Retail Brand Alliance, Inc. v. Marty
Claim Number: FA0706000997450
Complainant is Retail Brand
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <capezio.org>, registered with eNom, 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 May 31, 2007; the National Arbitration Forum received a hard copy of the Complaint June 4, 2007.
On June 1, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <capezio.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, 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 June 7, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 27, 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@capezio.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 3, 2007, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <capezio.org>, is identical to Complainant’s CAPEZIO mark.
2. Respondent has no rights to or legitimate interests in the <capezio.org> domain name.
3. Respondent registered and used the <capezio.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Retail Brand Alliance, Inc., manufactures and sells shoes, clothing, and other apparel worldwide. Complainant has used the CAPEZIO mark in connection with its goods, specifically dancewear and related accessories, since before 1950. Complainant holds several trademark registrations for the CAPEZIO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 546,042 issued July 31, 1951).
Respondent registered the <capezio.org> domain name January 24, 2005. Respondent’s domain name resolves to a commercial website offering both Complainant’s goods and related goods of Complainant’s direct competitors. While Respondent is authorized to sell Complainant’s goods, Complainant has not granted Respondent the right to use the CAPEZIO mark in a domain name.
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 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’s registration of the CAPEZIO mark with the
USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See
The disputed domain name <capezio.org> is identical to Complainant’s CAPEZO mark, as it consists of the exact mark and simply adds the generic top-level domain (“gTLD”) “.org.” As a top-level domain is a required element of all domain names, the addition of the gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the <capezio.org> domain name is identical to Complainant’s CAPEZIO mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).
The Panel thus finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleges that Respondent has no such rights.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <capezio.org> domain name. Once Complainant establishes a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant made a prima facie showing under the Policy. See 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”); 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).
Respondent’s failure to answer the Complaint raises the presumption that Respondent lacks rights or legitimate interests in the <capezio.org> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Nevertheless, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
While Respondent is authorized by Complainant to sell
Complainant’s goods, Complainant has not granted Respondent the right to use
the CAPEZIO mark in a domain name.
Moreover, Respondent’s WHOIS information does not indicate, and there is
nothing further in the record to suggest, that Respondent is commonly known by
the <capezio.org> domain
name. Thus, Respondent lacks rights or
legitimate interests under Policy ¶ 4(c)(ii). See
Ullfrotté AB v. Bollnas Imp., D2000-1176 (WIPO Oct. 23, 2000) (finding that
although the respondent legitimately sells goods originating from the
complainant, this does not give him the right to register and the use the mark
as a domain name without the consent of the holder of the trademark); see
also Allen-Edmonds Shoe Corp.
v. Takin’ Care of Bus., D2002-0799
(WIPO Oct. 10, 2002) (holding that, “without a specific agreement between the
parties, the reseller does not have the right to use the licensor’s trademark
as a domain name”); see also Hartford
Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that the respondent has no rights or legitimate interests in
domain names because it is not commonly known by the complainant’s marks and
the respondent has not used the domain names in connection with a bona fide
offering of goods and services or for a legitimate noncommercial or fair use).
Respondent’s <capezio.org> domain name resolves to a website offering not only Complainant’s goods, but also related goods of those who would seek to directly compete with Complainant. As this is a commercial website, the Panel presumes that Respondent profits when Internet users purchase products through the website. Respondent’s use of the disputed domain name, identical to Complainant’s CAPEZIO mark, to sell the goods of Complainant’s competitors, does not qualify as 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
The Panel thus finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and using a domain name that contains in its entirety Complainant’s protected mark. The website that resolves from Respondent’s <capezio.org> domain name offers Complainant’s products as well as similar products of Complainant’s direct competitors. This constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Furthermore, the Panel presumes that Respondent benefits commercially when Internet users purchase products from the website at the <capezio.org> domain name. Respondent is thus capitalizing on the likelihood that users will confuse the source of the disputed domain name as being affiliated with Complainant and its CAPEZIO mark. This is further evidence that Respondent registered and is using the <capezio.org> domain name in bad faith 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 Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
The Panel thus 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 <capezio.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 16, 2007.
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