C.D. Peacock Holdings L.L.C. v. Diamonds Chicago
Claim Number: FA0510000589500
Complainant is C.D. Peacock Holdings L.L.C. (“Complainant”), represented by Jeanine L. Gibbs of Wargo & French, LLP, 1170 Peachtree Street, N.W., Suite 2020, Atlanta, GA, 30309. Respondent is Diamonds Chicago (“Respondent”), 5 S. Wabash Ave #208, Chicago, IL, 60603.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <cdpeacockjewelers.com>, <cdpeacockjeweler.com>, <cdpeacockjewelry.com> and <peacockjeweler.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she 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 October 28, 2005; the National Arbitration Forum received a hard copy of the Complaint October 31, 2005.
On October 31, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <cdpeacockjewelers.com>, <cdpeacockjeweler.com>, <cdpeacockjewelry.com> and <peacockjeweler.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, 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 November 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@cdpeacockjewelers.com, postmaster@cdpeacockjeweler.com, postmaster@cdpeacockjewelry.com and postmaster@peacockjeweler.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <cdpeacockjewelers.com>, <cdpeacockjeweler.com>, <cdpeacockjewelry.com> and <peacockjeweler.com>, are confusingly similar to Complainant’s C.D. PEACOCK mark.
2. Respondent has no rights to or legitimate interests in the <cdpeacockjewelers.com>, <cdpeacockjeweler.com>, <cdpeacockjewelry.com> and <peacockjeweler.com> domain names.
3. Respondent registered and used the <cdpeacockjewelers.com>, <cdpeacockjeweler.com>, <cdpeacockjewelry.com> and <peacockjeweler.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, C.D. Peacock Holdings L.L.C, holds a valid and
subsisting registration with the United States Patent and Trademark Office
(“USPTO”) for its C.D. PEACOCK mark (Reg. No. 2,248,423 issued June 1,
1999). Complainant has used its C.D.
PEACOCK mark since 1871 in association with its jewelry business, including
jewelry for personal wear and adornment and other items, including watches, key
chains and pocket knives.
Respondent registered the <cdpeacockjewelers.com> and <cdpeacockjewelry.com> domain names March 17, 2005 and the <peacockjeweler.com> and <cdpeacockjeweler.com> domain names June 30, 2005. Respondent has not made any use 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."
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. 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.”).
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.
The Panel finds that Complainant’s registration of its C.D. PEACOCK mark with the USPTO is sufficient to establish Complainant’s rights in the mark in connection with Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <cdpeacockjewelers.com>, <cdpeacockjeweler.com> and <cdpeacockjewelry.com> domain names include Complainant’s C.D. PEACOCK mark in its entirety and a generic term that describes Complainant’s business. The <peacockjeweler.com> domain name incorporates PEACOCK, which is the dominant portion of Complainant’s mark, and adds a generic term descriptive of Complainant’s business. Respondent’s changes are not sufficient to negate the confusingly similarity of the domain names to Complainant’s mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established by extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain names. Complainant alleged that Respondent has no such rights or interests. The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant also contended that Respondent is not licensed
or otherwise authorized to use Complainant’s C.D. PEACOCK mark. Nothing in the record, including the WHOIS
information, indicates that Respondent has been commonly known by any of the <cdpeacockjewelers.com>,
<cdpeacockjeweler.com>, <cdpeacockjewelry.com> or <peacockjeweler.com>
domain names, either as an individual, business or other organization. Thus, the Panel finds that Respondent has
not established rights or legitimate interests in the disputed domain names
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 interest 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 Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant urged that Respondent registered domain names that include Complainant’s C.D. PEACOCK mark, or a substantial portion thereof, but made no use of these domain names and failed to come forward with any demonstrable preparations to use the domain names. Under these circumstances, the Panel finds that Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and has not made a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(ii).
According to Complainant, Respondent has not used the disputed domain names since registering them in March and June of this year. Respondent did not present demonstrable preparations to use the domain names, three of which contain Complainant’s C.D. PEACOCK mark in its entirety. However, the addition of generic terms associated with jewelry indicate that Respondent might have intended to use the domain names for the same business in which Complainant operates. Thus, the Panel concludes that Complainant presented evidence that establishes bad faith registration and use under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cdpeacockjewelers.com>, <cdpeacockjeweler.com>, <cdpeacockjewelry.com> and <peacockjeweler.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 19, 2005.
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