DSW Shoe Warehouse, Inc. v. Ultimate
Search
Claim
Number: FA0501000412381
Complainant DSW Shoe Warehouse, Inc. (“Complainant”),
is represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP, 2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is Ultimate Search (“Respondent”), GPO Box 7862 Central, Hong Kong, HK
0000.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dswshoewarehouse.com>, registered with Moniker
Online Services, Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
31, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 1, 2005.
On
February 5, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <dswshoewarehouse.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, Inc. 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
February 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 28, 2005 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@dswshoewarehouse.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <dswshoewarehouse.com>
domain name is identical to Complainant’s DSW SHOE WAREHOUSE mark.
2. Respondent does not have any rights or
legitimate interests in the <dswshoewarehouse.com> domain name.
3. Respondent registered and used the <dswshoewarehouse.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, DSW
Shoe Warehouse, Inc., owns trademark rights for the DSW SHOE WAREHOUSE mark
through registration with the United States Patent and Trademark Office (Reg.
No. 1,895,499, issued May 23, 1995).
Complainant uses the DSW SHOE WAREHOUSE mark in connection with a wide
range of goods and services, including footwear, socks, hosiery, clothing
accessories such as purses, gloves, handbags, and scarves, and retail store
services in the field of footwear and accessories. Complainant offers its goods and services through the operation
of 172 retail stores in 32 states.
Complainant has also registered its mark in countries such as Brazil,
Canada, Japan, Mexico, Vietnam and Thailand.
Complainant began using its mark as early as March 10, 1994.
Complainant
operates a website at the <dswshoe.com> domain name where information
regarding the latest fashion in shoes, Complainant’s services, member incentive
programs and store locations can be found.
Complainant also operates twenty-eight other domain names that link or
resolve to Complainant’s primary <dswshoe.com> website.
Respondent
registered the <dswshoewarehouse.com> domain name on October 27,
2003. Respondent is using the disputed
domain name to resolve to a search engine website that provides links to
various third parties engaged in the same retail fashion and shoe business as
Complainant. Respondent’s website also
displays links to various topics including travel, health, cars, computers,
homes and credit cards.
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 that it has rights in the DSW SHOE WAREHOUSE mark through
registration with the United States Patent and Trademark Office. See Men’s Wearhouse, Inc. v. 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 Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The <dswshoewarehouse.com> domain name
registered by Respondent, is identical to Complainant’s DSW SHOE WAREHOUSE mark
because the only difference between the two is the omission of a space between
the words in the domain name. Minor
alterations such as the omission of spaces do not significantly distinguish the
domain name from the mark. See Croatia Airlines v. Kijong, AF-0302
(eResolution Sept. 25, 2000) (finding
that the domain name <croatiaairlines.com> is identical to Complainant's
CROATIA AIRLINES trademark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding that Respondent’s domain name <charlesjourdan.com> is identical
to Complainant’s marks).
Moreover, the
addition of the generic top-level domain “.com” does not sufficiently
distinguish the disputed domain name from Complainant’s DSW SHOE WAREHOUSE
mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the
addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name
registrants"); see also Interstellar
Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997)
(<epix.com> "is the same mark" as EPIX); see also Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to Complainant’s TERMQUOTE mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
alleges that Respondent has no rights or legitimate interests in the <dswshoewarehouse.com>
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain name. 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by Complainant that Respondent has no rights or legitimate interests
is sufficient to shift the burden of proof to Respondent to demonstrate that
such a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. See 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.”); 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.); see also Desotec N.V.
v. Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent is
using the disputed domain name to redirect Internet users to a search engine
website that provides links to various third parties engaged in the same retail
fashion and shoe business as Complainant.
Respondent’s website also displays links to various topics including
travel, health, cars, computers, homes and credit cards. The Panel infers that Respondent receives
click-through fees by redirecting Internet users to commercial websites. Respondent’s use of a domain name that is
identical to Complainant’s mark for commercial gain is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii)
and is not a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iv). See MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where Respondent attempted to
profit using Complainant’s mark by redirecting Internet traffic to its own
website); see also Am. Online, Inc. v. Tercent Comm. Corp., FA 93668
(Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a
portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”);
see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s
marks to send Internet users to a website which displayed a series of links,
some of which linked to competitors of Complainant, was not a bona fide
offering of goods or services); see also Black & Decker Corp. v.
Clinical Evluations, FA 112629 (Nat. Arb. Forum June 24, 2004) (holding
that Respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to Complainant and presumably with the purpose
of earning a commission or pay-per-click referral fee did not evidence rights
or legitimate interests in the domain name).
Moreover,
Responent has not offered any evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <dswshoewarehouse.com>
domain name. Additionally, nothing in
the WHOIS domain name registration information, suggests that Respondent is
known by the domain name or by Complainant’s mark. Furthermore, Complainant did not authorize Respondent to use the
mark. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Complainant’s
registration of the DSW SHOE WAREHOUSE mark with the United States Patent and
Trademark Office serves as constructive knowledge of Complainant’s mark. Additionally, Respondent’s registration of a
domain name that is identical to Complainant’s registered mark to display links
to Complainant’s competitors suggests that Respondent had actual knowledge of
Complainant’s rights in the DSW SHOE WAREHOUSE mark. Therefore, the Panel finds Respondent registered the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec.
11, 2000) (finding that the ICQ mark is so obviously connected with Complainant
and its products that the use of the domain names by Respondent, who has no
connection with Complainant, suggests opportunistic bad faith).
Respondent
registered the disputed domain name for the purpose of disrupting Complainant’s
business by redirecting Internet traffic intended for Complainant to
Respondent’s website where links to competing third parties are offered. Registration of a domain name for the
purpose of disrupting Complainant’s business is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)).
Respondent is
wholly appropriating Complainant’s mark to lead Complainant’s customers to a
website where links to various third parties engaged in the same retail fashion
and shoe business as Complainant are offered.
The Panel infers that Respondent receives click-through fees for the
links displayed at the <dswshoewarehouse.com> domain name. Therefore, the Panel finds that Respondent
is intentionally creating a likelihood of confusion to attract Internet users
for Respondent’s commercial gain, pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website); see also Am. Online, Inc. v. Tercent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where domain name in question
is obviously connected with Complainant’s well-known marks, thus creating a
likelihood of confusion strictly for commercial gain); see also Luck’s Music
Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000)
(finding that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is
Ordered that the <dswshoewarehouse.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf, Panelist
Dated:
March 21, 2005
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