Chair Fair, LLC v. Internet Search Engine
c/o Domain Admin
Claim
Number: FA0504000465127
Complainant is Chair Fair, LLC (“Complainant”), represented
by Don J.J. Cordell, of Seegel, Lipshutz and Wilchins, P.C., Wellesley Office Park, 60 William Street, Suite 200, Wellesley,
MA 02481. Respondent is Internet Search Engine c/o Domain Admin (“Respondent”), 5654 Saint Joe Rd., Suite 104, Fort
Wayne, IN 46835.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <chairfair.com>, registered with Enom,
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 21, 2005.
On
April 21, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <chairfair.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 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@chairfair.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 19, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf, (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 <chairfair.com>
domain name is identical to Complainant’s CHAIR FAIR mark.
2. Respondent does not have any rights or
legitimate interests in the <chairfair.com> domain name.
3. Respondent registered and used the <chairfair.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Chair Fair, LLC, owns, operates and franchises retail furniture stores. Complainant has conducted business under the
CHAIR FAIR mark since 1993 and has expended a significant amount of resources
to develop a market presence, including widely and prominently advertising and
using the CHAIR FAIR mark through various media channels, including expensive
and prominent television and print advertising.
Respondent
registered the <chairfair.com> domain name on May 11, 2003. Respondent’s domain name resolves to a
website that features sponsored links to competing furniture retailers.
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’s
CHAIR FAIR mark has acquired secondary meaning through Complainant’s aggressive
promotion of the mark since 1993.
Complainant’s CHAIR FAIR mark has become a nationally known identifier
of Complainant’s services. Thus,
Complainant has established common law rights in the CHAIR FAIR mark. See SeekAm. Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the complainant’s trademark or
service mark be registered by a government authority or agency for such rights
to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it has acquired rights under the common law).
Respondent’s <chairfair.com>
domain name is identical to Complainant’s CHAIR FAIR mark, as the domain name
incorporates the mark in its entirety, adds the generic top-level domain “.com”
and omits the space between the terms in Complainant’s mark. See 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 Isleworth
Land Co. v. Lost in Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); 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.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See 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); see
also 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.”).
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 <chairfair.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, the
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 identical <chairfair.com> domain name to operate a
website that features links to competing furniture retailers. The Panel infers that Respondent receives
click-through fees for diverting Internet users to these competing 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 name or authorized to register domain names featuring
Complainant’s CHAIR FAIR mark. Thus,
the Panel finds that Respondent has not established rights or legitimate
interests in the <chairfair.com> domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <chairfair.com> domain name, which is identical to
Complainant’s CHAIR FAIR mark, to operate a website that features links to
competing furniture retailers. 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)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Because
Respondent’s domain name is identical to Complainant’s 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 <chairfair.com>
domain name 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).”).
The Panel infers that Respondent registered the <chairfair.com>
domain name with actual knowledge of Complainant’s rights in the CHAIR FAIR
mark due to the obvious connection between the content advertised on
Respondent’s website and Complainant’s business. Registration of a domain name that is identical 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 Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); 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 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 <chairfair.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
June 3, 2005
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