Mark W. Cross & Co., LLC v. FLEMING, RICHARD / OXFORD HOUSE
Claim Number: FA1605001675841
Complainant is Mark W. Cross & Co., LLC ("Complainant"), represented by John M. Nading of DLA Piper LLP, District of Columbia, USA. Respondent is FLEMING, RICHARD / OXFORD HOUSE ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <markcross.com>, registered with Network Solutions, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2016; the Forum received payment on May 19, 2016.
On May 20, 2016, Network Solutions, LLC confirmed by email to the Forum that the <markcross.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@markcross.com. Also on May 20, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 a leading manufacturer and retailer of luxury leather products and related goods and services. Complainant uses the MARK CROSS trademark in connection with these products, having acquired the brand and trademark from Sara Lee Corporation in 2002. The mark has been used by Complainant and its predecessors in interest since 1845 and is the subject of various longstanding trademark registrations in many countries, including the United States and Canada.
Respondent is the registrant of the disputed domain name <markcross.com>, registered on January 19, 2002. The domain name resolves to a parked page with no content, and Complainant states that this has been the case since its initial registration. Complainant states further that Respondent is not authorized or licensed to use its mark, and is not commonly known by any name related to the mark. Complainant accuses Respondent of using the domain name to disrupt Complainant's business, causing Complainant's customers and potential customers to believe that Complainant does not have a proper website. Complainant also argues that the registration of the <markcross.com> domain name at the time of Complainant's widely-reported acquisition of the well-known MARK CROSS brand and mark is evidence of Respondent's opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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(f), 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 (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 disputed domain name <markcross.com> corresponds to Complainant's registered MARK CROSS trademark, but for the omission of the space and the addition of the ".com" top-level domain. Those differences are insufficient to distinguish the domain name from Complainant's mark. See, e.g., Asian & Western Classics B.V. v. New York Link, Inc., FA 422746 (Nat. Arb. Forum Mar. 30, 2005) (finding <karllagerfeld.com> identical to KARL LAGERFELD); Del Laboratories, Inc. v Nett Corp., FA 104555 (Nat. Arb. Forum Mar. 26, 2002) (finding <lacross.com> identical to LA CROSS); Yves Saint Laurent v. Javier Garcia, D2001-0911 (WIPO Sept. 7, 2001) (finding <yvessaintlaurent.com> identical to YVES SAINT LAURENT). The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark without authorization, and Respondent does not appear to have made any active use of the domain name. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(ii), bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
These instances set forth in paragraph 4(b) are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See Hotel Plaza Ltd., Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., D2008-1760 (WIPO Mar. 18, 2009). Furthermore,
a domain name may be so closely connected with a well-known trademark that its very use by someone with no connection to the trademark owner may suggest opportunistic bad faith, particularly where the registration coincides with widespread publicity surrounding an impending merger or other event relating to the trademark owner. See, e.g., Target Brands, Inc. v. M. V. P. / MV Professional Marketing Services, FA 1644580 (Forum Dec. 8, 2015) (finding opportunistic bad faith in registration of <targetcvs.com> immediately following public announcement of deal between Target and CVS).
Respondent does not appear to have made any active use of the disputed domain name. The domain name was registered at a time when there was widespread publicity of Respondent's acquisition of the MARK CROSS brand and mark. Respondent has failed to come forward with any explanation for its selection of the domain name, and none is apparent to the Panel apart from an intent to exploit its trademark value. The Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. The Panel therefore finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <markcross.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 20, 2016
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