The Leather Factory, Inc. v. Virtual Sky c/o domain support
Claim Number: FA0512000611781
Complainant is The Leather Factory, Inc. (“Complainant”), represented by Stephen D. Lawrence, of Loe, Warren, Rosenfield, Kaitcer, Hibbs & Windsor, P.C., P.O. Box 100609, Fort Worth, TX 76185-0609. Respondent is Virtual Sky c/o domain support (“Respondent”), P.O. Box 20543 SMB, George Town, Grand Cayman 32084.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <adventurecrafts.com>, registered with Moniker Online Services, 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 December 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2005.
On December 22, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <adventurecrafts.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 December 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 17, 2006 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@adventurecrafts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2006, 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 <adventurecrafts.com> domain name is identical to Complainant’s ADVENTURE CRAFTS mark.
2. Respondent does not have any rights or legitimate interests in the <adventurecrafts.com> domain name.
3. Respondent registered and used the <adventurecrafts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Leather Factory, Inc. and its predecessors have operated wholesale and retail leather craft businesses since as early as 1919. Complainant has used the ADVENTURE CRAFTS mark since at least as early as February 2004 and holds trademark registration rights in the ADVENTURE CRAFTS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,026,784, issued December 13, 2005, filed March 12, 2004). As a part of its vast array of products, Complainant markets an entire line of leather craft kits under the ADVENTURE CRAFTS mark. Complainant operates thirty wholesale centers and forty-two retail stores throughout twenty-seven states and three Canadian provinces.
Respondent registered the <adventurecrafts.com> domain name on August 25, 2004 and is using the disputed domain name to redirect Internet users to a website that displays links to third party websites offering commercial products and services related to leather and craft goods and services.
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 ADVENTURE CRAFTS
mark through registration with 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.”); see also Planetary
Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the
effective date of Complainant’s trademark rights date back to the application’s
filing date).
Complainant asserts that the <adventurecrafts.com> domain name is identical to Complainant’s ADVENTURE CRAFTS mark pursuant to Policy ¶ 4(a)(i), because the domain name incorporates Complainant’s mark in its entirety and merely omits the space between the terms and adds the generic top-level domain “.com.” The Panel finds that not only is the omission of a space between the words insignificant to distinguishing the domain name from Complainant’s mark, but that the addition of the generic top-level domain does not negate the identical nature between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or
legitimate interests in the <adventurecrafts.com>
domain name. 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
name. 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.”).
Additionally, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the <adventurecrafts.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
Moreover, the Panel presumes Respondent is using the <adventurecrafts.com> domain name to garner click-through fees by redirecting Internet users to a website that displays links to third party websites offering commercial products and services related to leather and craft goods and services similar to those offered by Complainant. Respondent’s commercial use of a domain name that is identical to Complainant’s mark for commercial benefit fails to demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use or fair use of the domain name under Policy ¶ 4(c)(iii). See 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 intentionally registered the disputed domain name incorporating Complainant’s mark to divert Internet users to Respondent’s commercial website. The Panel concludes that such activity is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent is using the disputed domain name to provide
links to third parties offering commercial products and services related to
leather and craft goods and services similar to those provided by
Complainant. The Panel finds that, by
creating confusion around Complainant’s mark, Respondent is attempting to
disrupt the business of a competitor.
Respondent’s use of Complainant’s mark to advertise leather and craft
goods and services similar to those offered by Complainant 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 Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create confusion
for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and]
(iv).”).
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 <adventurecrafts.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 1, 2006
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