Taylor Corporation v. Jucco Holdings
Claim Number: FA0607000765722
Complainant is Taylor Corporation (“Complainant”), represented by Jennifer J. Olson of Gray, Plant, Mooty, Mooty & Bennett, P.A., 500 IDS Center, 80 South Eighth Street, Minneapolis, MN, 55402. Respondent is Jucco Holdings (“Respondent”), 655 Flower St, #337, Los Angeles, CA, 90017.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <anneswedding.com> and <annwedding.com>, registered with Nameking.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 28, 2006; the National Arbitration Forum received a hard copy of the Complaint July 31, 2006.
On August 1, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <anneswedding.com> and <annwedding.com> domain names are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. verified that Respondent is bound by the Nameking.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 22, 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@anneswedding.com and postmaster@annwedding.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 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <anneswedding.com> and <annwedding.com>, are confusingly similar to Complainant’s ANN’S WEDDING STATIONERY mark.
2. Respondent has no rights to or legitimate interests in the <anneswedding.com> and <annwedding.com> domain names.
3. Respondent registered and used the <anneswedding.com> and <annwedding.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Taylor Corporation, has been engaged in the sale of wedding invitations and related goods since at least as early as 1973. Complainant holds federal trademark registrations for its ANN’S WEDDING STATIONERY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,911,304 issued August 15, 1995, and Reg. No. 2,536,363 issued February 5, 2002). In connection with its business, Complainant operates a website located at the <annswedding.com> domain name, through which Complainant promotes and sells its goods and services under the ANN’S WEDDING STATIONERY mark.
Respondent, Jucco Holdings, registered the <anneswedding.com> domain name February 11, 2004, and the <annwedding.com> domain name March 3, 2003. Respondent’s disputed domain names resolve to websites offering links to third-party websites that provide wedding goods and services in competition with Complainant’s business.
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 will draw such inferences as the Panel 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 Complainant to 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 of trademark registrations for the ANN’S WEDDING STATIONERY mark with the USPTO that predate Respondent’s registration of the disputed domain names. As a result, the Panel finds that Complainant’s trademark registrations with the USPTO establish Complainant’s rights in the ANN’S WEDDING STATIONERY mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Furthermore, the Panel finds that the disputed domain names that Respondent registered, <anneswedding.com> and <annwedding.com>, are confusingly similar to Complainant’s ANN’S WEDDING STATIONERY mark pursuant to Policy ¶ 4(a)(i). The disputed domain names consist of slight alterations of Complainant’s registered mark, with the addition of the generic top-level domain (“gTLD”) “.com.” Specifically, the <anneswedding.com> domain name is comprised of Complainant’s registered mark with the addition of the letter “e” and the gTLD “.com,” and the omission of an apostrophe and the term “stationery.” Similarly, the <annwedding.com> domain name features the dominant portion of Complainant’s mark with the omission of the letter “s” and the addition of the gTLD “.com.” Prior panels have held that similar alterations to a mark do not avoid the creation of confusing similarity under Policy ¶ 4(a)(i) between the resulting domain names and the mark. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel found that the addition of the letter “c” to the complainant’s SAFLOK mark did not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i). Moreover, in Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found that a domain name that differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. Therefore, the Panel in the present case finds that the alterations to Complainant’s registered mark in the <anneswedding.com> and <annwedding.com> domain names do not negate the confusing similarity created between the domain names and the mark under Policy ¶ 4(a)(i). See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has legal and common law rights to the mark used within the disputed domain names. Pursuant to Policy ¶ 4(a)(ii), Complainant initially must establish that Respondent lacks rights and legitimate interests in connection with the disputed domain names. However, once Complainant establishes a prima facie case, the burden shifts, and Respondent must demonstrate that it possesses rights or legitimate interests in the disputed domain names in accord with Policy ¶ 4(a)(ii). See 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 subparagraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted onto 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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”).
This Panel finds that Complainant sufficiently demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in connection with the <anneswedding.com> and <annwedding.com> domain names under Policy ¶ 4(c). The disputed domain names resolve to websites featuring links to third-party websites that directly compete with Complainant’s business. Therefore, consistent with the holdings of previous panels, the Panel finds that Respondent’s use of the disputed domain names does not demonstrate either 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 Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did 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)).
Furthermore, the evidence on record does not suggest that Respondent is commonly known by the <anneswedding.com> or <annwedding.com> domain names pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information for the disputed domain names suggests that Respondent conducts business as “Jucco Holdings.” Further, the record contains no evidence to suggest that Respondent is affiliated with or licensed by Complainant any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); 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”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent registered and used the disputed domain names in bad faith. The Panel finds that Respondent used the disputed domain names to operate websites offering links to third-party websites in competition with Complainant. In light of the confusing similarity between the <anneswedding.com> and <annwedding.com> domain names and Complainant’s ANN’S WEDDING STATIONERY mark, as well as the content of Respondent’s websites, the Panel finds that Respondent registered and used the disputed domain names for purposes of diverting Internet users to Respondent’s websites for commercial gain. Therefore, the Panel finds that Respondent registered and used the <anneswedding.com> and <annwedding.com> domain names in bad faith in accord with Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that 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 <anneswedding.com> and <annwedding.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 12, 2006.
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