WB Candleco, Inc. v. Domain Administrator c/o Bathco, Inc.
Claim Number: FA0607000747946
Complainant is WB Candelco, Inc. (“Complainant”), represented by Melise R. Blakeslee, of McDermott Will & Emery LLP, 600 13th Street, N.W., Washington, DC 20005. Respondent is Domain Administrator c/o Bathco, Inc. (“Respondent”), 1105 N Market St., Wilmington, DE 19801.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <whitebarn.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2006.
On July 18, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <whitebarn.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 July 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 16, 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@whitebarn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2006, 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 <whitebarn.com> domain name is confusingly similar to Complainant’s WHITE BARN CANDLE COMPANY mark.
2. Respondent does not have any rights or legitimate interests in the <whitebarn.com> domain name.
3. Respondent registered and used the <whitebarn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WB Candleco, Inc., has continuously and extensively used the WHITE BARN mark in connection with home décor products since 1997. Complainant owns more than ninety retail stores in the United States, where it sells candles, home fragrances and accessories under the WHITE BARN mark. Complainant also sells its products through Bath & Body Works, an affiliate of Complainant. Complainant and Bath & Body Works, Inc. are wholly-owned subsidiaries of Limited Brands, Inc. Customers can also buy Complainant’s products at the <whitebarncandle.com> and <bathandbodyworks.com> domain names.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks: WHITE BARN CANDLE COMPANY (Reg. No. 2,251,925 issued June 8, 1999; Reg. No. 2,397,134 issued October 24, 2000), THE WHITE BARN CANDLE CO. (Reg. No. 2,428,249 issued February 13, 2001; Reg. No. 2,591,711 issued July 9, 2002), THE WHITE BARN CANDLE COMPANY (Reg. No. 2,442,258 issued April 10, 2001). Complainant has disclaimed the right to use “CANDLE CO.” and “CANDLE COMPANY” apart from the WHITE BARN portion of the mark.
Respondent registered the <whitebarn.com> domain name on April 18, 2004. Before the original Complaint was filed, Respondent was maintaining a commercial search engine web page at the disputed domain name. This page contained links such as “White barn,” “White Barn Candle Co.” and “Bath and Body Works,” which resolved to third-party websites unrelated to Complainant and selling competing home décor and candle products. Since Complainant filed this Complaint, the <whitebarn.com> domain name now resolves to a blank page.
According to Complainant, Respondent changed its contact information after receiving notice of the present Complaint. At the time Complainant filed this Complaint, Respondent’s contact information listed “WHITEBARN.COM c/o WhoIs Identity Shield” as the registrant of the <whitebarn.com> domain name. Before the registrar could lock the domain name, Respondent apparently changed its information to list “Domain Administrator c/o Bathco, Inc.” as the registrant of the <whitebarn.com> domain name. Complainant claims that Bathco, Inc. is the name of another wholly-owned subsidiary of Limited Brands, Inc. and affiliate of Complainant, and that Bathco, Inc. does not actually have possession of the disputed domain name registration. Upon Complainant’s information and belief, the original Respondent in this case is still the registrant of the disputed domain name.
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 registered several trademarks with the USPTO containing the WHITE BARN mark, including WHITE BARN CANDLE COMPANY and WHITE BARN CANDLE CO. Complainant also disclaimed the exclusive right to use the terms “CANDLE COMPANY” and “CANDLE CO.” apart from the term “WHITE BARN,” thereby making “WHITE BARN” the predominant portion of the mark. The Panel finds that these trademark registrations sufficiently demonstrate Complainant’s rights in the WHITE BARN mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant has satisfied this element of the Policy.
Complainant alleges that Respondent lacks rights or
legitimate interests in the <whitebarn.com> domain name. Complainant has the initial burden of proof
in establishing that Respondent lacks rights or legitimate interests in the
domain names. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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 has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Document Tech., Inc. v. Int’l
Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <whitebarn.com>
domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”); However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
There is no evidence in the record that Respondent is commonly known by the <whitebarn.com> domain name. The WHOIS information changed after Complainant initiated this proceeding but this still does not provide any indication that Respondent is commonly known by the disputed domain name. Therefore, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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"); 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, before Complainant filed the Complaint,
Respondent’s <whitebarn.com> domain name resolved to a commercial
search engine with links to Complainant’s competitors in the home décor and
candle industries. In Hale Prods.,
Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the
panel found that the respondent had no rights or legitimate interests in the
<jawsoflife.com> domain name because the respondent was diverting
Internet users to the website of one of the complainant’s competitors. Respondent is also
diverting Internet users seeking Complainant’s home décor and candle products
to the websites of Complainant’s competitors.
Respondent likely received click-through fees for diverting consumers to
these websites. Therefore, Respondent
has not used the disputed domain name 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
Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005)
(finding that the respondent’s use of the <expediate.com> domain name to
redirect Internet users to a website featuring links to travel services that
competed with the complainant was not 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)).
Complainant has satisfied this element of the Policy.
Before this Complaint was filed, Respondent was using the
<whitebarn.com> domain name to operate a search engine holding
page with links to a variety of third-party websites unrelated to Complainant
but offering competing home décor and candle products. In Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000), the panel found that the respondent’s diversion of Internet users who
were seeking the complainant’s website to its own website for commercial gain
created “a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, endorsement, or affiliation of its website” and,
therefore, provided evidence of bad faith registration and use in violation of
Policy ¶ 4(b)(iv). Because Respondent
is also diverting Internet users seeking Complainant’s products to other
websites for commercial gain, presumably by earning click-through fees,
Respondent has registered and used the disputed domain name in bad faith
according to Policy ¶ 4(b)(iv). See
Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum
May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website offering competing computer products and
services).
Complainant has satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <whitebarn.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 5, 2006
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