Tempus International Corp. v. LaPorte
Holdings, Inc.
Claim
Number: FA0503000437100
Complainant is Tempus International Corp. (“Complainant”),
represented by Heather C. Brunelli, of Thompson and Knight, LLP,
1700 Pacific Ave., Suite 3300, Dallas, TX 75201. Respondent is LaPorte Holdings, Inc. (“Respondent”),
c/o Nameking, Inc., 2202 S. Fugueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <michelewatch.com> and <michellewatch.com>,
registered with Nameking.com, Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 10, 2005.
On
March 10, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <michelewatch.com> and <michellewatch.com>
are registered with Nameking.com, Inc. and that Respondent is the current
registrant of the names. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, 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
March 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 31,
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@michelewatch.com and postmaster@michellewatch.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
April 7, 2005, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <michelewatch.com>
and <michellewatch.com> domain names are confusingly similar to
Complainant’s MICHELE mark.
2. Respondent does not have any rights or
legitimate interests in the <michelewatch.com> and <michellewatch.com>
domain names.
3. Respondent registered and used the <michelewatch.com>
and <michellewatch.com> domain names in bad faith.
B. Respondent failed to submit a response in
this proceeding.
Complainant
has sold wristwatches under the MICHELE mark since at least as early as
February 1, 1982. Complainant has invested substantial time and money to
develop goodwill in the MICHELE mark and to cause consumers to recognize its
MICHELE mark as distinctly and exclusively designating its products.
Complainant holds numerous worldwide trademark registrations for the MICHELE
mark, including U.S. Reg. No. 1,812,074 (issued December 21, 1993), which is on
the Principal Register of the United States Patent and Trademark Office.
Complainant also operates a website at the <michelewatches.com> domain
name.
Respondent
registered the <michelewatch.com> and <michellewatch.com>
domain names on December 2, 2002 and January 12, 2004, respectively. The domain
names resolve to websites that advertise products that compete with
Complainant’s wristwatches, including ROLEX and CARTIER brand watches.
Respondent is not licensed to use Complainant’s mark.
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 MICHELE mark through registration with
the United States Patent and Trademark Office and through continuous use of the
mark in commerce since 1982. 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 <michelewatch.com>
and <michellewatch.com> domain names are confusingly similar to
Complainant’s MICHELE registered trademark. The domain names incorporate the
mark or a common misspelling of the mark while simply adding the generic term
“watch,” which is descriptive of Complainant’s products, and the “.com” generic
top-level domain (“gTLD”). Misspelling Complainant’s mark, adding a generic and
descriptive term, and adding a gTLD do not distinguish the domain names from
Complainant’s mark. Thus, the Panel finds that the domain names are confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). See 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); 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 Parfums
Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding
that four domain names that added the descriptive words “fashion” or
“cosmetics” after the trademark were confusingly similar to the trademark); see
also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the
<davemathewsband.com> and <davemattewsband.com> domain names were
common misspellings and, therefore, confusingly similar).
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 <michelewatch.com>
and <michellewatch.com> domain names. Neither Respondent nor the
evidence contradicts this allegation. Furthermore, 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 names under Policy ¶ 4(a)(ii). 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 a complaint to be deemed true); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that a complainant’s allegations are true unless clearly
contradicted by the evidence); 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 <michelewatch.com> and <michellewatch.com>
domain names 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
names under Policy ¶ 4(c)(iii) because the domain names are confusingly similar
to Complainant’s mark and redirect unsuspecting Internet users to websites that
offer products that compete with Complainant’s wristwatches. The Panel infers
that Respondent receives pay-per-click fees when Internet users follow the
links on its websites. Respondent makes opportunistic use of Complainant’s mark
in order to capitalize on the goodwill associated with the MICHELE moniker.
Thus, Respondent fails to establish rights or legitimate interests in the
domain names under Policy ¶ 4(a)(ii). See Yahoo! Inc. v. Web Master, FA
127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona fide offering of goods or
services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (holding that the respondent’s appropriation of the
complainant’s mark to market products that compete with the complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that the respondent had no rights or legitimate interests in a domain
name that used the complainant’s mark to redirect Internet users to a
competitor’s website).
No evidence
before the Panel suggests that Respondent is commonly known by the <michelewatch.com>
and <michellewatch.com> domain names. The domain names’ WHOIS information
indicates that the registrant of the disputed domain names is known as “LaPorte
Holdings, Inc.” and is not known by either of the confusingly similar
second-level domains that infringe on Complainant’s MICHELE mark. Moreover,
Respondent is not licensed to use Complainant’s mark. Thus, Respondent lacks
rights and legitimate interests in the domain names under Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in the respondent’s WHOIS information implies that the
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 confusingly
similar variations of Complainant’s MICHELE mark in its domain names to ensnare
unsuspecting Internet users. Respondent then redirects the users to a website
that links to various commercial websites. The Panel infers that Respondent
receives pay-per-click fees when Internet users follow the links on its
websites. Thus, Respondent is profiting from the unauthorized use of
Complainant’s registered mark in its domain names. Such infringement is
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See
Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain); see also Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if a 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)).
The disputed
domain names, which are confusingly similar to Complainant’s registered mark,
resolve to a website that provides links to websites that offer products that
compete with Complainant. Respondent’s use of the <michelewatch.com> and
<michellewatch.com> domain names establishes that Respondent
registered and used the domain names for the purpose of disrupting the business
of a competitor under 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 competed with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain names, 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, the 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 names, which are confusingly similar to
Complainant’s mark, suggests that Respondent knew of Complainant’s rights in
the MICHELE 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 websites promote products that compete with Complainant’s products
evidences Respondent’s knowledge of Complainant’s rights in the mark. Thus, the
Panel finds that Respondent chose the <michelewatch.com> and <michellewatch.com>
domain names based on the distinctive 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
was “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 satisified.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <michelewatch.com> and <michellewatch.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
April 21, 2005
National Arbitration Forum