Tuxedos By Rose v. Hector Nunez
Claim Number: FA0007000095248
The Complainant is Tuxedos By Rose, North Bergen, NJ, USA ("Complainant"). The Respondent is Hector Nunez, North Bergen, NJ, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain names at issue are "ROSETUXEDO.COM" and "TUXEDOSBYROSE.COM", registered with Network Solutions Inc ("NSI").
The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on July 18, 2000; The Forum received a hard copy of the Complaint on July 18, 2000.
On July 19, 2000, NSI confirmed by e-mail to The Forum that the domain names, "ROSETUXEDO.COM" and "TUXEDOSBYROSE.COM", are registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On July 21, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10,.2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also emailed to email@example.com and firstname.lastname@example.org.
On August 15, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The Complainant contends that the domain names in question are confusingly similar to the Complainant’s common law mark. The Complainant asserts that there is a likelihood of confusion between Complainant’s common law mark and the unauthorized registration of the domain names in question. This is demonstrated by confused customers inquiring if the Complainant’s shop was associated with the Respondent’s shop.
The Complainant asserts that Respondent has no rights or legitimate interests in the domain names and that the domain names were registered and are being used in bad faith.
The Respondent has failed to submit a response in this matter. Accordingly, all reasonable inferences of fact in the Complaint will be deemed to be true.
ICANN Uniform Rule 14(b) provides that, absent exceptional circumstances, the Panel shall draw inferences, as it deems appropriate, from the failure of a party to comply with a provision or requirement of the Uniform Rules. As a result, all reasonable inferences asserted in the Complaint will be deemed true.
The tradename and service mark, "Tuxedos By Rose" had been used by Philip Simon ("Simon") since September 1957 in connection with his tuxedo shop in New Jersey. On or about January 2, 1998, Complainant purchased the assets of Simon’s tuxedo business, including the assignment of the right, title, and interest in the tradename and service mark, "Tuxedos By Rose." Complainant is involved in the sale and rental of tuxedos under the tradename and service mark, "Tuxedos By Rose", located in North Bergen, New Jersey. Complainant has used the tradename and service mark, "Tuxedos By Rose" continuously since assignment of the mark by Simon in 1997.
The Respondent registered the domain names in question on February 11, 2000. These domain names resolve to a website containing promotional materials and advertisements for Moda 2000. Moda 2000 is a tuxedo shop owned by the Respondent and located one and a half blocks from the Complainant’s tuxedo shop. The Complainant’s business and Respondent’s business are direct competitors in the North Bergen, New Jersey area.
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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’s Rights in the Mark
Complainant’s rights to the tradename and service mark "Tuxedos By Rose" are ongoing and continuous in that it has been used for approximately 43 years in New Jersey relating to the rental and sales of tuxedos. The mark "Tuxedos By Rose" has sufficient secondary association with the Complainant and the Complainant’s services that common law rights exist. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist).
Identical and/or Confusingly Similar
The Respondent’s domain name "TUXEDOSBYROSE.COM" is identical to the Complainant’s common law mark. See Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that the domain name is identical to Complainant’s mark).
The Respondent’s domain name "ROSETUXEDO.COM" is confusingly similar to the Complainant’s common law mark. This domain name exploits the two most dominant parts of the Complainant’s mark, the words "Rose" and "Tuxedo." See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).
Rights or Legitimate Interests
There is no evidence that would indicate that Respondent has any rights or legitimate interests in the domain names in question, other than it has registered the domain names to attract the Complainant’s customers to the Respondent’s business. Respondent is not using the domain names for any bona fide offering of goods and services nor for a legitimate noncommercial or fair use. Policy ¶ 4.c.(i), (iii).
Respondent owns a business entitled, Moda 2000. Respondent is not commonly known by Complainant’s mark, TUXEDOS BY ROSE. Policy ¶ 4.c.(ii).
Based on the above, the panel determines that the Respondent has no rights or legitimate interest in the domain names, "ROSETUXEDO.COM" and "TUXEDOSBYROSE.COM".
Registration and Use in Bad Faith
Respondent has submitted no evidence to negate the Complainant’s claims that the domain names were registered and being used in bad faith.
Complainant’s business, Tuxedos By Rose, and the Respondent’s business, Moda 2000 are direct competitors in the tuxedo sales and rental market. Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor. Policy ¶ 4.b.(iii).
Respondent is using the domain names to attract Complainant’s customers and other online users to its website, which advertises its tuxedo sales and rental business. Respondent has violated Policy ¶ 4.b(iv) by registering and using the said domain names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Based on the above, the Panel determines that Respondent registered and used the domain names in bad faith.
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "ROSETUXEDO.COM" and "TUXEDOSBYROSE.COM", be transferred from the Respondent to the Complainant.
James A. Carmody, Former Judge
Dated: August 17, 2000
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