Pacific Leasehold Company, LLC v. Kathy Jones
Claim Number: FA1501001601736
Complainant is Pacific Leasehold Company, LLC (“Complainant”), represented by R. Michael West, California, USA. Respondent is Kathy Jones (“Respondent”), represented by Ryan P. Siney, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fireandicediamondgallery.com> (the “Disputed Domain Name”), registered with Melbourne IT Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2015; the Forum received payment on January 24, 2015.
On January 29, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <fireandicediamondgallery.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fireandicediamondgallery.com. Also on January 30, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 19, 2015.
On February 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states, and provides evidence to support, that it is the owner of the trademark FIRE & ICE, U.S. Reg. No. 2,456,648 (first used in commerce November 7, 1997; registered June 5, 2001) for use in connection with “Gemstones Namely, Diamonds” (the “FIRE & ICE Trademark”); that it promotes and advertises its goods and services online via websites including http://www.fireandicediamonds.com; that the Disputed Domain Name was registered on January 18, 2008; and that the Disputed Domain Name is used in connection with a website “to identify, promote, and offer for sale… diamonds and jewelry incorporating diamonds.”
Complainant further states, and provides evidence to support, that Complainant sent a demand letter to Respondent on September 24, 2013, regarding the Disputed Domain Name; and that counsel for Respondent replied in a letter dated September 30, 2013, that Respondent “is willing to agree to never conduct wholesale or retail jewelry diamond, or related sales via the internet using this name.”
Complainant alleges that the Disputed Domain Name is confusingly similar to the FIRE & ICE Trademark because “the substitution of the conjunction ‘AND’ for the ampersand symbol in the registered Trademark is a distinction without a difference” and “[t]he addition of the merely descriptive words ‘DIAMOND’ and ‘GALLERY’, to the Domain Name is dispute, in light of the goods in question and how they are presented in gallery format on the parties’ respective Web Sites, lacks distinctive value.”
Complainant alleges that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent “falsely leads members of the public to believe that Registrant/Respondent is somehow affiliated with or sponsored by Complainant, or is a Licensee of Complainant, authorized to sell genuine FIRE & ICE® diamonds. Moreover, such conduct on the part of Registrant/Respondent Kathy Jones is unauthorized, and in fact has been objected to by Complainant in writing. Notwithstanding such objections, Registrant/Respondent Kathy Jones has refused repeatedly to comply with Complainant’s requests to cease and desist her infringing activity.”
Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent’s registration of the disputed Domain Name FIREANDICEDIAMONDGALLERY.COM was made in bad faith because the registration and the current use of the Domain Name are used to attract consumers who are looking for genuine FIRE & ICE diamonds, and then to deceive them into making direct contact with the Registrant/Respondent, all under the mistaken belief that they are dealing with an authorized licensee of Complainant. Registrant/Respondent is effectively attempting to attract, for commercial gain, Internet users to her Web Site by creating a likelihood of consumer confusion respecting the FIRE & ICE Trademark, as to the source, sponsorship, affiliation and endorsement of her Web Site and the goods offered for sale there.”
B. Respondent
Respondent stated that it “does not oppose the transfer of the domain FIREANDICEDIAMONDGALLERY.COM to Complainant as requested by the Complaint. Respondent’s non-opposition to this transfer is made for the purpose of resolving a dispute between the parties, pursuant to the Settlement Agreement dated February 17, 2015, and is not an admission of fault or liability.”
The Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights, namely, the FIRE & ICE Trademark; that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name; and that the Disputed Domain Name was registered and is being used in bad faith.
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."
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.
Based upon the trademark registration cited by Complainant, as well as supporting documentation, it is apparent that Complainant has rights in and to the FIRE & ICE Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the FIRE & ICE Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “fireandicediamondgallery”), as it is well-established that the top-level domain name “.com” may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Use of the word “and” in the Disputed Domain Name in lieu of the ampersand in the FIRE & ICE Trademark is irrelevant because “ampersand symbols are not permitted in domain names.” PG&E Corporation v. Samuel Anderson and PGE in the year 2000, WIPO Case No. D2000-1264.
Further, the addition of the words “diamond” and “gallery” to the Disputed Domain Name are also irrelevant because these words do not distinguish the Disputed Domain Name from the FIRE & ICE Trademark. Indeed, the additional words “are totally applicable to the field” associated with the trademark – and, the inclusion of such words “are calculated to increase th[e] likelihood” of confusion. Bentley Motors Limited v. Adeeb Khaleel, WIPO Case No. D2012-2313.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that, Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent “falsely leads members of the public to believe that Registrant/Respondent is somehow affiliated with or sponsored by Complainant, or is a Licensee of Complainant, authorized to sell genuine FIRE & ICE® diamonds. Moreover, such conduct on the part of Registrant/Respondent Kathy Jones is unauthorized, and in fact has been objected to by Complainant in writing. Notwithstanding such objections, Registrant/Respondent Kathy Jones has refused repeatedly to comply with Complainant’s requests to cease and desist her infringing activity.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, and in light of the discussion that follows, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant argues that bad faith exists pursuant to paragraphs 4(b)(iii) and 4(b)(iv) given that the Disputed Domain Name is used in connection with a website offering goods or services that directly compete with Complainant. Such actions, under the facts and circumstances of this case, are clearly in bad faith. See, e.g., Links (London) Limited d/b/a Links of London v. “Barack Hussein Obama Jr”, et al., WIPO Case No. D2011-0878 (finding bad faith where Complainant argued that Respondent’s websites “offer[ed] for sale jewelry in competition with Complainant’s own products”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fireandicediamondgallery.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: March 15, 2015
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