The Antioch Company d/b/a Creative
Memories v. In Memory Of
Claim Number: FA0505000474862
Complainant is The Antioch Company d/b/a Creative Memories (“Complainant”),
P.O. Box 1839, Saint Cloud, MN 56302. Respondent
is In Memory Of (“Respondent”), P.O.
Box 360109, Strongsville, OH 44136.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ecreativememories.com>,
registered with Tucows 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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 23, 2005.
On
May 12, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <ecreativememories.com>
is registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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
May 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 14, 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@ecreativememories.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
June 20, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (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 <ecreativememories.com> domain name is confusingly similar to
Complainant’s CREATIVE MEMORIES mark.
2. Respondent does not have any rights or
legitimate interests in the <ecreativememories.com>
domain name.
3. Respondent registered and used the <ecreativememories.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant’s
Creative Memories business was founded in 1987 as a direct sales company
distributing photo album and scrapbook supplies through Creative Memories
Consultants. Creative Memories
Consultants are independent distributors who sell CREATIVE MEMORIES brand
products.
Since 1987,
Creative Memories has grown to include over 65,000 U.S. based Creative Memories
Consultants, and nearly 90,000 worldwide.
Complainant has operated a website at the <creativememories.com>
domain name since September 1997 to promote its CREATIVE MEMORIES products.
Complainant’s
predecessor-in-interest registered the CREATIVE MEMORIES mark with the U.S.
Patent and Trademark Office on June 11, 1996 (Reg. No. 1,979,739). The mark was registered for “photograph
albums, photograph mounts and plastic refill pages for holding photographs.” Complainant is the last listed owner of the
mark.
Complainant’s
predecessor-in-interest also registered the CREATIVE MEMORIES mark with the
U.S. Patent and Trademark Office on September 23, 1997 (Reg. No.
2,099,073). The mark was registered for
“educational services, namely, home classes for preparing photo albums and scrapbook
albums.” Complainant is the last listed
owner of the mark.
Respondent
registered the disputed domain name, <ecreativememories.com>,
on November 16, 2004. As of January 11,
2005, the domain name resolved to a website that sold “Scrapbook Albums, Embellishments,
& More,” and claimed to be the “fastest growing on-line scrapbook supply
store.”
Complainant sent
a cease and desist letter to Respondent on January 11, 2005. On or about January 18, 2005, Respondent had
removed the former website. A temporary
index page replaced the former website.
On or about April 5, 2005, Respondent commenced using the domain name
for a scrapbooking related website.
Now, however, Respondent replaced the references for
“eCreativememories.com” with “Forscrapsakes.com.”
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. The Panel is entitled to accept all reasonable allegations and
inferences set forth in the Complaint as true unless the evidence is clearly
contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that the respondent's failure to respond allows all
reasonable inferences of fact in the allegations of the complaint to be deemed
true); 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.").
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.
Registering
a trademark with a legitimate governing authority establishes a presumption of
valid and subsisting trademark rights.
Here, Complainant’s predecessor-in-interest successfully registered the
CREATIVE MEMORIES mark with the U.S. Patent and Trademark Office. Complainant is the last listed owner of
those trademark rights. Since the
presumption afforded by registration stands uncontested, Complainant has
established rights in the CREATIVE MEMORIES mark pursuant to Policy ¶
4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that the 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); 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).
Additionally, Complainant
asserts that the disputed domain name, <ecreativememories.com>, is confusingly similar to the CREATIVE
MEMORIES mark. In making this
determination, panels simply compare the second-level domain with the trademark
at issue. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr.
22, 2000) (finding that the addition of a top-level domain is without legal
significance).
In this
case, the only difference between Complainant’s mark and the second-level
domain is the addition of the letter “e” to the front-end of Complainant’s mark
in the domain name. Panels have
consistently held that domain names are confusingly similar to third-party
marks where the only addition is the letter “e” to the third-party’s mark. Consistent with these prior decisions under
the Policy, the Panel finds that the disputed
domain name, <ecreativememories.com>, is confusingly similar to the CREATIVE
MEMORIES mark pursuant to Policy ¶ 4(a)(i).
