Jennifer Convertibles, Inc. v. Tzvi
Yudkowsky
Claim
Number: FA0503000437105
Complainant is Jennifer Convertibles, Inc. (“Complainant”),
419 Crossways Park Dr., Woodbury, NY, 11797.
Respondent is Tzvi Yudkowsky (“Respondent”),
Rachov Chodosh, Jerusalem, Israel.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <jenniferconvertibles.com>, registered
with Iholdings.com, Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically March 9,
2005; the National Arbitration Forum received a hard copy of the Complaint March
18, 2005.
On
March 11, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <jenniferconvertibles.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com verified that Respondent is bound by the Iholdings.com, Inc.
d/b/a Dotregistrar.com registration agreement and thereby has 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 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 11, 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@jenniferconvertibles.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 15, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <jenniferconvertibles.com>,
is identical to Complainant’s JENNIFER CONVERTIBLES mark.
2. Respondent has no rights to or legitimate
interests in the <jenniferconvertibles.com> domain name.
3. Respondent registered and used the <jenniferconvertibles.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Jennifer Convertibles, established by extrinsic evidence in this proceeding
that it holds a trademark registration with the United States Patent and
Trademark Office for the JENNIFER CONVERTIBLES mark (Reg. No. 1,267,181, issued
February 14, 1984). Complainant first
began using the JENNIFER CONVERTIBLES mark in commerce in 1982 in connection
with the retail sales of furniture.
Respondent
registered the <jenniferconvertibles.com> domain name on January
9, 1998. The disputed domain name
resolves to a search engine website that provides links to third party
furniture businesses in addition to links for travel, financial planning,
business planning and health and beauty.
The disputed domain name also displays the heading “Under Construction.”
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 JENNIFER CONVERTIBLES mark through
registration with the United States Patent and Trademark Office and through
continuous use of its mark in commerce for over twenty 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. Respondent has the burden of refuting this
assumption).
The domain name
registered by Respondent, <jenniferconvertibles.com>, is
identical to Complainant’s JENNIFER CONVERTIBLES mark because the only
difference between the two is the omission of a space between the words
“Jennifer” and “Convertibles” in the domain name. The omission of a space does not significantly distinguish the
domain name from the mark. See Wembley Nat’l Stadium Ltd. v. Thomson,
D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see
also 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 Planned
Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), aff’d
152 F.3d 920 (2d Cir. 1998), cert. denied 525 U.S. 834 (1998)
(finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s
<plannedparenthood.com> domain name nearly identical).
Furthermore,
the addition of the generic top-level domain “.com” is irrelevant in
determining whether the <jenniferconvertibles.com> domain name is
confusingly similar to Complainant’s JENNIFER CONVERTIBLES mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <jenniferconvertibles.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 right or legitimate interest is
sufficient to shift the burden of proof to Respondent to demonstrate that such
rights or legitimate interests do 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 accepts 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 the 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 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 third party furniture businesses in addition to
links for travel, financial planning, business planning and health and beauty. The disputed domain name also displays the
heading “Under Construction.” In the
absence of a Response, the Panel assumes that Respondent receives click-through
fees for redirecting Internet users to third party websites via the disputed
domain name. Respondent’s use of a
domain name that is identical to Complainant’s JENNIFER CONVERTIBLES mark to
redirect Internet users interested in Complainant’s services to a search engine
website that offers links to competing websites is not a use in connection with
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation of a website using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”); see also
Pioneer Hi-Bred Int’l Inc. v. Henry Chan, FA 154119 (Nat. Arb. Forum May
12, 2003) (finding that Respondent did not have rights or legitimate interests
in a domain name that used Complainant’s mark and redirected Internet users to
website that pays domain name registrants for referring those users to its
search engine and pop-up advertisements); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Furthermore,
Respondent lacks rights and legitimate interests in the <jenniferconvertibles.com>
domain name because Respondent has not presented any evidence, and there is
no proof in the record suggesting that Respondent is commonly known by the
disputed domain name. Additionally,
nothing in the WHOIS domain name registration information suggests that
Respondent is commonly known by the domain name. Therefore, 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 right 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 Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
incorporating Complainant’s mark in its domain name to lead Internet users to a
website that offers links to competing furniture websites that Respondent
presumably receives click-through fees from.
The Panel finds that Respondent is intentionally creating a likelihood
of confusion with Complainant’s mark to attract Internet users to Respondent’s website
for Respondent’s commercial gain, pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); 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); see also Kmart v. Kahn,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Furthermore,
Complainant’s registration of the JENNIFER CONVERTIBLES mark with the United
States Patent and Trademark Office conferred constructive notice to the public
as to Complainant’s rights in the mark.
Respondent’s registration of the confusingly similar domain name despite
its constructive knowledge and the fact that Respondent’s website resolves to a
website that provides links to Complainant’s competitors is evidence of
Respondent’s actual knowledge of Complainant’s rights. Thus, the Panel finds Respondent registered
the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Jeff 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. Papol
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between Complainant’s mark and the content advertised on Respondent’s website
was obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see also Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”).
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 <jenniferconvertibles.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 28, 2005
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