Miss Selfridge Retail Limited v. Miss Selfridge Retail Limited c/o Domain Administrator
Claim Number: FA0512000612497
Complainant is Miss Selfridge Retail Limited (“Complainant”), represented by Adam Taylor of Adlex Solicitors, 76A Belsize Lane, London NW3 5BJ, United Kingdom. Respondent is Miss Selfridge Retail Limited c/o Domain Administrator (“Respondent”), Information Systems, Trent House, Burton Business Park, Leeds, West Yorkshire, II LS9 7DN, GB.
The domain name at issue is <missselfridge.com>, registered with Nameview, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2005.
On January 3, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <missselfridge.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 January 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 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@missselfridge.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 31, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <missselfridge.com> domain name is identical to Complainant’s MISS SELFRIDGE mark.
2. Respondent does not have any rights or legitimate interests in the <missselfridge.com> domain name.
3. Respondent registered and used the <missselfridge.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Miss Selfridge Retail Limited, is part of a
group of companies known as Arcadia Group Limited, which is one of the largest
clothing retailers in the United Kingdom.
Complainant is the proprietor of the MISS SELFRIDGE clothing brand which
is targeted at young women.
Complainant owns multiple registrations with the United
Kingdom Patent Office for the MISS SELFRIDGE mark (Reg. No. 945,589 issued July
15, 1969 and Reg. No. 2,002,266 issued November 18, 1994). Complainant has used the mark since
approximately 1966.
Complainant operates a website at the <missselfridge.co.uk> domain name. From 2000 to 2005, Complainant’s turnover from the MISS SELFRIDGE mark was approximately £577 million ($997 million), of which about £1.9 million ($3.4 million) was spent to market the MISS SELFRIDGE brand.
Respondent registered the <missselfridge.com> domain name on May 24, 2002. Respondent is using the domain name to operate a directory website that displays numerous links to clothing retailers.
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 submitted evidence of its registration of the MISS SELFRIDGE mark with the United Kingdom Patent Office. The Panel concludes that this is sufficient to satisfy the requirement of rights under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); cf. 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.”).
The <missselfridge.com> domain name incorporates Complainant’s MISS SELFRIDGE mark in its entirety, adding only the generic top-level domain (“gTLD”) “.com.” The use of a gTLD is irrelevant to a similarity analysis, and the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that there is no evidence that Respondent is commonly known by the <missselfridge.com> domain name, and Respondent has not authorized or licensed Respondent to use the MISS SELFRIDGE mark. Although the WHOIS information identifies Respondent as “MISSSELFRIDGE.COM c/o Whois Identity Shield,” Respondent has not come forward with any affirmative evidence that it is commonly known by the disputed domain name. Thus, the Panel determines that Complainant has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) (“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant’s MB FINANCIAL mark.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using the <missselfridge.com>
domain name to operate a directory website that offers links to numerous
clothing retailers, and the Panel infers that Respondent receives referral fees
from third-party businesses for linking Internet users to their websites via
the disputed domain name. Respondent’s
use of Complainant’s mark to display links to Complainant’s competitors for the
purpose of profiting from referral fees is not in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced
Membership Servs., Inc., FA 180703 (Nat.
Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”);
see also U.S. Franchise Sys., Inc. v. Howell, FA 152457
(Nat. Arb. Forum May 6, 2003) (holding
that the respondent’s use of the complainant’s mark and the goodwill
surrounding that mark as a means of attracting Internet users to an unrelated
business was not a bona fide offering of goods or services); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of
the complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
By using Complainant’s MISS SELFRIDGE mark to operate a directory website through which Respondent likely derives profit, Respondent is attempting to benefit from the goodwill associated with Complainant’s mark. Internet users searching for Complainant’s products and services under the MISS SELFRIDGE mark may become confused upon reaching Respondent’s website with links to similar products and services. Respondent’s registration and use of an identical domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); 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 Complainant has 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 <missselfridge.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 14, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page