Annie Sloan Interiors, Ltd. v. Harisma Cahyani
Claim Number: FA1510001644318
Complainant is Annie Sloan Interiors, Ltd. (“Complainant”), represented by Raymond G. Areaux of Carver, Darden, Koretzky, Tessier, Finn, Blossman & Areaux, LLC, Louisiana, USA. Respondent is Harisma Cahyani (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anniesloanchalkpaints.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2015; the Forum received payment on October 28, 2015.
On October 28, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <anniesloanchalkpaints.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@anniesloanchalkpaints.com. Also on October 29, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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. 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the ANNIE SLOAN and CHALK PAINT marks based on registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,083,675, registered January 10, 2012 and Reg. No. 4,322,847, registered April 23, 2013, respectively). Respondent’s disputed domain name is confusingly similar to Complainant’s ANNIE SLOAN and CHALK PAINT marks. The <anniesloanchalkpaints.com> domain name combines Complainant’s ANNIE SLOAN and CHALK PAINT marks, while eliminating spacing between words, and merely adds the letter “s” and the generic top-level domain “.com.” These additions to Complainant’s marks do not create a distinct domain name that would prevent a finding of confusing similarity.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent, while identified by the WHOIS information on record as “Harisma Cahyani,” is not commonly known by the disputed domain name. Further, Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent accumulates content from other sources on the Internet and displays such content alongside advertisements for pecuniary gain.
Respondent has engaged in bad faith registration and use. Respondent is attempting to commercially profit from a likelihood of confusion, which consists of bad faith under Policy ¶ 4(b)(iv). Respondent also registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Annie Sloan Interiors, Ltd., uses these marks in connection with the sale of paint and related goods. Complainant has rights in the ANNIE SLOAN and CHALK PAINT marks based on registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,083,675, registered January 10, 2012 and Reg. No. 4,322,847, registered April 23, 2013, respectively). Respondent’s <anniesloanchalkpaints.com> domain name is confusingly similar to Complainant’s ANNIE SLOAN and CHALK PAINT marks.
Respondent, Harisma Cahyani, registered the<anniesloanchalkpaints.com> domain name on February 21, 2015. Respondent uses content from third-party websites, Complainant’s marks, and pay-per-click advertisements.
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.
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 draw such inferences it 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.”).
Complainant has rights in the ANNIE SLOAN and CHALK PAINT marks based on registration with multiple trademark agencies including the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <anniesloanchalkpaints.com> domain name is confusingly similar to Complainant’s ANNIE SLOAN and CHALK PAINT trademarks. The domain name combines both the ANNIE SLOAN and CHALK PAINT marks, while eliminating spacing between words, and merely adds the letter “s” and the gTLD “.com.” The elimination of spacing and addition of the letter “s” and the gTLD “.com” fail to distinguish a domain name from the trademark at issue. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). In addition, prior panels have established a confusing similarity where the domain name combines to separate marks. See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks).
Respondent is not commonly known as the <anniesloanchalkpaints.com> domain name. Complainant has not authorized Respondent to use Complainant’s marks. The WHOIS information lists “Harisma Cahyani” as the registrant of the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s use of the <anniesloanchalkpaints.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s webpage resolving from the domain name contains images that have been copied from third-party websites and Complainant’s website, including Complainant’s marks. Respondent is presumably receiving fees from pay-per-click advertisements. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services).
Respondent has engaged in bad faith registration and use of the <anniesloanchalkpaints.com> domain name under Policy ¶ 4(b)(iv). Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant argues that Internet users who view the resolving webpage are likely to believe that it originates from Complainant. Further, Respondent must be receiving pay-per-click fees. Where it can be shown that a likelihood of confusion exists, and that the respondent is profiting, prior panels have found bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent had actual knowledge of Complainant’s ANNIE SLOAN and CHALK PAINT marks when registering the <anniesloanchalkpaints.com> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anniesloanchalkpaints.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 7, 2015
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