Official Pillowtex LLC v. Max Hefter c/o
Orly Max
Claim
Number: FA0502000430776
Complainant is Official Pillowtex LLC (“Complainant”),
represented by Kathryn E. Smith, of Wood, Herron and Evans, LLP,
2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is Max Hefter c/o Orly Max (“Respondent”),
P.O. Box 4029, Miami, FL 33014.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cannontowels.com>, registered with Bulkregister,
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 National Arbitration Forum electronically on February
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 25, 2005.
On
February 25, 2005, Bulkregister, LLC confirmed by e-mail to the National
Arbitration Forum that the domain name <cannontowels.com> is
registered with Bulkregister, LLC and that Respondent is the current registrant
of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister,
LLC 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
March 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 21, 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@cannontowels.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 24, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (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 <cannontowels.com>
domain name is confusingly similar to Complainant’s CANNON mark.
2. Respondent does not have any rights or
legitimate interests in the <cannontowels.com> domain name.
3. Respondent registered and used the <cannontowels.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant has
marketed various household goods, including a line of bath towels, under the
CANNON mark for more than 80 years. Complainant holds numerous trademark
registrations for the CANNON mark on the Principal Register of the United
States Patent and Trademark Office, including Reg. No. 729,513 (issued April 3,
1962).
Respondent
registered the <cannontowels.com> domain name on October 23, 1999.
The domain name resolves to a website that sells towels and linens, including
Complainant’s own products and competing products. Respondent is not an authorized
reseller of Complainant’s goods and is not licensed to use Complainant’s mark
for any purpose.
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 CANNON mark through registration with the
United States Patent and Trademark Office and through continuous use of the
mark in commerce for more than 80 years. 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
and that a respondent has the burden of refuting this assumption).
The <cannontowels.com> domain name is
confusingly similar to Complainant’s CANNON registered trademark because the
disputed domain name merely adds the generic word “towels,” which is
descriptive of Complainant’s products, and the “.com” generic top-level domain
to the mark. The addition of a generic and descriptive word and a generic
top-level domain do not distinguish the domain name from the mark. Thus, the
Panel finds that the domain name is confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain “.com” after the name POMELLATO was not relevant); see also
Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contained the identical
mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combined the complainant’s mark
with a generic term that had an obvious relationship to the complainant’s
business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
was confusingly similar to the complainant’s HOYLE mark, and that the addition
of “casino,” a generic word describing the type of business in which the
complainant was engaged, did not take the disputed domain name out of the realm
of confusing similarity).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant has alleged
that Respondent lacks rights and legitimate interests in the <cannontowels.com>
domain name. Complainant’s submission has gone unopposed and its arguments
unrefuted. Further, because Respondent has failed to submit a response,
Respondent has failed to propose any set of circumstances that could
substantiate its rights or legitimate interests in the disputed domain name. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of the complaint to
be deemed true); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, the
respondent failed to invoke any circumstance which could demonstrate any rights
or legitimate interests in the domain name).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)
because the domain name is confusingly similar to Complainant’s mark and
redirects unsuspecting Internet users to a commercial website that offers
Complainant’s own towel lines without authorization in addition to products
that compete with Complainant. Respondent makes opportunistic use of
Complainant’s mark in order to capitalize on the goodwill and fame associated with
the CANNON moniker. Thus, Respondent fails to establish rights or legitimate
interests in the domain name under Policy ¶ 4(a)(ii). See Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of
goods or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); see also
Nat’l Collegiate Athletic Ass’n v.
Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to
sell the complainant’s goods without the complainant’s authority, as well as
others’ goods, is not bona fide use).
No
evidence before the Panel suggests Respondent is commonly known by the <cannontowels.com>
domain name under Policy ¶ 4(c)(ii). The domain name’s WHOIS information
indicates that the registrant of the disputed domain name is known as “Max
Hefter c/o Orly Max” and is not known by the confusingly similar second-level
domain that infringes on Complainant’s CANNON mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. Thus,
Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 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 satisfied.
Respondent
uses a confusingly similar variation of Complainant’s CANNON mark in its domain
name to ensnare unsuspecting Internet users. Respondent then redirects the
users to a commercial website. The Panel infers that Respondent profits from
this diversion. Thus, Respondent is profiting from the unauthorized use of
Complainant’s registered mark in its domain name. Such infringement is what the
Policy was intended to remedy and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits
from its diversionary use of a 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)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of offering goods that compete with Complainant in
addition to Complainant’s own goods. Respondent’s use of the <cannontowels.com> domain name establishes that
Respondent registered and used the domain name for the purpose of disrupting
the business of a competitor pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
the respondent, a watch dealer not otherwise authorized to sell the
complainant’s goods, to the complainant); see also Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb.
Forum Nov. 6, 2000) (transferring BAYAREAVW.COM from the respondent, an
automobile dealership specializing in Volkswagens, to the complainant); 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, a competitor of the complainant, registered the
names primarily for the purpose of disrupting the complainant’s business).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, a panel must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the disputed domain name, a domain name that is confusingly
similar to Complainant’s mark, suggests that Respondent knew of Complainant’s
rights in the CANNON mark. Additionally, Complainant’s trademark registration
on the Principal Register of the United States Patent and Trademark Office gave
Respondent constructive notice of Complainant’s mark. Moreover, the fact that
Respondent’s website offers Complainant’s own products and its competitor’s
products for sale evidences Respondent’s knowledge of Complainant’s rights in
the mark. Thus, the Panel finds that Respondent chose the <cannontowels.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when the
respondent reasonably should have been aware of the complainant’s trademarks,
actually or constructively.”); see also 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between the complainant’s mark
and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the complainant’s mark when it registered the
subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <cannontowels.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
April 6, 2005
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