BC International Group Inc. v. Furs.com
Claim
Number: FA0504000451135
Complainant is BC International Group Inc. (“Complainant”),
represented by Barbara Loewenthal of Gottlieb, Rackman & Reisman, P.C., 270 Madison Avenue, New York, NY 10016. Respondent is Furs.com (“Respondent”), 580 Broadway #1101, New York, NY 10012.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <maximilian.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge 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 April 5,
2005; the National Arbitration Forum received a hard copy of the Complaint April
7, 2005.
On
April 6, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <maximilian.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
April 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 2, 2005, 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@maximilian.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
May 5, 2005, 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 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." 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, <maximilian.com>, is identical to Complainant’s
MAXIMILIAN mark.
2. Respondent has no rights to or legitimate
interests in the <maximilian.com> domain name.
3. Respondent registered and used the <maximilian.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
through its predecessors in interest, has sold various fur products, including
coats, jackets, scarves, stoles, capes, vests, pants, hats and ascots since
1940.
Complainant,
through its predecessors in interest, registered the MAXIMILIAN mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,166,583 issued
August 25, 1981) and with various trademark authorities worldwide. Complainant’s MAXIMILIAN mark has acquired
incontestable status pursuant to 15 U.S.C. § 1065.
Respondent
registered the <maximilian.com> domain name January 15, 1996. The domain name resolves to a website that
sells a variety of fur products, including those manufactured by Complainant as
well as Complainant’s competitors.
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.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that it has rights in the
MAXIMILIAN mark through registration of the mark with the USPTO and various
international trademark authorities as well as through continuous use of the
mark in commerce since 1940. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The domain name that Respondent registered, <maximilian.com>,
is identical to Complainant’s MAXIMILIAN mark.
Respondent’s addition of the generic top-level domain “.com” is
insufficient to distinguish Respondent’s domain name from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established rights to and legitimate interests in the disputed domain name that
contains in its entirety Complainant’s mark and Complainant alleged that
Respondent has no such rights or interests.
Respondent did not file a Response to the Complaint. Therefore, the Panel may accept all
reasonable allegations set forth by Complainant as true and accurate. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
response, the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Further, by not
submitting a response, Respondent has failed to rebut Complainant’s
assertion. Thus, the Panel may construe
Respondent’s failure to respond as evidence that Respondent lacks rights and
legitimate interests in the <maximilian.com> domain name pursuant
to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <maximilian.com> domain name, which is identical to
Complainant’s MAXIMILIAN mark, to sell a variety of fur products, including
those produced by Complainant as well as Complainant’s competitors. The Panel may find that such use is not a
use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See 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); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001)
(finding that use of the complainant’s mark to sell the complainant’s perfume,
as well as other brands of perfume, is not bona fide use).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s MAXIMILIAN mark. Thus,
the Panel finds that Respondent lacks rights and legitimate interests in the <maximilian.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interests where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleged that Respondent acted in bad faith.
Respondent is using the <maximilian.com> domain name, which
is identical to Complainant’s MAXIMILIAN mark, to operate a website that sells
Complainant’s fur products as well as the products of competing companies. Such use constitutes disruption pursuant to
Policy ¶ 4(b)(iii) and is evidence that Respondent registered and used the
disputed domain name in bad faith. See
G.D. Searle & Co. v.
Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)
(“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered
each of the disputed domain names in order to gain customers and to disrupt
Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
Because the disputed domain name <maximilian.com> is
identical to Complainant’s MAXIMILIAN mark, consumers accessing Respondent’s
domain name may become confused as to Complainant’s affiliation with the
resulting website. Thus, Complainant’s
commercial use of the disputed domain name constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle
& Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by selling
used Fanuc parts and robots on the website at <fanuc.com> because
customers visiting the site were confused as to the relationship between the
respondent and the complainant).
Furthermore,
Respondent registered the <maximilian.com> domain name with actual
or constructive knowledge of Complainant’s rights in the MAXIMILIAN mark due to
Complainant’s registration of the mark with the USPTO and with various
international trademark authorities.
Moreover, the Panel infers that Respondent registered the disputed
domain name with actual knowledge of Complainant’s mark due to the obvious
connection between Respondent’s website and Complainant’s business. Registration of a domain name that is
identical to another’s mark despite actual or constructive knowledge of the
mark holder’s rights is tantamount to bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the complainant’s mark when it registered the subject
domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <maximilian.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 19, 2005
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