Amen Wardy Home, Inc. v. Amen Wardy Home
Claim Number: FA0510000583006
Complainant is Amen Wardy Home, Inc. (“Complainant”), represented by Miriam Trudell, of Sheridan Ross P.C., 1560 Broadway, Suite 1200, Denver, CO 80202. Respondent is Amen Wardy Home (“Respondent”), 5155 S. Valley View Las Vegas, NV 89118.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <amenwardy.com> and <amenwardyhome.com>, registered with Network Solutions, 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 October 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 24, 2005.
On October 25, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <amenwardy.com> and <amenwardyhome.com> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 October 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@amenwardy.com and postmaster@amenwardyhome.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amenwardy.com> and <amenwardyhome.com> domain names are identical and confusingly similar to Complainant’s AMEN WARDY mark.
2. Respondent does not have any rights or legitimate interests in the <amenwardy.com> and <amenwardyhome.com> domain names.
3. Respondent registered and used the <amenwardy.com> and <amenwardyhome.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Amen Wardy Home, Inc. and its predecessors in interest have been using the AMEN WARDY mark in connection with retail department store services, leather goods and clothing since at least as early as January 1957. Complainant and its predecessors in interest have also used its AMEN WARDY HOME mark in connection with retail department store services and home furniture products since 1992.
Complainant has registered its AMEN WARDY (“USPTO”)(Reg. No. 1,398,079 issued June 17, 1986) and its AMEN WARDY HOME (Reg. No. 2,988,965 issued August 30, 2005) mark with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <amenwardy.com> and <amenwardyhome.com> domain names on February 15, 1997. Respondent’s domain names resolve to a website that features 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 AMEN WARDY mark through registration with the USPTO. See 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.”); see also 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.”).
Additionally, the Panel finds that Respondent’s <amenwardy.com> domain name is identical to Complainant’s AMEN WARDY mark pursuant to Policy ¶ 4(a)(i), as the domain names fully incorporates Complainant’s mark and merely adds the generic top-level domain “.com.” Furthermore Respondent’s <amenwardyhome.com> is confusingly similar to Complainant’s AMEN WARDY mark because the domain name incorporates Complainant’s mark in its entirety and adds the descriptive word “home,” which has a direct relationship to Complainant’s business. Thus, the Panel finds that such changes are not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <amenwardy.com> and <amenwardyhome.com> domain names. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights or legitimate interests in the domain name); 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 rights or legitimate interests do exist); see also 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).
Moreover, Respondent is not commonly known by the <amenwardy.com> and <amenwardyhome.com> domain
names. Although the WHOIS information
lists Respondent’s name as “Amen Ward,” the Panel concludes that since
Respondent did not respond to the Complaint to rebut the allegations made by
Complainant, Respondent has failed to established rights or legitimate
interests in the disputed 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
interest where respondent was not commonly known by the mark and never applied
for a license or permission from 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 respondent is not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
the respondent has no rights or legitimate interests in domain names because it
is not commonly known by the complainant’s marks and the respondent has not
used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or
fair use); see also Yoga Works, Inc. v.
Arpita, FA 155461 (Nat. Arb. Forum June
17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”).
Furthermore, Respondent is using the <amenwardy.com> and <amenwardyhome.com>
domain names to operate a commercial website that features goods that directly
compete with those offered by Complainant.
The Panel finds that Respondent’s use of domain names that are identical
and confusingly similar to Complainant’s marks to divert Internet users to its
website for Respondent’s own commercial gain does not constitute 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 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent has registered and used the <amenwardy.com> and <amenwardyhome.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the domain names, which contain identical and confusingly similar versions of Complainant's AMEN WARDY mark, to sell products and services in direct competition with Complainant. 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 respondent acted in bad faith by attracting Internet users to a website that competes with complainant's business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from complainant's marks suggests that respondent, complainant's competitor, registered the names primarily for the purpose of disrupting complainant's business).
Moreover, Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv), as Respondent is using the <amenwardy.com> and <amenwardyhome.com> domain names to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant's mark to sell the complainant's products); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
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 <amenwardy.com> and <amenwardyhome.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 5, 2005
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