Sterling Jewelers Inc v. Lisa Katz / Domain Protection LLC
Claim Number: FA1602001659138
Complainant is Sterling Jewelers Inc. (“Complainant”), represented by Christopher R. Butler of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jaredjewelrs.com> and <jaredthejeweler.com> registered with Fabulous.com Pty 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2016; the Forum received payment on February 2, 2016.
On February 2, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <jaredjewelrs.com> and <jaredthejeweler.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 February 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2016 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@jaredjewelrs.com, postmaster@jaredthejeweler.com. Also on February 3, 2016, 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 March 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the JARED mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,150,413, filed Dec. 13, 2004, registered Oct. 3, 2006). Complainant uses the JARED mark in connection with jewelry and jewelry store services. Respondent’s <jaredjewelrs.com> and <jaredthejeweler.com> domain names are confusingly similar to Complainant’s marks as they incorporate the mark in its entirety while adding variations and misspellings of the descriptive term “jeweler,” and the generic top level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the <jaredjewelrs.com> and <jaredthejeweler.com> domain names. Respondent is neither licensed nor authorized to use the JARED mark. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name. The <jaredjewelrs.com> disputed domain name re-directs to a third-party webpage, namely <visiondirect.com>, and at times has directed to a website with no connection to Complainant, and which generates various malware/malicious site warnings. The <jaredthejeweler.com> website resolves to what appears to be a search engine which provides links to competing jewelers, from which Respondent presumably receives a click-through fee.
Respondent has registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). Respondent used the JARED mark in the <jaredjewelrs.com> and <jaredthejeweler.com> domain names in order to attract Internet traffic to a third-party website in an effort to generate revenue for Respondent’s own benefit and to distribute malware. Respondent registered and used the disputed domain names with at least constructive knowledge of the JARED mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <jaredjewelrs.com> domain name on February 19, 2005 and the <jaredthejeweler.com> domain name on February 10, 2005.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s registered trademark, that Respondent has no rights or legitimate interests in or to the disputed domain names, and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 names should be cancelled or transferred:
(1) the domain names 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 names; and
(3) the domain names have 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(f), 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.”).
The Panel finds the disputed domain names to be confusingly similar to Complainant’s registered, subsisting and well-plead trademark JARED. Respondent arrives at the disputed domain names by merely adding generic words “the jeweler” and “jeweler” and a gTLD “.com”. These are not sufficient to distinguish the disputed domain names from the registered trademark.
As such, the Panel finds the disputed domain names to be confusingly similar to Complainant’s registered trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. The WHOIS information identifies “Lisa Katz / Domain Protection LLC” as the registrant of the disputed domain names. Respondent is neither licensed nor authorized to use the JARED mark. The record is devoid of any evidence that establishes that Respondent has any rights or legitimate interests in or to the disputed domain names.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent has apparently used the disputed domain names to direct Internet users to various website. See Complainant’s Annexes C, D, and E. Such use misleads users as to Complainant’s affiliation with the disputed domain name and reachable pages. In so doing, it appears that Respondent used the JARED mark in order to mislead and attract Internet traffic to a third-party website in an effort to generate revenue for Respondent’s own benefit.
Previous panels have found evidence of bad faith where the respondent is attempting mislead and divert Internet users through a confusingly similar domain name to a third-party website for the respondent’s own commercial gain. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
As such, the Panel finds that Respondent’s use of the disputed domain names do not provide any legitimate basis for Respondent’s use and registration and, therefore, finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
Further, the Panel finds that Respondent’s distribution of malware using the <jaredjewelrs.com> domain names is evidence of bad faith use and registration under the Policy. The disputed domain names resolve to feature warning signs indicative of malware, as demonstrated in Complainant’s Annex D. The Panel finds that Respondent’s use of malicious software through the <jaredjewelrs.com> domain name constitutes a bad faith effort per Policy ¶ 4(a)(iii).
Finally, it appears that the JARED mark and registration existed well before the registration of the disputed domain names. Although Complainant’s arguments regarding constructive notice are not relevant, it is clear from the totality of the circumstances that Respondent had actual notices of Complainant’s rights in or to the registered trademark JARED.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <jaredjewelrs.com> and <jaredthejeweler.com> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: March 2, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page