Woodfield Licensing Corporation v. Forum
LLC
Claim
Number: FA0504000464615
Complainant is Woodfield Licensing Corporation (“Complainant”),
represented by William D. Raman, of Wong Cabello, L.L.P.,
P.O. Box 685108, Austin, TX 78768-5108.
Respondent is Forum LLC (“Respondent”),
P.O. Box 2331, Roseau, Roseau 00152, DM.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <woodfieldsuits.com> and <woodfieldhotel.com>,
registered with Fabulous.com Pty Ltd.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 20, 2005.
On
April 19, 2005, Fabulous.Com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain names <woodfieldsuits.com> and <woodfieldhotel.com>
are registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the names. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 12, 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@woodfieldsuits.com and
postmaster@woodfieldhotel.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 17, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <woodfieldsuits.com>
and <woodfieldhotel.com> domain names are confusingly similar
to Complainant’s WOODFIELD SUITES mark.
2. Respondent does not have any rights or
legitimate interests in the <woodfieldsuits.com> and <woodfieldhotel.com>
domain names.
3. Respondent registered and used the <woodfieldsuits.com>
and <woodfieldhotel.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Woodfield Licensing Corporation, has offered hotel and motel services under the
WOODFIELD SUITES mark since 1988.
Complainant operates hotels and motels and various locations, including
Wisconsin, Texas, Illinois, Colorado and Ohio.
Complainant has
registered the WOODFIELD SUITES mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,917,032 issued September 5, 1995).
Respondent registered
the <woodfieldsuits.com> and <woodfieldhotel.com>
domain names on June 30, 2004.
Respondent’s domain names resolve to a website that features links to
competing hotels and other travel-related websites.
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 WOODFIELD SUITES mark through registration of the
mark with the USPTO. See 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); see also 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.”).
Respondent’s <woodfieldsuits.com>
domain name is confusingly similar to Complainant’s WOODFIELD SUITES mark
because the domain name incorporates Complainant’s mark and merely deletes the
letter “e” from the word “suites” in the mark.
Such a minor alteration is not enough to overcome a finding of confusing
similarity between Respondent’s domain name and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth “w” or the
omission of periods or other such generic typos do not change respondent’s
infringement on a core trademark held by the complainant); see also State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to the complainant’s
STATE FARM mark).
Furthermore,
Respondent’s <woodfieldhotel.com> domain name is confusingly
similar to Complainant’s WOODFIELD SUITES mark as Respondent’s domain name
replaces the term “suites” with the term “hotel,” a term which is synonymous in
the hotel-industry context. Such
alteration is insufficient to negate the confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that the disputed domain names
<caterpillarparts.com> and <caterpillarspares.com> were confusingly
similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN).
Moreover, the
addition of the generic top-level domain “.com” and the omission of the space
between the terms of Complainant’s mark are not enough to defeat a finding of
confusing similarity pursuant to Policy ¶ 4(a)(i). See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); 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 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 Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
response, the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, 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 <woodfieldsuits.com> and <woodfieldhotel.com>
domain names 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 confusingly similar domain names to operate a website that features
links to competing hotels and other travel-related websites. 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 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).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or authorized to register domain names featuring any
variation of Complainant’s WOODFIELD SUITES mark. Thus, the Panel finds that Respondent has not established rights
or legitimate interests in the <woodfieldsuits.com> and <woodfieldhotel.com>
domain names pursuant to Policy ¶ 4(c)(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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar <woodfieldsuits.com> and <woodfieldhotel.com>
domain names to operate a website that features links to competing hotel and
travel-related websites. Such use
constitutes disruption and is evidence that Respondent registered and used the
domain names in bad faith 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)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to the
various hotel and travel-related websites featured on its website. Because Respondent’s domain names are
confusingly similar to Complainant’s mark, consumers accessing Respondent’s
domain names may become confused as to Complainant’s affiliation with the
resulting website. Thus, Respondent’s
commercial use of the disputed domain names constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). 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 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).”).
Furthermore,
Respondent registered the <woodfieldsuits.com> and <woodfieldhotel.com>
domain names with actual or constructive knowledge of Complainant’s rights in
the WOODFIELD SUITES mark due to Complainant’s registration of the mark with
the USPTO. Moreover, the Panel infers
that Respondent registered the domain names with actual knowledge of
Complainant’s mark due to the obvious connection between the content featured
on Respondent’s website and Complainant’s hotel business. Registration of domain names that are
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s 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 <woodfieldsuits.com> and <woodfieldhotel.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 31, 2005
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