Smith and Hawken, Ltd. v. Bladimir Boyiko
Claim Number: FA0607000755733
Complainant is Smith and Hawken, Ltd. (“Complainant”), represented by Laura M. Franco, of Manatt, Phelps & Phillips LLP, 1001 Page Mill Road, Building 2, Palo Alto, CA 94304. Respondent is Bladimir Boyiko (“Respondent”), Leninskii Pr. 101, Moscow 110210 RU.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <smithandhawkin.com>, registered with Enom, 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 July 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2006.
On July 21, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <smithandhawkin.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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@smithandhawkin.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 23, 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 <smithandhawkin.com> domain name is confusingly similar to Complainant’s SMITH & HAWKEN mark.
2. Respondent does not have any rights or legitimate interests in the <smithandhawkin.com> domain name.
3. Respondent registered and used the <smithandhawkin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Smith and Hawken, Ltd., is one of the most popular home and garden retail businesses in the United States. Complainant purveys a wide range of premium, unique and high quality, garden-inspired products including tools, furniture, clothing, books, décor, gifts and plants. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SMITH & HAWKEN mark (Reg. No. 1,384,035 issued February 25, 1986).
Respondent registered the <smithandhawkin.com> domain name on March 24, 2002. Respondent has not made any use of the <smithandhawkin.com> domain name since registering it over four years ago.
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 established with extrinsic evidence in this
proceeding that it has rights in the SMITH & HAWKEN mark. The Panel accepts Complainant’s trademark
registration as evidence that it has rights in the SMITH & HAWKEN mark
pursuant to Policy ¶ 4(a)(i). 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.”).
The Panel finds that Respondent’s <smithandhawkin.com> domain name is confusingly similar to
Complainant’s SMITH & HAWKEN mark because it replaces the ampersand with
the term “and” and replaces the letter “e” in “hawken” with the letter “i,”
which does not significantly distinguish the domain name from the mark pursuant
to Policy ¶ 4(a)(i). See Wright
& Lato, Inc. v. Epstein,
D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com>
domain name is identical to the complainant’s WRIGHT & LATO mark, because
the ampersand symbol (&) is not reproducible in a URL); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000)
(noting that PG&E’s home web page is found at <pge.com> because the
ampersand symbol is not reproducible in a domain name); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum
May 29, 2001) (finding the <belken.com> domain name confusingly similar
to the complainant's BELKIN mark because the name merely replaced the letter
“i” in the complainant's mark with the letter “e”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Under Policy ¶ 4(a)(ii), the burden 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 Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the 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”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”).
Respondent has not made any use of the <smithandhawkin.com> domain name since registering it March 24, 2002. Internet users who seek out the resultant website are directed to a website that does not display any information, indicating that the domain name is not associated with any websites. The Panel finds that Respondent registered a domain name incorporating Complainant’s mark but has not posted any content at the resultant website for over four years. Such nonuse 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 AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise).
Moreover, Respondent has registered the domain name under
the name “Bladimir Boyiko” and there is no evidence in the record suggesting
that Respondent is commonly known by the <smithandhawkin.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <smithandhawkin.com> domain name pursuant to 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 Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that the respondent was not commonly known by the domain name
<greatsouthernwood.com> where the respondent linked the domain name to
<bestoftheweb.com>).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith. Respondent has not posted any content at the
website associated with the <smithandhawkin.com>
domain name. Respondent has held
the respective registration for over four years. With no content associated at the website and no evidence of
Respondent’s preparations to use the disputed domain name, the Panel concludes
that Respondent registered and used the <smithandhawkin.com>
domain name in bad faith, pursuant to Policy ¶ 4(a)(iii). See
Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the
<aolfact.com> domain name for over six months is evidence that Respondent
lacks rights and legitimate interests in the domain name.”).
The Panel finds 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 <smithandhawkin.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 6, 2006
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