Jana Feifer, Inc. v. Domain Deluxe
Claim
Number: FA0502000422804
Complainant is Jana Feifer, Inc. (“Complainant”), represented
by Steve Tandberg of Onestop Internet, Inc.,
2652 Long Beach Ave., Los Angeles, CA 90058.
Respondent is Domain Deluxe
(“Respondent”), GPO 7628 Central, Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <janafeifer.com>, registered with Domainpeople
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 16, 2005.
On
February 18, 2005, Domainpeople Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <janafeifer.com> is
registered with Domainpeople Inc. and that Respondent is the current registrant
of the name. Domainpeople Inc. has verified that Respondent is bound by the Domainpeople
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 22, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 14, 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@janafeifer.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 17, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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 <janafeifer.com>
domain name is identical to Complainant’s JANA FEIFER mark.
2. Respondent does not have any rights or
legitimate interests in the <janafeifer.com> domain name.
3. Respondent registered and used the <janafeifer.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Jana Feifer, Inc., is in the business of marketing and selling cosmetics,
purses, and women’s clothing.
Complainant filed a registration for the JANA FEIFER mark with the
United States Patent and Trademark Office (“USPTO”) (Ser. No. 78/320,821) on
October 30, 2003. As of the filing date
of this dispute, Complainant’s mark has not yet been registered.
Respondent
registered the <janafeifer.com> domain name on November 14,
2003. Respondent is using the disputed
domain name to direct Internet users to a website that displays a generic
search engine, links to commercial websites including handbag and purse-related
sites, and exposes users to pay-per-click search results.
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
alleges rights in the JANA FEIFER mark as the result of Complainant’s service
mark registration application with the USPTO, and refers to customers who know
the mark. Various panels have found or
alluded to the potentiality for rights to exist in a mark as the result of
trademark or service mark applications with legitimate governmental
authorities. See, for example, Serverworks Corp. v.
Directname, FA
146929 (Nat. Arb. Forum Apr. 14, 2003) (“Complainant has established rights in
the SERVERWORKS mark through proof of application for a trademark with the
USPTO, as well as through use of the mark in commerce.”); see also ROI
Solutions, Inc. v. Jaewan, FA 95914 (Nat. Arb. Forum Jan. 17,
2001)
(“[A] pending federal trademark application, combined with prior use of the
mark is sufficient evidence on which to find that Complainant 'has rights' in a
trademark or service mark.”); see also Aston v. Pierrets, FA 117322 (Nat. Arb. Forum Sept. 27,
2002) stating in dicta that “[e]vidence that Complainant is actively seeking
trademark protection for a mark in question is enough to show rights in the
mark sufficient to establish standing.”.
Complainant provides evidence of common law rights in the JANA
FEIFER mark by using it commercially as the company name and by offering goods
under the name. It should be noted that
the mark is the name of a person and it is highly unlikely that the name would
be independently selected by another party.
The Panel finds that Complainant has demonstrated rights in its mark
pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”; see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
finding common law rights in a mark where its use was continuous and ongoing.
The domain name
registered by Respondent, <janafeifer.com>, is identical to
Complainant’s JANA FEIFER mark because the only difference is the addition of
the generic top-level domain “.com.”
This slight change does not significantly distinguish the domain name
from the 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 Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d
Cir. 2000), cert. denied, 530 U.S. 1262 (2000), ("For
consumers to buy things or gather information on the Internet, they need an
easy way to find particular companies or brand names. The most common method of
locating an unknown domain name is simply to type in the company name or logo
with the suffix .com."); see also
Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar.
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant has
argued that Respondent has no rights or legitimate interests in the domain name
that incorporates Complainant’s mark.
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 Do the
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest a complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard.”);
see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts.
Respondent is
using the <janafeifer.com> domain name to direct Internet users to
a website that features advertising for a variety of services and hosts a
search engine to link viewers to an array of websites, including sites that
offer the same type of products that Complainant offers. Respondent’s use of the domain name, which
is identical to Complainant’s JANA FEIFER mark, to direct Internet users
interested in Complainant’s products to a commercial website that offers a
search engine and links to handbag and purse-related websites is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and is not a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use; see also TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to competitors of the
complainant, was not a bona fide offering of goods or services; see also Avery Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) finding that the respondent had no
rights or legitimate interests in the disputed domain name where it used the
complainant’s mark, without authorization, to attract Internet users to its
business, which competed with the complainant.
Nothing in the
record, including the WHOIS domain name registration information, for the <janafeifer.com>
domain name dispute suggests that Respondent is commonly known by the
domain name or by Complainant’s JANA FEIFER mark. Therefore, Respondent has no rights or legitimate interests
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark; see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail".
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Registration and Use in Bad Faith
Respondent
registered and used the <janafeifer.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). Specifically,
uncontested evidence indicates that the subject domain name earns referral-fee
revenue for Respondent through pay-per-click advertising. Thus, the Panel infers that Respondent
commercially benefits from its use of Complainant’s JANA FEIFER mark in the
domain name. See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
Complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv); see
also Am. Online, Inc. v.
Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding bad
faith where the respondent registered and used an infringing domain name to
attract users to a website sponsored by the respondent.
Respondent is
using the disputed domain name to redirect Internet users to a website that offers
a search engine and links to various handbag and purse-related websites. Complainant’s business offers handbags and
purse-related products. The Panel finds
that, by creating confusion around Complainant’s mark, Respondent is attempting
to disrupt the business of a competitor.
Respondent’s use of Complainant’s mark to offer goods and services
similar to Complainant’s goods and services is evidence of bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18,
2000) finding the respondent acted in bad faith by attracting Internet users to
a website that competes with the complainant’s business; see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) finding
that the minor degree of variation from the complainant's marks suggests that
the respondent, the complainant’s competitor, registered the names primarily
for the purpose of disrupting the complainant's business; see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22,
2000) finding that the respondent registered and used the domain name primarily
for the purpose of disrupting the business of the complainant by offering
personal e-mail accounts under the domain name <openmail.com>, which is
identical to Complainant’s services under the OPENMAIL mark.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <janafeifer.com > domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 31, 2005
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