Brown Shoe Company, Inc. v Compana LLC
Claim Number: FA0101000096562
The Complainant is Brown Shoe Company, Inc., St. Louis, MO, USA ("Complainant") represented by David A. Roodman, of Bryan Cave LLP. The Respondent is Jeffrey Baron Compana LLC, Carrollton, TX, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "naturalizer.com", registered with Secura.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as a panelists in this proceeding.
The Honorable John J. Upchurch, Sandra Jo Franklin, and The Honorable Charles K. McCotter, Jr. serve as as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 30, 2001; the Forum received a hard copy of the Complaint on January 26, 2001.
On February 13, 2001, Secura confirmed by e-mail to the Forum that the domain name "naturalizer.com" is registered with Secura and that the Respondent is the current registrant of the name. Secura has verified that Respondent is bound by the Secura registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 6, 2001 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 Respondentís registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely response was received and determined to be complete on March 6, 2001.
On March 16, 2001, pursuant to Complainantís request to have the dispute decided by a Three Member Panel, the Forum appointed The Honorable John J. Upchurch, Sandra Jo Franklin, and The Honorable Charles K. McCotter, Jr. to serve as as Panelists.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant contends as follows:
1. The domain name is identical to the Complainantís mark.
2. They have rights in the NATURALIZER mark.
3. That Respondent has no rights or legitimate interests in the domain name.
4. That Respondent is using Complainantís famous trademark to lure consumers onto Respondentís web site.
5. Respondentís use of the domain name is not legitimate.
6. The Respondent is not known by the "naturalizer" name.
7. Respondent intends to use Complainantís marks to attract the public to the web site without permission from Complainant.
8. Respondent intends to use Complainantís marks to attract the public to the web site without permission from Complainant.
Respondent claims as follows:
That the prayer for transfer or, in the alternative, for cancellation of the domain name , be and the same is hereby denied.
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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The domain name is identical to the Complainantís mark. See Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000) (finding that the domain name <sydneyoperahouse.net> is essentially identical to the complainantís famous trademark SYDNEY OPERA HOUSE).
Rights or Legitimate Interests
Complainant clearly has rights in the NATURALIZER mark. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that Policy 4(a)(i) does not require Complainant to demonstrate Ďexclusive rights,í but only that complainant has a bona fide basis for making the complaint in the first place). In fact, Complainant holds a number of registrations and marks for the mark "Naturalizer." As to the Respondent, 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 a right or legitimate interest does exist. ). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) The Respondent has asserted that they are not the same party that controlled the offending web site, but acquired the domain name on the open market after the Complainant investigated the offending web site associated with the previous owners of the domain name. Complainant had the opportunity to file a Response to Respondentís representations, but failed to do so. Accordingly, the Panel has not been presented with a full factual record with respect to this element.
Registration and Use in Bad Faith
Respondent alleges that it is not the same party that was using the domain in bad faith. See White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the partiesí respective claims to the contested domain name). Here, the Complainant has failed to demonstrate Respondent registered or used the domain name in bad faith.
The Panel finds that the request for relief should be denied and that the current domain name registration should not be transferred or cancelled.
Honorable John J. Upchurch, Panelist
Sandra J. Franklin, Esq., Panelist
Honorable Charles K. McCotter, Jr., Panelist
Dated: April 5, 2001
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