P.C. Richard & Son Long Island Corp.
v. Patty and Camden Richards
Claim
Number: FA0507000527652
Complainant is P.C. Richard & Son Long Island Corp. (“Complainant”),
represented by Celeste M. Butera, of Rivkin Radler LLP,
926 EAB Plaza, Uniondale, NY 11556.
Respondent is Patty and Camden
Richards (“Respondent”), 19744 Beach Blvd. #428, Huntington Beach, CA
92648.
The
domain name at issue is <pcrichards.com>, registered with Bulkregister,
Llc.
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 July
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 1, 2005.
On
August 4, 2005, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the <pcrichards.com> domain name is
registered with Bulkregister, Llc. and that Respondent is the current
registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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
August 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 29, 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@pcrichards.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 2, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pcrichards.com>
domain name is confusingly similar to Complainant’s P.C. RICHARD & SON
mark.
2. Respondent does not have any rights or
legitimate interests in the <pcrichards.com> domain name.
3. Respondent registered and used the <pcrichards.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
P.C. Richard & Son Long Island Corp., Inc., owns and operates one of the
country’s premier consumer electronics retailers. Complainant offers a wide range of merchandise such as household
appliances and consumer electronics.
Complainant has been in business since 1909 and has forty-nine stores
located throughout New York and New Jersey.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the P.C. RICHARD & SON mark (Reg. No. 1,869,967 issued
December 27, 1994).
Respondent
registered the <pcrichards.com> domain name on November 8,
2000. Respondent is using the disputed
domain name to redirect Internet users to a website featuring goods and
services that compete with those offered by Complainant.
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.
Complainant has
established rights in the P.C. RICHARD & SON mark through its registration
of the mark with the USPTO and through continuous use of the mark in
commerce. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s <pcrichards.com>
domain name is confusingly similar to Complainant’s P.C. RICHARD & SON mark
because the domain name omits the periods after the letters “p” and “c,” the
space between “p.c.” and “richard,” and the phrase “& Son,” and adds the
letter “s” to the term “richards” and the generic top-level domain “.com” to
the mark. The Panel finds that these
minor alterations to Complainant’s registered mark are insufficient to negate
the confusingly similar aspects of Respondent’s domain name pursuant to Policy
¶ 4(a)(i). See Mrs. World Pageants,
Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding
that punctuation is not significant in determining the similarity of a domain
name and mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119
(WIPO May 18, 2000) (holding “that the use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name is identical to a
mark"); 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”); see
also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to the complainant’s ASPREY &
GARRARD and MISS ASPREY marks); see also WestJet Air Ctr., Inc. v. W. Jets
LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the
<westjets.com> domain name is confusingly similar to the complainant’s
mark, where the complainant holds the WEST JET AIR CENTER mark); see also
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a the
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks); see also Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the 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 has
alleged that Respondent does not have rights or legitimate interests in the <pcrichards.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel presumes that Respondent does not have
rights or 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 the complainant has asserted that respondent does not have
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 the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <pcrichards.com> domain name to redirect Internet users
to a website featuring goods and services that compete with those offered by
Complainant. Respondent’s use of a
domain name that is confusingly similar to Complainant’s P.C. RICHARD & SON
mark to redirect Internet users to a competing website is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8,
2000) (finding no rights or legitimate interests in the famous MSNBC mark where
the respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website); see
also DLJ Long Term Inv.
Corp. v. BargainDomainNames.com, FA 104580
(Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain
name in connection with a bona fide offering of goods and services because
Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”).
Respondent has
not offered any proof suggesting that Respondent is commonly known by the <pcrichards.com>
domain name. Furthermore, Respondent
has neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the disputed 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); see also Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the <pcrichards.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) by registering a domain name that is confusingly
similar to Complainant’s mark and using the domain name to offer goods and
services that compete with those offered by Complainant. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from the complainant's marks suggests that
the respondent, the complainant’s competitor, registered the names primarily
for the purpose of disrupting the complainant's business); see also 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).
Moreover,
Respondent is capitalizing on the goodwill of the P.C. RICHARD & SON mark
by using the <pcrichards.com> domain name to divert Internet users
to websites featuring competing goods and services. Since the disputed domain name is confusingly similar to
Complainant’s mark, a consumer searching for Complainant could become confused
as to Complainant’s affiliation with the resulting website. Therefore, Respondent’s opportunistic use of
the disputed 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 Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
Furthermore,
Respondent’s registration of a domain name that is confusingly similar to
Complainant’s registered mark, as well as the content on Respondent’s website,
suggest that Respondent registered the disputed domain name with actual
knowledge of Complainant’s rights in the P.C. RICHARD & SON mark. Furthermore, Respondent is deemed to have
constructive knowledge of Complainant’s mark due to Complainant’s registration
with the USPTO. Thus, the Panel finds
that Respondent registered and used the <pcrichards.com> domain
name in bad faith because Respondent chose the domain name based on the
distinctive and well-known qualities of Complainant’s mark. 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) (“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 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 Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
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 <pcrichards.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
September 16, 2005
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