Hancock Fabrics, Inc. v. Forum LLC
Claim
Number: FA0508000547844
Complainant is Hancock Fabrics, Inc. (“Complainant”),
One Fashion Way, Baldwyn, MS 38824.
Respondent is Forum LLC (“Respondent”),
PO Box 2331, Roseau, Roseau 00152.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hancock-fabrics.com>, registered with Fabulous.com
Pty Ltd.
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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 30, 2005.
On
August 25, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the <hancock-fabrics.com> domain name is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. 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
August 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
19, 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@hancock-fabrics.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 27, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Houston Putnam Lowry, Chartered Arbitrator, 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:
Hancock-fabrics.com
is a website that links web users to a variety of different web sites. Hancock-fabrics.com contains various “main
categories”, such as “business”, “cars”, “entertainment”, “health”, “homes”,
“legal” and “travel”. The Complainant operates 446 retail stores in 43 states,
supplies various independent wholesale customers and operates an internet store
under its two domain names, hankcockfabrics.com and
homedecoratingaccents.com.
a). The
domain name (“Hancock-fabrics.com) is confusingly similar to the trademark in
which the Complainant has rights (Hancock Fabrics) as the domain name contains
only one additional character (“-”).
b). The
Respondent should be considered as having no rights or legitimate interests in
respect of the domain name that is the subject of the complaint due to the
following:
i.
The Respondent’s
use of the domain name or a name corresponding to the domain name is not in
connection with a bona fide offering of goods or services;
ii.
The Respondent has
not been commonly known by the domain name and has not acquired trademark or
service mark rights;
iii.
The Respondent is
not making a legitimate noncommercial or fair use of the domain name. The Respondent’s intent is to mislead,
confuse and divert consumers and tarnish the trademark at issue by leading
would-be Complainant customers to the Respondent’s website.
The
domain name has been registered and is being used in bad faith by the
Respondent. By using the domain name,
the Respondent has intentionally attempted to attract internet users to the
Respondent’s web site by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation or endorsement of
the Respondent’s site. The Respondent’s
domain name directs internet users to a web site populated with “main
categories”, including “business”, “cars”, “entertainment”, “health”, “homes”,
“legal” and “travel”. When the web user
clicks onto one of these main categories, they are provided with descriptions
of and links to various other websites.
For instance, when the web user clicks on the “cars” category, they are
provided with links to various websites associated with purchasing cars or
obtaining quotes on cars. In addition, when the web user clicks on the
“internet” category, they are provided with links to sites associated with setting
up internet service. The content of the Respondent’s web site bears no relation
to the domain name and purports to confuse internet users, resulting in unfair
competition with the Complainant and which harms the goodwill and dilutes the
trademark of the Complainant – a company which has been in existence for over
47 years and operating under the federally registered trademark since 1998.
The
domain name is also being used in bad faith by the Respondent through false
designation and origin. The domain name
does not contain the legal name of the Respondent or appear to represent any
connection to the Respondent’s offering of goods or services.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Hancock Fabrics, Inc., sells fabrics, home sewing accessories, notions,
patterns, trimmings, and crafts.
Additionally, Complainant provides consulting services related to
establishing and operating retail fabric stores. Complainant operates 446 stores in forty-three states, supplies
various independent wholesale customers, and operates an internet store under
its <hancockfabrics.com> and <homedecoratingaccents.com> domain
names.
Complainant has
been using its HANCOCK FABRICS mark for over forty years and has held a
registration for its mark with the United States Patent and Trademark Office
(“USPTO”) since 1998 (Reg. No. 2,161,840 issued on June 2, 1998).
Respondent
registered the <hancock-fabrics.com> domain name on June 24,
2002. The domain name resolves to a
website that consists of links to various 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. 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’s
registration of its HANCOCK FABRICS mark with the USPTO is sufficient to establish
Complainant’s rights in the mark. See
Innomed Techs., 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.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s
<hancock-fabrics.com> domain name is confusingly similar to
Complainant’s mark because it merely adds a hyphen and the generic top-level
domain name (gTLD) “.com.” Respondent’s
addition of a hyphen and a gTLD is insufficient to distinguish Respondent’s
domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Teleplace, Inc. v. De Oliveira,
FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names
<teleplace.org>, <tele-place.com>, and <theteleplace.com> are
confusingly similar to the complainant’s TELEPLACE trademark); see also
Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23,
2003) (“The addition of a hyphen to Complainant's mark does not create a
distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly
similar analysis.”); 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
concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has
the initial burden of proving that Respondent lacks rights and legitimate
interests in the disputed domain names. In Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001),
the panel held:
Proving that the Respondent has no rights
or legitimate interests in respect of the Domain Name requires the Complainant
to prove a negative. For the purposes of this sub paragraph, however, it is
sufficient for the Complainant to show a prima facie case and the burden of
proof is then shifted on to the shoulders of Respondent. In those
circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Thus, having found that Complainant has met its initial
burden by establishing a prima facie case, the Panel will now analyze
whether Respondent has met its burden to establish rights or legitimate
interests in the disputed domain names under Policy ¶ 4(c).
Complainant
claims Respondent is not commonly known by the disputed domain name. Respondent’s WHOIS information indicates
Respondent is known as “Forum LLC.”
Because Respondent did not submit a Response, the Panel accepts as true
Complainant’s allegations that Respondent is not commonly known by the disputed
domain name. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). The
Panel concludes Respondent is not commonly known by the disputed domain name
and therefore does not have rights or legitimate interests in it under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee 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
the respondent does not have rights in a domain name when the respondent is not
known by the mark).
Complainant
contends Respondent is using the disputed domain name by misleading Internet
users and diverting them away from Complainant’s business. Complainant argues Respondent’s website
consists merely of links, from which Respondent presumably earns a profit. Respondent’s failure to respond allows the
Panel to draw adverse inferences from Complainant’s allegations and accept them
as accurate descriptions of Respondent’s behavior. See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate
for the panel to draw adverse inferences from the respondent’s failure to reply
to the complaint). Thus, Respondent’s
use of the disputed domain name is not in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate or
noncommercial use under Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat.
Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy).
Consequently,
the Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The disputed
domain name resolves to a website from which Respondent earns a profit by
confusing Internet users and diverting them to Respondent’s website. Capitalizing on the confusing similarity
between Respondent’s domain name and Complainant’s mark creates a likelihood of
confusion and is evidence of bad faith use and registration under Policy ¶
4(b)(iv). See Bank of Am. Corp. v.
Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating
that “[s]ince the disputed domain names contain entire versions of
Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”).
Additionally,
Complainant’s registration of its mark with the USPTO confers constructive
knowledge on Respondent of Complainant’s rights in the mark. The Panel finds Respondent had constructive
knowledge of Complainant’s rights at the time of registration. See 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.”). The Panel
concludes Respondent’s constructive knowledge of Complainant’s rights in the
mark is evidence that Respondent used and registered the disputed domain name
in bad faith under 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).
Therefore, the
Panel concludes Complainant satisfied 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 <hancock-fabrics.com> domain name be TRANSFERRED
from Respondent to Complainant.
Houston Putnam Lowry, Charted Arbitrator,
Panelist
Dated: October 11, 2005
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