Macy's West Stores, Inc. v. Tarek Jebara
Claim Number: FA1506001625979
Complainant is Macy's West Stores, Inc. (“Complainant”), represented by Michael C. Christman of Macy's Law Department, Missouri, USA. Respondent is Tarek Jebara (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <macysencore.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on June 24, 2015; the Forum received payment on June 24, 2015.
On June 25, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <macysencore.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 June 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@macysencore.com. Also on June 30, 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 July 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest operators of retail department stores in the world. Complainant operates 788 retail department stores under the name “Macy’s” throughout the United States. Complainant has registered the MACY’S mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 78,333, registered June 7, 1910), which demonstrates its rights in the mark. Complainant argues that the <macysencore.com> domain name is confusingly similar to the MACY’S mark as it consists of the entire MACY’S mark followed by the generic word “encore” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <macysencore.com> domain name. Respondent has no right to use the MACY’S mark. Further, Respondent is not commonly known by the disputed domain name or the MACY’S mark.
Respondent is not making a bona fide offering of any goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent registered the domain name <macysencore.com> during the time Macy's was considering using the name "Macy's Encore" as the name of Macy's new off-price stores. At the time, Respondent's spouse was employed by another Macy's, Inc. subsidiary and worked on projects pertaining to Macy's off-price stores. Respondent's intent in registering the infringing domain name was either to sell the domain name to Macy's or to divert internet users with an interest in Macy's to Respondent's website for the purposes of commercial gain.
Complainant asserts that Respondent registered and has used the disputed domain name in bad faith. Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv) by intentionally diverting Internet users with an interest in Macy’s to Respondent’s website for the purposes of commercial gain. Additionally, Respondent registered the disputed domain name with constructive and/or actual knowledge of the MACY’S mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Macy's West Stores, Inc., is one of the largest operators of retail department stores in the world. Complainant operates 788 retail department stores under the name “Macy’s” throughout the United States. Complainant has registered the MACY’S mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 78,333, registered June 7, 1910), which demonstrates its rights in the mark.
Respondent, Tarek Jebara, registered the disputed domain name on March 6, 2015.
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 has rights in the MACY’S mark under Policy ¶ 4(a)(i) through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 78,333, registered June 7, 1910). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <macysencore.com> domain name is confusingly similar to the MACY’S mark under Policy ¶ 4(a)(i) as it consists of the name “Macy’s” followed by the generic word “encore” and the generic top-level domain (“gTLD”) “.com.” Complainant’s mark also contains an apostrophe, which Respondent has removed in the disputed 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).
Complainant has not authorized Respondent to use the MACY’S mark. The WHOIS information lists “Tarek Jebara” as registrant. Respondent is not commonly known by the <macysencore.com> domain name under Policy ¶ 4(c)(ii). 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).
Complainant contends that Respondent is not making a bona fide offering of any goods or services or a legitimate noncommercial or fair use through the <macysencore.com> domain name. However, Complainant has not submitted any evidence of Respondent’s use of the disputed domain name. Therefore, Complainant has failed to show that Respondent has not made 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). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
Since Complainant failed show Respondent’s use of the disputed domain name, Complainant has failed to show use in bad faith.
Complainant having not established the second and third elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <macysencore.com> domain name REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 6, 2015
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