Charleston Alexander Jewelers, Inc. v.
Virtual Sky
Claim
Number: FA0504000452231
Complainant is Charleston Alexander Jewelers, Inc. (“Complainant”),
represented by Patrick J. Jennings, of Pillsbury Winthrop Shaw Pittman LLP, 1600 Tysons Blvd., Suite 100, Mclean, VA 22102. Respondent is Virtual Sky (“Respondent”), P.O. Box 20543 SMB, George Town, Grand
Cayman, KY 32084.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wherethediamondare.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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 8, 2005.
On
April 7, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <wherethediamondare.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
April 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 4, 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@wherethediamondare.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
May 9, 2004, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <wherethediamondare.com>
domain name is confusingly similar to Complainant’s WHERE THE DIAMONDS ARE
mark.
2. Respondent does not have any rights or
legitimate interests in the <wherethediamondare.com> domain name.
3. Respondent registered and used the <wherethediamondare.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Charleston Alexander Jewelers, Inc., is a diamond importer and retailer serving
the Washington D.C. area. Complainant
maintains a website at the <wherethediamondsare.com> domain name. Complainant has registered the WHERE THE
DIAMONDS ARE mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,725,077 issued June 10, 2003).
Respondent
registered the <wherethediamondare.com> domain name on October 18,
2004. Respondent’s domain name resolves
to a website that features links to competing jewelers.
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 rights in the WHERE THE DIAMONDS ARE mark through registration of
the mark with the USPTO. 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 Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Respondent’s <wherethediamondare.com> domain name is
confusingly similar to Complainant’s WHERE THE DIAMONDS ARE mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety and merely removes the letter “s” from the
term “diamonds” in Complainant’s mark.
Additionally, Respondent’s domain name adds the generic top-level domain
“.com” and omits the spaces between the terms of Complainant’s mark. Such minor alterations are insufficient to
negate a finding of confusing similarity between Respondent’s domain name and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Universal City Studios, Inc. v.
HarperStephens,
D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the
complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall
impression of the mark and thus made the disputed domain name confusingly
similar to it); see also Victoria’s
Secret v. Internet Inv. Firm Trust, FA
94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name
<victoriasecret.com> to be confusingly similar to the complainant’s
trademark, VICTORIA’S SECRET); see also Nev. State
Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see
also Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”); see also 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.”).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <wherethediamondare.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <wherethediamondare.com> domain name, which is
confusingly similar to Complainant’s WHERE THE DIAMONDS ARE mark, to operate a
website that features links to competing jewelers. Such competing use is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed 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).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s WHERE THE DIAMONDS ARE mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); 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 is
using the confusingly similar <wherethediamondare.com> domain name
to operate a website that features links to competing jewelers. The Panel finds that such use constitutes
disruption and 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 the
respondent acted in bad faith by attracting Internet users to a website that
competes 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)).
Because
Respondent’s domain name is confusingly similar to Complainant’s WHERE THE DIAMONDS
ARE mark, consumers accessing Respondent’s domain name may become confused as
to Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the
disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Qwest
Communications Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”); see also 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)).
Furthermore, Respondent registered the <wherethediamondare.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the WHERE THE DIAMONDS ARE mark due to Complainant’s registration of the mark
with the USPTO. Moreover, the Panel
infers that Respondent had actual knowledge of Complainant’s rights in the mark
due to the obvious connection between Respondent’s website and Complainant’s
jewelry business. Registration of a
domain name that is confusingly similar to another’s mark despite actual or
constructive knowledge of the mark holder’s superior rights is tantamount to
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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 Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he 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 <wherethediamondare.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
May 19, 2005
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