles Complainant’s mark except for lacking the word “the” which appears in the trademark, the removal of spaces in the mark and the inclusion of a generic top-level domain (“gTLD”).  Previous panels have held that the deletion of the word “the” in a domain name does not differentiate the domain from a complainant’s mark. See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark).  Similarly, panels have held that the addition of a gTLD to a complainant’s mark and the removal of spaces between the words of a mark do not distinguish it from the mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); 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 therefore holds that Respondent’s disputed <proscloset.com> domain name is confusingly similar to Complainant’s THE PROS CLOSET mark.

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s THE PROS

CLOSET trademark and to use it in its domain name, deleting only the word “The”;

(b) Respondent registered the disputed domain name on February 27, 2010.It uses the disputed domain name in part to host advertisements for products and services that compete with Complainant, including bicycles and bicycle gear;

(c) Respondent has engaged in these activities without the consent or approval of Complainant;

(d) Complainant argues that based on WHOIS information and other

available evidence in the record, Respondent is not commonly

known by the <proscloset.com> domain name.  Attached WHOIS information shows that <proscloset.com> was registered by “Above.com Domain Privacy.” See Compl. Ex. A.  Panels have routinely found that a respondent is not commonly known as a disputed domain name based on WHOIS and other information.  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).  The Panel finds, based on WHOIS information and a lack of response from Respondent, that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);

(e)Complainant claims that Respondent’s use of the <proscloset.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Respondent’s use of the <proscloset.com> domain name appears to be hosting advertisements for products and services that compete with Complainant, including bicycles and bicycle gear.  The Panel notes Exhibit C, which shows Complainant as selling bicycles and bicycle components.  Respondent’s disputed domain name resolves to a webpage featuring advertisements for “Bikes,” “Cycling Gear,” “Cycling Clothes,” “Men’s Road Bike Cycling,” and links to competing websites such as <nashbar.com> and <bikesourceonline.com>.  See Compl. at attached Ex. H. Previous panels have held that displaying advertisements of a complainant’s competitors on a confusingly similar domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) .  The Panel finds that Respondent’s use of the disputed domain name to host competing advertisements is not a bona fide offering of goods or service or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). 

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, the Panel recalls that an argument is sometimes made by complainants in UDRP proceedings that a respondent’s redirection of Internet users to its own website featuring competing links and advertisements disrupts the complainant’s business.  Although not specifically argued in this case, this is what appears to be happening in this proceeding and the Panel’s view is that it should take this argument into consideration. The Panel finds that Respondent’s behavior in this regard disrupts Complainant’s business under Policy ¶ 4(b)(iii).  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)).

 

Secondly, Complainant argues that Respondent acted in bad faith through using the confusing similarity between <proscloset.com> and Complainant’s THE PROS CLOSET mark to attract and confuse customers for Respondent’s commercial gain.  Respondent’s disputed domain name resolves to a website that features automatically generated advertisements that compete with Complainant’s products and services.   See Compl., at attached Ex. H.  Previous panels have found bad faith when a respondent uses a confusingly similar website to host advertisements that compete with a complainant.  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).  Accordingly, the Panel holds that Respondent acted in bad faith under Policy ¶ 4(b)(iv).

 

In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the THE PROS CLOSET mark and its use of the domain name since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <proscloset.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  June 3, 2015

 

 

 

 

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