Redcats
Claim Number: FA0704000960604
PARTIES
Complainant is Redcats
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <womanwithincatalog.com>, registered
with Compana,
LLC.
PANEL
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 16, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 18, 2007.
On April 24, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <womanwithincatalog.com> domain name
is registered with Compana, LLC and that
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 April 26, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 16, 2007 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@womanwithincatalog.com by e-mail.
A timely Response was received and determined to be complete on May 16, 2007.
An Additional Submission from Complainant was timely received on May
21, 2007.
An Additional Submission from Respondent was timely received on May 29,
2007.
On May 23, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1. The <womanwithincatalog.com> domain name is identical or at least confusingly similar to Complainant's mark.
2. Respondent has no rights or legitimate interest
in the <womanwithincatalog.com> domain name.
3. Respondent has registered and used the <womanwithincatalog.com> domain name in bad faith.
B. Respondent
Respondent requests the Panel to deny Complainant’s request on the
grounds that the <womanwithincatalog.com> domain
name is not identical, that he has a legitimate interest in the domain name and
that Respondent did not act in bad faith.
FINDINGS
1. Complainant is Redcats
2. Complainant was established by PPR in 1998 (Exhibit K, page 2).
Prior to 1998, Complainant operated as various different companies, including
Chadwick's of Boston, Inc., Lane Bryant, Lerner, and Brylane, Inc.
3. Complainant is the owner of numerous
Complainant owns one
Complainant also filed two applications, one for WOMAN WITHIN (filed on
September 17, 2004 – class 35) and another one for WOMAN WITHIN WE'VE GOT IT! (filed on February 2, 2007 – class 35).
The marks THE WOMAN WITHIN and WW WOMAN WITHIN & Design, were first
used and registered by Complainant's predecessor companies, but have been
assigned to Complainant. The pending
applications for the other WOMAN WITHIN marks were filed by Complainant.
4. Respondent is Texas International Property Associates. Respondent uses the domain name to point
visitors to a portal with links to various vendors, including vendors of
women's clothing. These links are called
"Sponsored Links" on the site.
Via links, users are directed to more "sponsored link" web
pages related to more of Complainant's sites.
Complainant has not requested of Respondent that it be included on this
portal.
5. Complainant attempted to register the domain name to use in addition
to its registered domain name <womanwithin.com>.
Complainant investigated the owner of the domain name and discovered
that the domain name was registered by Respondent.
On January 25, 2007, Complainant sent a letter via e-mail and certified
mail to Respondent. Respondent's attorney
claimed that while it acknowledged that Complainant has certain trademark
rights, it believes that the domain name does not infringe on those rights, and
intended to keep the domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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.
1. Complainant asserts rights in the THE WOMAN
WITHIN mark through registration with the United States Patent and Trademark
Office (Reg. No. 1,617,731 issued October 16, 1990).
The Panel finds that Complainant’s timely
registration and subsequent use of the THE WOMAN WITHIN mark establish rights
in the 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.”).
2.
Respondent’s <womanwithincatalog.com> domain name eliminates
the word “the,” adds the generic, descriptive term “catalog,” which relates to
Complainant’s business, and adds the generic top-level domain (“gTLD”)
“.com.”
With
Complainant, the Panel finds that the addition of the words "the" and
"catalog" are immaterial and has no effect on the overall impression
the mark makes on consumers. The
substance of Complainant's mark is the wording "woman within," and,
as Complainant rightly says, the addition of the description of services
distinguishes the mark no more then the addition of "Hamburgers" to
"McDonalds" would distinguish a competitor's mark.
However,
the Panel cannot agree with Complainant's conclusion, in that the mark and the domain
name are identical. Rather, the Panel finds
that the elimination of the word “the,” and that the addition of both a generic
descriptive term along with a gTLD shows confusing similarity of the domain
name with the protected mark pursuant to Policy ¶ 4(a)(i). See 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); see also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb.
Forum June 22, 2005) (finding the <americaneaglestores.com> domain name
to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).
1. Once Complainant
makes a prima facie case in support
of its allegations, the burden shifts to Respondent to show that it does
possess rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also 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).
2. Complainant asserts that it has not been
able to find any evidence that shows Respondent is, or ever has been, known as
the "Woman Within." Complainant
contends that Respondent is using the disputed domain name to resolve to a
portal offering a collection of links to other vendors. Complainant further presumes that Respondent
is getting paid a fee for each Internet user it directs to a third-party
commercial website.
The Panel finds that Respondent’s use is
neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent 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 also 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).”).
3. A review of Respondent’s WHOIS
information reveals that the registrant of the <womanwithincatalog.com> domain name is
“Texas International Property Associates,” and there is no other information in
the record suggesting Respondent is commonly known by the disputed domain name.
The Panel finds that Respondent
is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb.
Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see
also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
1. Complainant contends that Respondent is using
the disputed domain name to resolve to a website featuring links to
third-party, commercial websites, including those of Complainant as well as
competitors of Complainant.
The Panel finds that such use shows a disruption
of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See 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).”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding
that the respondent registered and used the domain name <eebay.com> in
bad faith where the respondent has used the domain name to promote competing
auction sites).
2. Complainant further alleges that Respondent’s intentional attempts
to attract, for commercial gain, Internet users to its website creates a
likelihood of confusion with Complainant’s trademarks as to the source of the
goods offered under the Complainant’s mark.
The Panel finds that such use shows registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <womanwithincatalog.com> domain name
be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: June 11, 2007
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