See Canadian Tire Corp. v. 849075
Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain
names <ecanadiantire.com> and <e-canadiantire.com> are confusingly
similar to Canadian Tire’s trademarks); see
also Int’l Data Group, Inc. v. Maruyama & Co.,
Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name
<ecomputerworld.com> is confusingly similar to Complainant’s mark,
COMPUTERWORLD); see also EBAY, Inc. v.
MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that Respondent’s
domain name <eebay.com> is confusingly similar to Complainant’s
registered EBAY trademark).
Complainant
has established Policy ¶ 4(a)(i).
Complainant
asserts Respondent lacks rights and legitimate interests. The burden then shifts to Respondent to
advance concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent.” G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002).
Respondent has failed to meet its burden by failing to respond to the
Complaint. Therefore, the Panel finds
that Respondent lacks rights and legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name).
Nevertheless, the Panel will address the elements of Policy ¶ 4(c).
Respondent
initially resolved the disputed domain name to a website that sold “Scrapbook
Albums, Embellishments, & More.”
Shortly after Complainant sent a cease and desist letter to Respondent,
the domain name resolved to a temporary index page. Months later, Respondent resumed using the domain name for a
scrapbook-related website. Complainant
also uses its CREATIVE MEMORIES mark for scrapbook-related services, “namely,
home classes for preparing photo albums and scrapbook albums.” Therefore, the Panel finds that Respondent
and Complainant are both operating in the same field of business and,
therefore, are competitors. Under the
Policy, there is no right to use a domain name that is identical or confusingly
similar to a trademark of one’s competitor.
Therefore, Respondent is not using the disputed domain name in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). See Clear Channel Comm’ns,
Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding
that Respondent, as a competitor of Complainant, had no rights or legitimate
interests in a domain name that utilized Complainant’s mark for its competing
website); see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services).
There are three
bases for the Panel to find that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). First, there is no assertion in the record that Respondent is
commonly known by the <ecreativememories.com>
domain name. Second, the WHOIS
registration information fails to indicate the same. Third, Respondent has implicitly admitted that it is not commonly
known by the disputed domain name when it reattached its scrapbook
website. After receiving the cease and
desist letter from Complainant, Respondent changed the references on its
website from “eCreativememories.com” to “Forscrapsakes.com.” This is persuasive evidence that Respondent
is not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); 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).
Moreover,
Respondent is using the disputed domain name in a commercial manner and there
is no evidence support an argument for fair use. Therefore, Respondent is not using the disputed domain name in connection with a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Schering Corp. v. NGS Enters., LTD,
FA 198013 (Nat. Arb.
Forum Nov. 7, 2003) (“[T]he Panel
concludes that Respondent's use is plainly commercial in nature, such that
Policy ¶ 4(c)(iii) is in fact inapplicable to this dispute.”); see also Avery
Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan. 10, 2003) (“Evidence
indicates that Respondent is profiting from the use of Complainant's mark,
therefore Policy ¶ 4(c)(iii)’s 'noncommercial or fair use' criteria are inapplicable.”).
Complainant
has established Policy ¶ 4(a)(ii)
As stated prior,
Complainant and Respondent are competitors in the scrapbook business. The fact that Respondent registered a domain
name, which is confusingly similar to one of its competitors marks, is
sufficient for the Panel find that Respondent registered the domain name
primarily to disrupt the business of a competitor. This is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see
also S. Exposure v. S. Exposure, Inc., FA 94864
(Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
In this case,
the same facts that establish bad faith pursuant to Policy ¶ 4(b)(iii) also
establish bad faith registration and use under Policy ¶ 4(b)(iv). In particular, Respondent registered a
domain name that is confusingly similar to a competitor’s mark and he used that
domain name to sell goods and services that compete with those offered by
Complainant. Therefore, the Panel finds
that Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its web site by creating a likelihood of confusion with
Complainant's mark as to the source, sponsorship, affiliation, or endorsement
of the resolved website. See Am. Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to
attract Internet users to his website for commercial gain by creating a
likelihood of confusion with Complainant’s mark and offering the same services
as Complainant via his website); see also
Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15,
2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially
used the domain name at issue to resolve to a website offering similar services
as Complainant into the same market).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ecreativememories.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
June 30, 2005
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