Lee Michaels Jewelers v. Digi Real Estate Foundation
Claim Number: FA0611000848785
Complainant is Lee Michaels Jewelers (“Complainant”), represented by Lance
A. Foster, 8555 United Plaza Blvd., 5th Floor, Baton Rouge, LA 70809. Respondent is Digi Real Estate Foundation (“Respondent”), P.O. Box 7-5324,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <leemichaelsfinejewelry.com>, registered with WHITE SOCKS DOMAINS, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 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@leemichaelsfinejewelry.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <leemichaelsfinejewelry.com> domain name is confusingly similar to Complainant’s LEE MICHAELS mark.
2. Respondent does not have any rights or legitimate interests in the <leemichaelsfinejewelry.com> domain name.
3. Respondent registered and used the <leemichaelsfinejewelry.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lee Michaels Jewelers, Inc.,
has been using the LEE MICHAELS mark in connection with retail jewelry services
since 1978. Complainant also owns a service
mark registration with the United States Patent and Trademark Office (“USPTO”)
for the LEE MICHAELS mark (Registration No. 3,023,446 issued
Respondent registered the <leemichaelsfinejewelry.com> domain name on
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. 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.
The Complainant’s registration of its LEE MICHAELS mark is
sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). America Online, Inc. v. Thomas P. Culver
Enters., D2001-0564 (WIPO
Respondent’s <leemichaelsfinejewelry.com> domain name incorporates Complainant’s LEE MICHAELS mark in its entirety and adds the descriptive terms “fine jewelry.” The addition of a descriptive term to Complainant’s registered mark renders the disputed domain name confusingly similar to the mark, and the use of the generic top-level domain “.com” is without significance to this analysis. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word … nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <leemichaelsfinejewelry.com>
domain name. Complainant must first make a prima facie case in support
of its allegations, and then the burden shifts to Respondent to show it does
have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb.
Forum Aug. 18, 2006) (holding that the complainant must first make a prima
facie case that the respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the
respondent to show that it does have rights or legitimate interests in a domain
name). Respondent’s failure to
answer the Complaint raises a presumption that Respondent has no rights or
legitimate interests in the disputed domain name. Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <leemichaelsfinejewelry.com>
domain name. Complainant has alleged
that Respondent does not operate retail jewelry services in connection with the
<leemichaelsfinejewelry.com>
domain name, and that the WHOIS information identifies Respondent as “Digi Real
Estate Foundation.” Thus, Respondent has
not established rights or legitimate interests in the disputed domain name
under 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum
Respondent is using the <leemichaelsfinejewelry.com>
domain name to display hyperlinks to various third-party websites, some of
which are related to jewelry and others that are not. Such use does not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i). Furthermore, Respondent’s use of the LEE
MICHAELS mark in the domain name is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain
name to host a series of hyperlinks and a banner advertisement was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the
registrant presumably receives compensation for each misdirected Internet
user).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <leemichaelsfinejewelry.com>
domain name, which is confusingly similar to Complainant’s LEE MICHAELS mark,
to redirect Internet users to Respondent’s website that features several links
to goods and services that compete with Complainant’s business. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration pursuant to Policy ¶ 4(b)(iii). 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 infers that Respondent receives click-through fees for diverting Internet users to these sites. Because Respondent’s domain name is confusingly similar to Complainant’s LEE MICHAELS mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <leemichaelsfinejewelry.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
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 <leemichaelsfinejewelry.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated:
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